1 Sep
2020

Lebanon IP Office to reopen; GIs return to Brexit forefront; Mel Gibson brand dispute – news digest

Every Tuesday and Friday, WTR presents a round-up of news, developments and insights from across the trademark sphere. In our latest round-up, we look at Clarivate and IP DESK teaming up, TikTok hosting its first shoppable live-stream, Nestlé finding a buyer for its water business, a counterfeit Nintendo Switch entering the market, and much more. Coverage this time from Trevor Little (TL), Bridget Diakun (BD), Joyce Ng (JN), Jonathan Walfisz (JW) and Tim Lince (TJL).

Market radar:

Clarivate and IP DESK team up Clarivate and IP DESK have announced a partnership to “deliver trademark management workflow efficiencies for IP professionals”. The partnership sees IP DESK customers access the watching solution of CompuMark, with trademark data integrated into the IP DESK IP management platform. Jeff Roy, president of the IP Group at Clarivate, said: “At Clarivate, we are on a mission to empower companies across all industries to maximize value from their IP assets while minimizing risk. Trademarks are a key IP asset for businesses and our partnership with IP DESK will enable companies to safeguard their valuable brands and improve productivity.” (TL)

TikTok hosted its first shoppable live-stream while Douyin focuses on its e-commerce services – Last week, TikTok and NTWRK, a video shopping platform targeting Gen-Z consumers, collaborated with artist Joshua Vides to launch an exclusive limited-edition fashion collection. TikTok users were granted early access through TikTok Live, which for the first time allowed users to purchase products directly through a pop-up page without leaving the app. This is “significant in making the social video app more transactional” and converting “passive viewers into active shoppers”, writes Mobile Marketer. On the other hand, the Chinese version of TikTok, Douyin, has become a favourite of online shoppers and it decided to gradually cut ties with third-party platforms like Taobao and JD.com in an attempt to hold its own as an e-commerce site. This could encourage the distribution of counterfeits in China – WTR recently investigated the popularity of Douyin as an avenue for selling illegal goods and the lack of regulation over livestreams. Could the same eventually happen with TikTok? (JN)

A-CAPP partners with IPR Center – The Center for Anti-Counterfeiting and Product Protection (A-CAPP Center) at Michigan State University has officially become the first academic partner with the National Intellectual Property Rights Coordination Center (IPR Center). “One of our first joint projects is the development of quarterly awareness reports that provide valuable insight on counterfeiting issues to stakeholders and the public,” said Jeff Rojek of the A-CAPP Center. “The additional benefit of these projects is we can integrate the A-CAPP internship students into them, which provides valuable experience to our students that represent the future workforce for our law enforcement and industry partners addressing counterfeiting.” The agreement will facilitate knowledge transfer between the center and university to share mutually beneficial information, research and technology that will advance intellectual property enforcement. “I’m excited to formalise our longstanding relationship with MSU making them the center’s first academic partner and look forward to forging new pathways to educate consumers, stabilize the US economy, protect small business owners and potentially recruit future federal government leaders,” commented Steve Francis, director of the IPR Center and an alumni of the MSU School of Criminal Justice. (TL)

Nestlé finds buyer for China water business – Tsingtao Brewery Group has purchased Nestlé’s China water business for an undisclosed price, reports Reuters. The Chinese beer maker will take control of local brand “Dashan Yunnan Shan Quan” as well as three factories located in Kunming, Shanghai and Tianjin. Further, Tsingtao Brewery will also produce and market the Nestlé “Pure Life” brand in China as part of a licensing agreement between the two companies. (BD)

Chinese brands outpace the global average in value growth – China has recorded the biggest growth in brand value in Brand Finance’s Global 500 ranking over the last decade, with its brands growing eight times faster than the global average, reveals valuation company Brand Finance. Nine of the top 10 brands with the largest increase in brand value over the last decade were from China. This includes Alibaba.com, which saw an increase of 4,029% in this time. Overall, the combined brand value of Chinese brands in the Global 500 jumped from $111 billion in 2010 to $1,334 billion in 2020, an increase of 1,100%. To compare, the United States experienced growth of 177% and Japan 94%. The Brand Finance China 500 ranking shows that the value of the country’s top 100 brands has gone up by 751% over the past decade, from $175 billion in 2010 to $1,486 billion in 2020. (BD)

