12 Oct
2018

Coca-Cola dispute sparks censorship debate, Alfred Dunhill scores big in China, and Belt and Road IP cooperation: news round-up

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 how brands should share bad news, why Chinese companies have been accused of “poor branding”, Silk Road member states strengthening IP cooperation, Alfred Dunhill scoring a big litigation win in China, the Kyrgyz Republic and Mongolia IPOs signing a memorandum of understanding, and much more. Coverage this time from Trevor Little (TL), Bridget Diakun (BD) and Tim Lince (TJL).

Market radar:

Coca-Cola dispute sparks censorship debate in Norway – In an unusual trademark dispute, The Coca-Cola Company has sparked debate over a small beverage company’s rebrand of a soft drink product. O. Mathisen originally produced a soft drink called ‘Jallasprite’, which Coca-Cola took issue with due to its inclusion of the term ‘Sprite’. The company accepted to rename Jallasprite and cease all product and sales of the product until the rebrand was complete. But the dispute heated up this week when it was reported The Coca-Cola Company denied O. Mathisen’s new name for the product, “Jalla JALLAXXXXXX”. According to Coca-Cola, the name “makes it look like Coca-Cola has censored the new name”, and therefore breaches one of the seven requirements that the beverage giant stipulated (specifically: “The name to replace JALLASPRITE must be completely different from any of Coca-Cola’s characteristics, and shall not contain any references to any of the characteristics of this ongoing conflict”). Local media outlet VartOslo has comments from representatives at O. Mathisen, who voice their frustration at the demand: “We have gone for this name because it was aesthetically the best and because of time pressure. We simply cannot afford to make production stand any longer. We believe to have fulfilled the requirements of The Coca-Cola Company as far as possible from our side.” The story has spurred debate, with some readers baffled that Coca-Cola is disallowing a rebrand that doesn’t reference its brand name. For example, on Reddit, it attracted over 800 comments and nearly 10,000 upvotes, with users sparring over whether Coca-Cola should have challenged the rebrand – some called the company a “trademark bully” while others pointed out that any enforcement of IP, even legitimate disputes, are often deemed as censorship. “As far as I’m aware there’s no law supporting the idea that Coca-Cola can subsequently dictate whether the other company makes it look censored,” said one user, with another agreeing with Coca-Cola’s original challenge but added “they should accept the X's though, show some goodwill”. It’s an interesting dispute, and we’ll follow-up on whether O. Mathisen ends up re-rebranding. (TJL)

Blockchain technology moves forward in the fight against fakes – SigmaLedger launched its blockchain-based anti-counterfeiting platform on October 10, along with securing funding from EPAM systems, a software engineering company based out of the US. Using this technology, companies can tag, track and verify the legitimacy of products. President of SigmaLedger, Roman Polupanov, argues that: “Counterfeiting and lack of supply chain transparency are urgent problems which represent two sides of the same coin. By utilising blockchain to monitor supply chains, we can simultaneously help many types of organizations…” The nuances of blockchain technology remain a mystery to many, but it looks like we will soon see how it will affect – or even transform – anti-counterfeiting enforcement programs. (BD)

Legal radar:

Alfred Dunhill scores big litigation win in China – In a newly announced decision, Danhouli has been found guilty in China of both trademark infringement and unfair competition for using a mark which mimics the elongated style and white font of Dunhill’s iconic brand. The Foshan Intermediate People’s Court, Guangdong Province, has not only ordered the rival to pay $1.47 million in damages, but in an unusual move by the judge, the individual responsible for Danhouli was also held personally liable for the infringement. This is a significant win for rights holders in China, indicating a greater strengthening of the country’s intellectual property regime and movement towards alignment with other systems. (BD)

HealthNow NY prevails in trademark lawsuitThe Buffalo News has reported on the end of a trademark dispute lawsuit involving insurance company HealthNow New York and Tennessee company Health Now Management. In the ruling, the the New York company proved that HEALTHNOW is a registered trademark and that the Tennessee company’s infringement would likely cause consumer confusion. Health Now Networks was ordered to estimate the amount of money it made off its trademark infringements and report those profit figures to US Magistrate Judge Hugh B. Scott. The judge then wants Scott to make a recommendation on whether HealthNow New York should receive damages and attorney fees. (TJL)

Office radar:

Silk Road member states strengthen IP cooperation – The Latvian IP Office has confirmed that IP institutions from the 56 member states of the Silk Road Initiative (‘One Belt One Road’ or ‘OBOR’) have pledged better cooperation in the field of intellectual property. The director of the Latvian IPO, Sandris Laganovskis, spoke at a conference which was opened by by the president of China, Xi Jinping. During his speech, Laganovsky emphasised the growing use of the trademark and design e-application system at his office, as evidenced by the ever-increasing number of online applications (62% of trademarks were submitted online in Latvia last year). At the end of the event, representatives from IP offices pledged “to pursue close, consistent and mutually beneficial cooperation in the field of intellectual property and to improve communication and coordination between IP institutions”. Some of the suggested cooperation includes “implementation of research with a view to promoting understanding of IP in OBOR countries” and the “creation of a single, publicly accessible website for the exchange of IP information”. This pledge confirms that the OBOR trade route is going to see a transformation at the IP offices in its path. (TJL)

Moldovan IP office trains judges and prosecutors in IP – According to its website, Moldova’s State Agency for Intellectual Property (AGEPI) has been conducting training courses for judges and prosecutors in the country. The courses were planned in collaboration with the EU’s "Support for Enforcement of Intellectual Property Rights" project. The courses cover a variety of topics, including the basic principles of intellectual property, national and international regulations in the field, the forms and limits of the protection of IP, and the practical aspects on the resolution of disputes concerning IP rights. At the opening of the first course, the AGEPI’s deputy general manager, Andrei Popa, stressed about how crucial such training is. “Training people in the judiciary in the field of intellectual property is extremely important for the proper examination of disputes related to this area,” he said. (TJL)

