19 Mar
2019

Louis Vuitton victory, Apple Pencil confusion, and brand loyalty declining: 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 a call for post-Brexit partnerships to combat counterfeiting, looking ahead to the WIPO elections, time running out to have your say on the EU designs regime, the Philippines IPO seeking to regulate Facebook sellers, and much more. Coverage this time from Trevor Little (TL), Adam Houldsworth (AH), Bridget Diakun (BD) and Tim Lince (TJL).

Market radar:

Study finds that Amazon brands are not a threat to other retailers New research from Marketplace Pulse has analysed 23,000 products to reveal that consumers are not more inclined to buy Amazon private-label products even if these goods appear higher up in Amazon search results. In the last two years, Amazon has been releasing its own brands, a move that has garnered concern over the tech giant’s ability to use its platforms to favour its own products. Senator Elizabeth Warren was one such person, accusing the company of having an unfair advantage, and proposing to break up the company. However, this new study suggests that Amazon’s private-label products are not a threat to smaller sellers and that the media has been exaggerating the company’s market power. It appears that Amazon’s private products are successful as generic alternatives, such as its battery collection, but may struggle to win over consumers in categories like fashion, where brand loyalty already exists. Founder of Marketplace Pulse, Juozas Kaziukenas, explains that Amazon may not be making waves in this respect because it is not focusing on building brands, but instead offering cheaper alternatives to the products that already exist. Although Amazon is, in itself, a powerful brand, it seems this focus does not automatically transfer to the goods it produces, meaning that fears over its platform dominance may be overblown. (BD)

Brand loyalty is on the decline – Despite the above, a study by Criteo, an advertising technology company, indicates that shoppers are more willing to ditch their usual brands than ever before. The digital age has made consumers much smarter shoppers, and has also given them unlimited purchasing options, it contends. As such, 73% of the consumers surveyed said they were willing to switch in at least one of the shopping categories considered (ie, luxury goods, shoes, electronics). Shoppers were the most likely to consider a switch in the grocery (80%) and apparel (72%) categories. Over half of the respondents were willing to try a new brand in each category, except for luxury goods in which only 46% of consumers saying they would consider other brands. Although there was no single defining factor to explain why shoppers would decide to switch brands, “best value for money” and “lowest prices” did crop up as the top answers. Other factors mentioned include product selection, service and location. Over 50% of the respondents said that a company’s values impacted their decision, with one in six reporting that they had stopped buying a brand because it did not match their personal values. (BD)

Call for post-Brexit partnerships to fight counterfeiting – Phil Lewis, director general at the Anti-Counterfeiting Group (ACG), has called on the UK government to recognise international alliances and protect them post-Brexit in order to protect consumers from the threat of fake goods. Speaking at the launch of the ACG’s 2018 Annual Report, Lewis declared: “Despite the political unrest and the anguishing time that the Brexit negotiations have brought for all sides of the debate, ACG has continued to establish ourselves as a national and international hub for a network of bodies engaged combating the escalating threat of counterfeiting…. Throughout the year, we have collaborated with a growing range of political, regulatory and enforcement partners, within the UK, the EU and on the international stage. Importantly, we have taken a leading role in offering policy and regulatory advice and in facilitating intelligence led actions against notorious markets and online sellers. Our members are determined to help ensure the joint safety and security of business and consumers and we will continue to do our utmost to preserve relations and build even more effective levels of communication and collaboration.” (TL)

Research finds scale of cyber attacks in Europe – In a new study, cybersecurity firm Kaspersky Lab UK has found that more than half of European businesses, out of the near 2,000 surveyed, have faced at least one cyber attack in the last 24 months. On top of that, a significant proportion of these cyber attacks caused a disruption of some kind, including service disruption (31%), data integrity issues (18%) and data loss (15%). For trademark practitioners, cyber attacks can have a major effect on brand integrity and trust, so it is important to have a strategy in place to prevent and react to such cybersecurity breaches. (TJL)

Legal radar:

Time running out to have your say on EU designs regime – The European Commission is conducting a stakeholder consultation to gather evidence and views on the current EU legislation on design protection, with the submission period due to close on 31 March 2019. In a EUIPO reminder to participate, the office notes that the consultation has been “been launched with the intention of collecting the input of stakeholders on the functioning of the design protection systems in the EU, at Union and at national levels”. The consultation activities will help the European Commission to draw conclusions on the need for improvement, modernisation and further harmonisation of the current legal acts – making it one for rights holders to engage with. (TL)

Louis Vuitton scores victory in “My Other Bag” parody dispute – Louis Vuitton does not owe My Other Bag $802,939 in legal fees, according to a Second Circuit Court of Appeals ruling on Friday, it has been reported. The fees were incurred during the four-year legal battle between the two parties, in which the French fashion house accused the Californian company – which sells tote bags featuring cartoon versions of Louis Vuitton branding – of trademark and copyright infringement. Louis Vuitton has suffered a series of losses (in the Southern District of New York District Court and the Second Circuit Court of Appeal) with it being found that the totes amounted to parodies. Having been denied an en banc rehearing in 2017, the luxury brand unsuccessfully petitioned the US Supreme Court, arguing that the precedent rendered brand owners “vulnerable to widespread dilution through the production of imitation products marketed under the guise of ‘parody’.” However, it has been more successful in the dispute over how much it must pay My Other Bag. The Californian company contended that Louis Vuitton had tried to grind a smaller company into submission in the litigation, accusing it of “aggressive” and “bullying” tactics. However, last week’s ruling upheld a previous opinion that “Louis Vuitton’s (claims in this case) were not so objectively unreasonable” and that My Other Bag had failed to demonstrate statistically that it was an abuser of the litigation process. (AH)