Passion of the confusion – Actor and director Mel Gibson’s name has been used by a Chilean businesswoman for her organic honey brand, it has been reported. Yohana Agurto created her new business after becoming unemployed during the country’s pandemic lockdown. She created the brand ‘Miel Gibson’ using the Spanish word for honey and an image of the actor from the movie Braveheart, as well as the slogan ‘Only To The Brave’. In response, Mel Gibson’s lawyer Leigh Brecheen promptly sent a cease-and-desist, but implored that the actor did not want to see the end of the honey business – just for them to seek proper permission for the actor’s likeness. Gibson has ultimately agreed to allow Agurto to continue using the name and slogan, albeit without the film image of him. But the troubles weren’t over for Agurto as she then found out that a mark: ‘Miel de Ulmo Gibson Chile’, was registered at the National Intellectual Property Institute of Chile the day before. As Gibson did not say in his famous Braveheart role: “They may take away our brand name, but they'll never take our freedom!” (JW)

Major hauls of counterfeit bags in China and the US – Two large police stings on either side of the Pacific have brought counterfeit bag operations to light. In China, an operation has led to the arrest of 62 suspects across the country. Shanghai police began their investigation in the Qingpu district in December last year after finding a WeChat account touting fake Louis Vuitton bags. The account was traced back to a Guangzhou resident and further investigation uncovered a gang spread across the Guangzhou, Dongguan and Foshan cities of Guangdong province. Suspects were rounded up from over 40 locations with more than 2,000 fake bags seized worth over 110 million RMB (around US$16 million). A smaller but not insignificant sting in Louisville, US seized over 200 designer bags worth an estimated $583,440. Customs made the seizures from four packages sent from Dubai and heading to Brooklyn, New York. (JW)

GIs become a thorny issue in Brexit negotiations (again) – Brexit negotiations between the EU and UK continue, albeit at a slow pace, as the 31 December 2020 end of the transition period approaches. And, according to a report in The Guardian, geographical indications (GIs) have become a source of renewed concern. The outlet claims that the UK government is seeking to reopen the treatment of protections for specialty food and drink, in a move that left the EU chief negotiator, Michel Barnier, “a little bit flabbergasted”. New proposals were in a draft free-trade agreement handed to Barnier, but EU officials have ruled out diluting the previous provisions designed to protect more than 3,000 high-end food and drink products. The Guardian notes: “The return of the proposal, floated in the early stages of trade talks last spring, caused astonishment. “The asymmetry was met with open mouths. Why would you even suggest that in a serious negotiation?” said the EU source.” (TL)

Counterfeit Switch enters the market – Nintendo is facing a headache as reports indicate that a counterfeit version of its Switch console has been made available in China. According to GameRant, the fake Switch is also called a ‘Switch’ and plays games in a similar way to the original – on a TV (via a cable) or portably. It also looks nearly identical, including through the use of blue and red controllers on either side of the device. However, the fake version cannot play actual Nintendo Switch games – instead it appears to play simpler games and is available to buy for just $35. “Counterfeit consoles are pretty absurd,” the article notes. “The idea of simply copying the look of another console and using assets and ideas is not only silly, it is wrong. This particular China counterfeit Switch may not play the same games as the Switch, but it is clearly trying to look as much like the Switch as it can.” (TJL)

Legal radar:

Chevron sues Australian fuel supplier over alleged breach of contract – Chevron has launched court proceedings against Australian fuel supplier Ampol, according to Reuters. The two companies have a trademark licensing agreement whereby Ampol previously used Chevron’s ‘Caltex’ brand. However, the US company has alleged that Ampol has breached this deal through the use of “non-compliant” signage at 177 of its about 800 controlled retail sites. Further, Chevron claims that breaches were also seen at a number of third-party sites which were operating under a sub-license from Ampol. The Australian company has been in the process of transitioning from ‘Caltex’ to its previous brand, Ampol, beginning in December after it received a termination notice from the American company. The Australian brand claims it has until 31 December 2022 to complete the transition. Chevron is seeking an order for the removal of all the signage as well as damages. Ampol will be defending itself against the suit. (BD)

