23 Nov
2018

IPOPHL celebrates record haul, Rospatent promotes benefits of GIs, and emoji-tions run high in China: 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 $7 million worth of counterfeit condoms being seized in China, Canada Goose opening an additional office in Beijing, Moldova making some legal adjustments in relation to the Madrid Protocol, and much more. Coverage this time from Trevor Little (TL), Bridget Diakun (BD) and Tim Lince (TJL).

Market radar:

Philippines seizes record number of fake goods – The Philippines’ National Committee on Intellectual Property Rights (NCIPR), led by the Intellectual Property Office of the Philippines (IPOPHL), has captured a record-breaking haul in counterfeit goods this year – and surpassed the previous annual record as of September. To date, the NCIPR has seized P17.9 billion ($34,206,253) in fake goods from January to September this year – representing a year-on-year growth of 840%. Reacting to this record-breaking haul, IPOPHL director general Josephine R. Santiago described it as “an outlier seizure”, expanding: “Several operations in the year by the Philippine National Police and the Bureau of Customs led to the raiding of factories and warehouses storing cases of counterfeit cigarette packs bearing cigarette brand names and related equipment. This is an indication of the increased vigilance of brand owners, and we urge them to continue enforcing their rights.” As well as seizures, though, Santiago says the war on fakes requires a change in attitude too: “Enforcement alone may not see the end of fake goods – a change in consumer behaviors and attitudes is necessary to stamp out these illicit trade activities for good. While the agency remains strong in enforcement, IPOPHL also puts great effort into educating the public about respecting IP and IP rights.” More information about the seizures, as well as the work the IPOPHL is conducting to combat fakes, can be found on the press release announcing the record-breaking yearly haul. (TJL)

Namibian representative speaks up about IP – The acting CEO of Namibia’s Business and Intellectual Property Authority (BIPA), Selma Ambunda, has spoken about how IP has become a “central issue for modern businesses” in the Africa country. She was speaking at the 42nd Administrative Council Meeting of the African Regional Intellectual Property Organisation (ARIPO).  “The challenge of IP authorities is how to respond to the needs of the citizens, and how to help them unlock their IP potential,” she said at the event. “A strong national IP framework will reassure investors, whilst the framework gains an edge in the global knowledge component. However, in this fast-changing world, these can no longer suffice. In the area of IP, where uniqueness and innovation are the key ingredients, it will be naïve to expect IP law to anticipate and deal with all the challenges brought about by rapid technological advancements.” During the event, ARIPO’s director general, Fernando dos Santos, said the fact that the Administrative Council Meeting is being held in Namibia is “a sign of the Namibian government's commitment to support ARIPO”. (TJL)

Legal radar:

Emoji-tions run high in China over trademark application – An interesting piece on Lexology, authored by Tsai Lee & Chen Patent Attorneys & Attorneys at Law, focuses on the rejection of an application to register a popular emoji in class 25 (clothing). The application caused a controversy, with consumers concerned that they would no longer be able to use the emoji on WeChat (where it is a common icon). A related question was whether a trademark for the image would infringe the copyright of the emoji's original creator? Tencent, the original creator of the emoji on its WeChat platform, stated its intention to object to the application and the SAIC has stated that the public needs not worry about the possibility of committing infringement while using the emoji on WeChat. The incident offers a reminder, though, of the backlash that can occur when seeking to register a trademark that the wider public views as a ‘community’ right. (TL)

Office radar:

Rospatent speaks up about GIs – The deputy head of the Russian IP Office (Rospatent), Lubov Kiriy, spoke this week about the advantages of geographical indications. Speaking at the Anti-Counterfeiting Alcohol Market Section of the VI Anti-Counterfeiting International Forum, he said that wider use of GIs “could be an additional resource for the development of regional producers and the economies of the regions as a whole”. The comments follow Russia’s draft federal law FZ No. 509994-7, which was adopted in the first reading by the State Duma recently. “We are confident that the widespread use of geographical indications will allow regional producers to seriously strengthen their position in the markets of the regions of our country, and also to go out with their goods to foreign markets,” he stated. As many readers will note, this position is in alignment with the European Union and quite different from that of the United States, which has long been in opposition of stringent GI protections. (TJL)