Office radar:

Looking ahead to the WIPO elections – An interesting piece on Intellectual Property Watch has taken an early look at candidates who could be in the running for the WIPO director general role when elections are held next year. William New writes that, among interested nations, there is an unofficial understanding that the new director will come from Latin America or the Asia Pacific regions. Among the names he identifies as possible runners are Miguel Ángel Margáin, the former director general of the Mexican Institute of Industrial Property, Maximiliano Santa Cruz (who most recently served  director of the Chilean IP office and recently spoke to WTR about the need for IP offices to evolve to meet the growing demand of users) and Daren Tang Heng Shim, head of the Singapore IP Office. None of the potential candidates in question have publicly expressed interest in running, but the run-up to the elections are worth following as the organisation looks to a possible successor to Francis Gurry, who has served in the role for over a decade. (TL)

IPOPHL seeks to regulate Facebook traders – The IP Office of the Philippines (IPOPHL) is seeking to regulate SMEs that sell products via Facebook, according to BusinessWorld. IPOPHL deputy director general, Teodoro C Pascua, said that the registry is pursuing such a measure to protect IP rights and trace those selling infringing products. The move would see online sellers register their businesses with the country’s Department of Trade and Industry, and any found without regulatory documents may be removed from Facebook. Crucially, the mechanism is not yet finalised, but it represents a hardline stance from an IP office in tackling the scourge of fake goods being traded on social media. (TJL)

Latvia call to apply for ‘Trademark of the Year’ – Applicants have until the end of the week to apply for the Latvian IP Office’s competition for ‘Trademark of the Year 2018’. The competition is split into two: ‘Trademark of the Year for Latvia’ and ‘Trademark of the Year for the World’. In order to participate, a trademark must have been registered at the Latvian IPO (either through a national mark or in an international procedure) in the last 12 months or as an EU trademark. To find out more, or apply, you can read more on the registry’s website. (TJL)

Moldovan IPO launches application checking service – The Moldovan State Property Agency Intellectual Property Organization (AGEPI) has launched a new service to provide advisory assistance to applicants geographical indications (IGs), designations of origin (DO) or traditional specialties guaranteed (GTS) applications. The procedure is free-of-charge, with further details on the registry’s website. (TJL)

Kyrgyzpatent trains local businesses in trademark protection – The State Intellectual Property and Innovations Service under the Government of the Kyrgyz Republic (Kyrgyzpatent) has recently trained local businesses in the country on registered trademark and designs. The hope is it will help domestic companies to more effectively promote their goods in local markets. More information about the event can be found on the registry’s website. (TJL)

EUIPO and EAPO pledge cooperation – The EU Intellectual Property Office (EUIPO) has announced that, following a delegation visit to its premises, it has strengthened cooperation with the  Eurasian Patent Organization (EAPO). The EAPO is an intergovernmental organisation representing eight member states (Armenia, Azerbaijan, Belarus, Kazakhstan, Kyrgyzstan, Russia, Tajikistan and Turkmenistan).  During the visit, the two parties signed a Memorandum of Understanding, with the EUIPO pledging to host training programmes and to share information on tools. (TJL)

Media watch:

Apple Pencil confusion – In an interesting article on The Verge, senior editor Vlad Savov analysed a potentially confusing situation due to the product naming strategy of technology giant Apple. He explains that Apple introduced a new iPad Mini and iPad Air product this week, both of which arrive six months after the launch of its second-generation Apple Pencil stylus product. However, the new iPad products are only compatible with the first-generation Apple Pencil (which has an identical name and looks very similar). As Savov notes: “There’s a very real possibility that people will watch iPad commercials on TV extolling the virtues of the vastly improved Apple Pencil and then go online and buy the older Apple Pencil with the assumption that it must be the same product if it has the same name. Brevity may be the soul of wit, but this strikes me as an example of product naming abridged beyond the point of usefulness.” Indeed, as trademark practitioners will know, having clear, distinctive product names is often as important as having a strong master brand. For Apple, having identical brand names for different products could lead to consumers opting for the wrong product (especially if purchased from a third-party vendor). On top of that, it has created an entire line-up of ‘iPad Pro’ products with little differentiation between the names. As one commenter on the Verge article exclaimed, “failing to give the two incompatible products their own names is not forgivable”, with another decrying the company for its product name strategy: “The new iPad Pro-compatible pencil is compatible with the new iPad Pro but not the older iPad Pros. And the old Pencil is iPad Pro-compatible, just not with the new iPad Pros. What a mess Apple has created.” The confusion highlights the complexity involved in offering multiple generations of the same product. For Apple, maybe a product name audit is required, with the trademark team advising how best to untangle the ever-growing list while maintaining IP sufficient. (TJL)

On the move:

Stubbs Alderton & Markiles welcomes new head of trademark practice – According to a press release on Stubbs Alderton & Markiles’ website, Heather Antoine has been appointed to partner in charge of leading the trademark team. Antoine will join the Sherman Oaks office. She is well versed in trademark prosecution and enforcement and also specialises in privacy law, including issues pertaining to GDPR. (BD)

EIP appoints Fowler – International IP firm EIP has announced the appointment of Nora Fowler to the position of associate in the firm’s London office. She will be working within the trademark team, and joins from Novagraaf UK. She has experience with working across the full spectrum of the trademark lifecycle, and has managed the portfolio and advised on risks for clients in sectors including fashion and sport. Claire Lehr, partner and head of EIP Brands, commented on the appointment: “I am excited to see our trademark team grow with the addition of Nora. She has a strong work ethic and well-rounded experience in a wide range of sectors.” (TJL)

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]