Myanmar announces soft launch of IP Department – The Ministry of Commerce has set 1 October 2020 as the soft launch date of the new Myanmar Department of Intellectual Property; it had already opened the online process for refiling trademarks last December. According to Satyapon & Partners, “trademark owners under the old registration system or those who can prove they are already operating in Myanmar without registration are eligible to register their trademarks from 1 October 2020 before the official grand opening”, which is still unspecified. The firm further notes that “we fully expect there to be a massive backlog once the office opens”, and this could last as long as five years. As WTR had previously covered, trademark opposition and enforcement work will likely ramp up after that, but foreign legal practitioners will need to adapt their approach to the local context. (JN)

Office radar:

(For more of the latest coronavirus-related updates from national IP offices, please read our dedicated article which is being continuously updated)

Lebanon office to reopen – The Intellectual Property Office in Lebanon is due to reopen this week, just two weeks after the  devastating explosion in the country’s capital. A post from law firm NJQ and Associates notes: “Officials were able to restore all data and records from the backup servers, the premises have also been refurbished, and the office will work at full capacity.” The re-opening follows “destruction” at the agency, including “loss of electricity and IP system due to which IP office staff members were not able to work”. (TL)

Domain Radar:

Amazon seeks to address ACTO disquiet – Last month, eight South American nations of the Amazon region demanded that tech giant Amazon blocks more domain names in the ‘.amazon’ gTLD, the salvo being the latest in a near decade-long skirmish over the ‘.Amazon’ TLD. While Amazon has won the battle for the string, having made a number of concessions to Amazon Cooperation Treaty Organization (ACTO) member states, including the opportunity to block from all use up to 1,500 domain names in each TLD that have a primary and well-recognised significance to the culture and heritage of the Amazonia region, ACTO has called for more. Over on Domain Incite, Kevin Murphy reports that Amazon’s head of public policy has written to ACTO to inform it that Amazon is “committed to safeguard the people, culture, and heritage of the Amazonia region” but seeking to draw a line in the sand, adding: “We are disappointed that we have not yet received the names and contact information of those within ACTO who might serve on the Steering Committee contemplated in the MOU because their knowledge and help could be very beneficial as we move forward to implement the PICs.” (TL)

Media Watch:

‘Simple and convenient’ increasingly important for brands – A new column in Forbes has suggested that brands need to consider simplifying their product portfolio “to help people in anxious times”. The article suggests that companies such as Aldi and Trader Joe’s have demonstrated how consumers are increasingly appreciating a “curated selection of products”, and that other brands should look to that for inspiration. “For many managing unending emails, demanding workdays, and a litany of other modern stressors, these business models help make one aspect of their lives feel a bit more manageable,” the column notes. Elsewhere, it claims that the ongoing pandemic is an opportunity for all brands to re-evaluate every aspect of their offerings – from the products or services to how they are marketed. “All companies need to take a step back and reassess their customer needs,” it concludes. “In an increasingly volatile and unpredictable world, rates of anxiety are not likely to wane for quite some time. In this environment, the brands that keep things simple, ‘authentic’, and convenient – that help people find that sense of security – are the ones who will win the hearts and dollars of an overwhelmed and exhausted public.” For trademark practitioners, they will be in a key position to lead that change. (TJL)

And finally...

How WTR is connecting trademark leaders this October – WTR recently unveiled the first  participants for WTR Connect, a series of high-level online events taking place across two weeks in October. Experts from companies including Abercrombie & Fitch, Burberry, Novartis, Starbucks, Under Armour and Walmart joining the roster, with Christian Archambeau, executive director at the EUIPO, confirmed to deliver a keynote. The ground-breaking digital concept offers a series of individual interactive digital sessions organised around major themes. Comprised of a series of hubs, each session is designed to facilitate discussion, benchmarking and the sharing of best practice around key topic areas and challenges facing trademark and brand leaders. Each day will start with a keynote address from a major industry figure. This will be followed by live breakout discussions lasting for a maximum of 60 minutes. These will be in a variety of formats including masterclasses, open discussion forums, solution rooms and closed-door, invite-only boardrooms. To find out more and to secure your place at WTR Connect, click here.

Joyce Ng

Author | Asia-Pacific researcher

[email protected]

Joyce Ng