13 Nov
2018

Kylie Minogue's trademark dispute regret, licensing case heads to Supreme Court and INTA launches podcast: 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 report on INTA's new podcast, Apple's new partnership with Amazon, Kylie Minogue's regrets over her dispute with Kylie Jenner, and much more. Coverage this time from Trevor Little (TL), Adam Houldsworth (AH), Bridget Diakun (BD) and Tim Lince (TJL).

Market radar:

INTA launches podcast – INTA has officially launched a podcast focused on innovation, titled Brand & New. Speaking at the INTA Leadership Meeting in New Orleans last week, INTA CEO Etienne Sanz de Acedo explained that the podcast will be published every two weeks and feature experts from within and without the trademark industry. The association states: “Each podcast consists of an open dialogue with experts, visionaries, and influential people from all over the world in order to learn more about the evolution of the legal and intellectual property ecosystem, its concepts, and all actual or potential consequences.” The first edition, hosted by Audrey Dauvet, provides an introduction to Brand & New by INTA President Tish Berard. It is available on iTunes, Stitcher, and Spotify, with more details here. (TL)

P&G’s CEO sees trade war as bad for American brandsAs the trade war between the US and China rumbles on, Procter & Gamble’s president and CEO David Taylor has stated the biggest worry “is [whether] it destroy consumers’ confidence in American brands”. While negotiations take place between the two countries, major companies dwell over the damage already done. P&G, for example, has already been forced to increase prices on a number of products in the US, including Pampers, to combat rising commodity costs. We recently wrote about the concerns of those working on the ground in China for international companies about the impact of trade tariffs. These worries will not be eased by P&G’s experience. (BD)

Big brands cash in on Singles’ Day Navigating the Chinese commercial terrain can be a struggle, but Singles' Day offers international brands a unique opportunity to raise their profiles and sales levels. However, those looking to participate in this unprecedented sale need to be savvy with marketing. A piece on DigiDay notes that many choose to invest in banners and ad spaces but notes that app home screen takeovers and native content are increasingly being utilised. The latter may be a canny move - as we noted recently, often ‘story’ matters when seeking to position international brands in front of Chinese consumers. Whatever route is used, the amount of those participating in Singles' Day has exploded: when it first began in 2009 only 27 brands signed on, whereas now there are 180,000 combined global and local brands. Players like Apple, Dyson and Nike, among others, reportedly each hit $14.4 million in one-day gross merchandise value. This year, Alibaba Group’s 10th annual Singles Day sale racked up $30.8 billion in sales, setting a new record for the platform and representing a 27% rise over last year. It is an event brands cannot afford to ignore. (BD)

Apple agrees to partnership with Amazon In anticipation of the holidays, tech giant Apple has paired with Amazon to offer its latest products to consumers through the platform, reducing the risk of counterfeits. With Apple becoming a verified seller, its official products will be made available to Amazon users in the US, UK, France, Germany, Italy, Spain, Japan and India. For its part, Apple will be able to access Amazon’s large client base, consisting of over 100 million Prime members. Crucially, the partnership  also has the ability to play a role in the elimination of fake goods from the site, and regulate third-party sellers - it will be required by the end of the year for vendors to submit their products to Apple for verification and approval before being able to conduct business on Amazon. We have previously written about the availability of counterfeit Apple products on Amazon, a lawsuit filed against one seller in 2016 suggested that as much as 90% of items being sold as genuine Apple products by the e-tailer are fakes. This latest move may prove to be a game changer in its efforts against the sale of counterfeits on the platform. (BD)

UK connects to EU medicines verification system The UK’s verification system for medicines has now been connected to the centralised European hub, it has been reported. The move was announced by SecurMed UK, the company that operates the country's system. Its general manager Jerome Bertin described the development as an “important milestone” and a “major step forward”. He said: “The Marketing Authorisation Holders can now start uploading pack data for the UK to the EU Hub through their OBPs. The upload of data for packs that are already in circulation within the market is extremely important, with a view to maximising efficiency within the system and minimizing false positive alerts.” The move is part of efforts to fulfil the safety provisions of the Falsified Medicines Directive, which aims to promote a coordinated continental response to the problem of medicines whose history, source or identity has been faked. (AH)