Moldova makes Madrid Protocol adjustments – Moldova’s State Agency for Intellectual Property (AGEPI) has announced some amendments related to the Madrid Protocol. The amendments will ensure compliance of new rules related to the protocol, and will enter into force on 1 February 2019. More details can be found on the AGEPI website. (TJL)

Mozambique IPO holds IP seminar – The Industrial Property Institute of Mozambique has held a seminar focused on intellectual property in collaboration with the Mozambican Association of Judges. The event sought to train judges, prosecutors and lawyers in matters related to IP as well as to discuss the legal framework of intellectual property law in Mozambique. According to the registry, there needs to be a greater effort to improve IP in the country. “It should be noted that the protection of intellectual property rights requires the full functioning of the judicial system to resolve conflicts on the matter,” the IPO states in a press release. “To this end, it is not enough to create specialized sections on the subject, but there is a need for greater sensitivity on the forms of violation of intellectual property rights and the damages they entail for the Mozambican economy.” (TJL)

Media watch:

Companies look to hire specialists to navigate Amazon ad campaigns – A piece on Digiday this week pointed to the increase in brands wanting in-house workers to run Amazon ads. This is a similar tactic used by companies like Vodafone and eBay who have people to manage its Google ad campaigns. Reckitt Benckiser and G-Star have recently posted job ads looking to find individuals to raise brand awareness on the site as well as manage search campaigns. Daniel Tejada, an Amazon advertising and marketing consultant, reported that brands were starting to ‘hire Amazon experts in-house’. He goes on to explain that, in the past, “marketers manage the direction of the brand on Amazon and will rely on an agency or have a small internal team to manage the implementation”. Amazon has its own platform which allows the advertising aspect of its business to work directly with brands, but this option only has only recently gained traction since the company announced a simplification to the platform beginning in September. The system was renamed from Amazon’s Advertising Platform to Amazon’s DSP (Amazon’s demand-side platform) and a number of transformations will continue to take place over the coming months to make it more user-friendly. According to a study conducted by Digiday, more than 73% of ad buyers intend to increase spending on Amazon next year. Considering the popularity of online shopping and power of Amazon, it may be something for brands to explore further to take advantage of the platform. (BD)

$7 million worth of counterfeit condoms seized by Chinese police – 500,000 boxes of fake condoms using the names of Durex and Okamoto have been seized by Chinese law enforcement, according to Business Insider. The condoms had been sold to establishments such as hotels, supermarkets and vending machines in central and eastern China. The raid revealed sub-standard operations in workshops, and 17 people were put under criminal detention. While one might assume China to be a breeding ground for fake international fashion goods, condoms are also one of the most widely counterfeited products. These specific fakes were being sold to retailers at the wholesale price of one yuan, whereas the real brands cost between 20 and 150 yuan a pack. This is a reminder that counterfeit operations are not only damaging to reputation and profits, but also pose a serious threat to public health. (BD)

Canada Goose continues to expand in China – Bloomberg reports that Canada Goose is set to open an additional China location in Beijing. While the CEO of Canada Goose, Dani Reiss has previously commented that fake goods can be beneficial for raising brand awareness, there is a hope that selling directly will decrease the interest in knockoffs. (BD)

Domain radar:

Uniregistry eyes trademark block offering – Over on Domain Incite, Kevin Murphy reports that Uniregistry is planning to launch a trademark block service, similar to the Donuts Domain Protected Marks List. The company intends to offer trademark owners the opportunity to block their marks (where registered in the Trademark Clearinghouse) across its 26 gTLDs  for a single fee. However, that fee is likely to be higher than the Donuts equivalent – Murphy calculates that the block would work out to around $7.70 per TLD per year, compared to $5 with Donuts. This would be cheaper than defensively registering across all 26 TLDs individually but would mean an upfront fee. (TL)

On the move:

Bird & Bird bolsters IP practice in Spain – According to a press release, Mariano Santos has joined the Madrid team of Bird & Bird as a partner. Santos was previously the international legal affairs manager at Herrero & Asociados. Head of the intellectual property group in Spain, Manuel Lobato comments: “Mariano’s appointment is a huge boost to the firm’s IP practice. He has unique international experience which not only attracts clients from Europe but also from the Americas and Asia. His experience in these areas will enable the IP group across the firm to offer services within Europe and throughout Latin America.” (BD)

Joshua Frick joins Barnes & Thornburg – Law firm Barnes & Thornburg has recently announced the appointment of Joshua Frick to of counsel in the Chicago office. Frick has over 10 years of experience and focuses on trademarks, unfair competition and copyrights. (BD)

Clyde & Co welcomes IP lawyer to its Beijing office – Yan Gong has been appointed to local partner of Clyde & Co as well as the head of the China trademark practice in the firm’s Chinese Joint Law Venture (JLV) Clyde & Co Westlink. Trademark attorneys Jin Yan, Huanan Zhu and Weiwei Zhang also join the Beijing office along with paralegals Yaqiong Wang and Rui Chen. Yihang Liui has also been appointed as a trademark attorney in Chongqing. Elliot Papageorgiou, head of the China IP practice, says: “The Chinese Government has been making significant investments in terms of intellectual property protection in recent years. The arrival of Yan and her team is further evidence of the growing demand for, and the interest in trademark protection and enforcement in China.” (BD)

Hannes Snellman boosts its IP team – Sarita Schröder has joined Nordic law firm Hannes Snellman as a senior associate in the Helsinki office. Aside from specialising in intellectual property, she also practices in marketing, consumer law and litigation in these areas. Panu Siitonen, who leads the IP practice in Helsinki, comments, “[Sarita] is a very talented IP lawyer whose expertise and litigation skills enforce our team and our IP arsenal enabling our clients to get the best out of their IP”. (BD)

Neal Gerber Eisenberg deepens litigation bench with new partner – According to a press release by Neal Gerber Eisenberg, Ian Block has left Kirkland & Ellis to join the practice as a partner. An IP all-rounder, Block has an emphasis on trademark and trade dress issues. Block joins a group of more than 40 IP professionals. (BD)

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:

  • Considered the likely impact of AI on trademark practice and whether we are looking at a legal apocalypse, a positive leap forward or business ‘almost as usual’;
  • Looked at a recent survey from the “world’s largest replica discussion board” which revealed the demographics, habits and brand affinity of those who regularly buy fake fashion goods;
  • Analysed the WHOIS data report from ICANN's expedited policy development process team, which one industry expert told us as having “little to please trademark owners” with respect to WHOIS access;
  • Reported on a new ranking which identified Baker McKenzie as the leading law firm brand in mainland Europe, with “global firms beating out Euro-centric firms” to dominate the top 20;
  • Published analysis from a Chinese legal expert which noted that requesting that the legal representative of a company bear joint and several liability for infringement can be a powerful enforcement tool – but is available only in specific circumstances;
  • Spoke exclusively to Antony Douglass, legal director at Specsavers, about the benefits of in-sourced portfolio management;
  • Analysed new research which named Netflix as the world's ‘simplest’ brand, with the company leapfrogging Aldi, Google and Lidl to take top spot;
  • Revealed the stellar speaking faculty for the third annual Brand Strategy China event, taking place in Shanghai on 3 December. Among the confirmed speakers on our high-level roster are senior industry leaders from Canon, Mattel, Sanofi, Starbucks, Treasury Wine Estates and Western Digital.

And finally…

Nominate the world’s leading corporate trademark counsel WTR is now inviting nominations for the next editions of the WTR 300 and WTR Industry Awards, designed to identify the world’s leading corporate trademark counsel and teams. Nominate now to ensure that the important work undertaken by in-house professionals across the globe receives the recognition it deserves. The nominations window is open until 11 December 2018, during which time we are seeking details of the corporate counsel deemed to be the leading lights of the trademark industry, who are adding significant value to their organisations and are exemplifying the qualities that other counsel should aspire to. You can read more about the process on the nomination page. (TJL)

Adam Houldsworth

Life sciences reporter

ahouldsworth@GlobeBMG.com