Vietnam IPO signs software memorandum with WIPO – The Vietnamese IP Office has recently signed a cooperation agreement with WIPO in relation to the implementation of the ‘Single Window IP Management System’. The director general of the IP department, Dinh Huu Phi, and WIPO director general, Francis Gurry, signed the agreement on 24 September. In all, it is predicted that the agreement will lead to significantly better IT systems for IP activities in Vietnam. Specifically, WIPO will provide free-of-charge and support the deployment of the WIPO IPAS to the office. This will lead to a significant upgrade in the registry’s IT and data infrastructure, a more user-friendly interface, international standards, and easy connectivity to other WIPO tools. The project is expected to end in 2020. (TJL)

Kyrgyz Republic and Mongolia IPOs sign memorandum of understanding – In a meeting this week, the IP offices of the Kyrgyz Republic and Mongolia signed a memorandum of understanding in relation to a framework of a subregional seminar on IP policies in higher education institutions. These seminars are due to be held jointly with WIPO in March 2019. The signing was part of a visit of the Mongolian IPO to the Kyrgyz Republic. (TJL)

Media watch:

Should brands share bad news? – In an interesting piece on PR News, editor Seth Arenstein reflects on both Google’s acknowledgment of a Google+ data breach seven months ago (which has led to the decision to sunrise the platform) and also a press release issued by a gun manufacturer declaring that Fifth Third Bank had decided to no longer do business with companies in the industry. Arenstein then asked a big question: should an aggrieved brand spread its bad news? The move by Spike’s Tactical to go public and highlight that the company had been told the bank no longer wishes to do business with it is unusual. It also came in the aftermath of last month’s tragedy, in which a gunman entered the headquarters of Fifth Third Bank and killed three people (which the release’s author stated he was not aware of at the time of drafting). For its part, the bank has largely kept its counsel, despite Spike’s Tactical proactively sharing news that other companies would likely have buried. The piece does not offer any concrete conclusions but does highlight the considerations that should go into making the decision on whether to go public with news that could prove costly or reputation damaging. (TL)

Chinese companies accused of “poor branding” in column – Over on Sixth Tone, marketing expert Chen Junxun penned a column on why some Chinese brands may be struggling when breaking through to international markets. Put bluntly, he says, “part of the issue is continued poor branding”, expanding: “It may seem obvious, but to date, many Chinese sellers continue to underestimate the importance of maintaining a good brand — a failing that not only costs them sales, but has damaged the reputation of Chinese goods worldwide.” Some evidence of this, he adds, is that some Chinese brands “take shortcuts designed to boost short-term sales” which end up hurting longer-term branding perception. Examples of that are instances of Chinese brands paying for fake review and selling their products at the lower possible price (“slightly higher prices may lead to reduced sales, [but] in the long-term they can help a company establish a reputation for quality”). There are exceptions, he clarifies, including Shenzhen-based technology brand Anker, who are well-regarded for well-made portable batteries and chargers. But for the most part, he urges Chinese companies to focus more on brand growth, including transitioning away from a reliance on selling products on third-party e-commerce platforms. Time will tell whether this transition will begin. (TJL)

On the move:

Atallah joins Donuts – Top-level domains company Donuts has announced that Akram J Atallah will assume the role of chief executive officer, effective 12 November 2018. Atallah joins form ICANN where he served as the first president of ICANN’s Global Domains Division and oversaw the management of generic domain operations, domain name industry engagement and web services. Previously, Akram served as ICANN’s chief operating officer. ICANN has stated that it will hold a search for his replacement, with Cyrus Namazi, VP, DNSIndustry engagement, global domains division, to serve as interim department head for the Global Domains Division. (TL)

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 World Trademark Review. Over the past week we:

  • Scrutinised a study which revealed that high-earning consumers buy less authentic luxury goods if high quality counterfeit variants are available – and provided some important pointers on how high-end brands can fight back;
  • Presented analysis of China’s new ecommerce law – and how brand owners should prepare for the upcoming changes;
  • Reported on the fate of Chief Wahoo, the controversial logo used by the Cleveland Indians – with the team’s season officially over, the logo will no longer appear on uniforms but criticism continues over the availability of merchandise bearing the mark;
  • Obtained insight from The Consortium for Common Food on the new USMCA trade deal, which it claims it “marks a sea change” in GI policy;
  • Sat down with Niall Trainor, senior director of brand protection at Entertainment One, to gain exclusive insights into the challenges of protecting the Peppa Pig brand in China.
  • Considered the revelation that the “trademark usage fees” of the Korea’s largest chaebols (conglomerates) has exceeded W1 trillion ($884.5 million) last year – the first time that monetary barrier has been broken;
  • Published an eight-point guide to success in joint ventures in China;
  • Presented an insider’s look at efforts to shape internet policy, including work to ensure that WHOIS access is not lost to rights holders.

And finally…

Get the inside track on cost-effectively managing trademark portfolios WTR is pleased to announce that Managing Trademark Assets Europe will be heading to London on 28 January 2019. The event will present cutting-edge strategies for the creation, protection and monetisation of strong brands, with attendees hearing senior in-house counsel across a range of industries discuss how best to manage risk, ensure continued brand protection coverage and communicate the value of brands to the business in a bid to secure multi-stakeholder support. Delegate places cost just £795 but registrants using the code ONLINEEB before 7 December can save £200 on this rate. Click here to register. (TL)

Adam Houldsworth

Reporter

ahouldsworth@GlobeBMG.com