Legal radar:

Protection of trademarks in bankruptcy goes to the Supreme Court – On WTR we recently carried analysis of In re Tempnology, in which the First Circuit decided that a debtor-licensor can reject a trademark licence in bankruptcy, after which the licensee has no further right to use the licensed marks. That article noted that the decision reinforces the confusion surrounding the use of licensed marks after bankruptcy and serves as a timely warning for licensors and licensees entering into trademark licence agreements. The discrepancy between circuits regarding the fate of trademark licensing agreements was identified by INTA as “the most significant unresolved legal issue in trademark licensing”. The question has now made its way up to the Supreme Court in a bid to to put the circuit split to an end. The disagreement is over whether a trademark licensee is able to retain its trademark rights after the debtor rejects the license under the bankruptcy code. Congress allows for an exception for intellectual property licenses, however, the bankruptcy code does not include trademarks within its definition of intellectual property. Much-needed clarity may be forthcoming now that the Supreme Court has  granted a petition for a writ of certiorari in Mission Product Holdings v Tempnology. (BD)

Media watch:

Kylie Minogue’s trademark spat regret – Trademark disputes involving celebrities often generate headlines and earlier this year singer Kylie Minogue’s efforts to prevent Kylie Jenner registering the mark "KYLIE" in the US for "advertising services" and "endorsement services" was one such example. Minogue was successful in her opposition earlier this year but in an interview has revealed she was bothered by her legal team referring to Jenner as a "secondary reality TV personality". As reported by independent,ie, Monogue stated: “I was so upset when I heard that. Who said what? You can’t say… what I heard back is that’s ‘lawyer speak’…  We know that lawyers speak differently than humans do, person to person. So I felt bad, even though I didn’t say it. I thought, that’s not a really nice thing to say.” In the end, however, that lawyer speak did prove successful  - although many of WTR’s readers may disagree with her conclusion that “Trademarking is literally one of the most boring, expensive things to do.” (TL)

New Louis Vuitton lawsuit reflects its careful brand protection strategy - A  blog on The Fashion Law puts Louis Vuitton’s brand protection strategy under the microscope following the fashion house’s recent infringement suit against New York wholesaler i-Fe Apparel. Filing a complaint to a New York federal court last week, the Paris-headquartered brand accused the defendant of intentionally selling products with virtually identical marks and designs to its own most popular and distinctive trademarks. It states the company was “willfully using (its marks) without (its) consent or authorization…(to) improperly trade off and reap the benefits of the extensive goodwill associated with the Louis Vuitton brand and Louis Vuitton’s world famous design marks.” Louis Vuitton has asserted 15 claims of federal and common law trademark counterfeiting, infringement and dilution, as well as false designation of origin and unfair competition claims. The 15 trademark claims relate to the Toile monogram as a whole, the flower mark and the LV logo mark This high number of claims, The Fashion Law comments, “is one of the most interesting takeaways in this otherwise straightforward counterfeiting and infringement lawsuit”. “By maintaining trademark registrations and common law protection for each of these individual design elements, as well as the Toile Monogram as a whole,” it explains, “Louis Vuitton is able to turn what might otherwise be a single claim of federal trademark infringement into three separate claims, with the same going for the other infringement, dilution, and counterfeiting claims. This means that the design house will be entitled to greater monetary damages if (or better yet, when) a court finds that such infringement, etc, has occurred.” This approach has the further benefit, the blog argues, of giving the brand “greater leeway to attack infringers should they make any changes or modification to their depiction of the monogram, itself, such as by only using certain elements - say, the flower designs - but leaving out others, such as the “LV” logo design.” (AH)

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

Reporter

ahouldsworth@GlobeBMG.com