Audi launches anti-counterfeiting campaign, YouTube brand safety fiasco and TMview expands: news round-up

Every Tuesday and Friday, World Trademark Review presents a round-up of news, developments and insights from across the trademark sphere. In our latest edition, we look at the expansion of the EUIPO’s TMview search platform, Audi launching an anti-counterfeiting awareness campaign, Scotch Whisky attaining GI protection in South Africa, Chinese trademarks continuing rapid growth rate, and much more. Coverage this time from Trevor Little (TL), Tim Lince (TJL), Adam Houldsworth (AH) and Timothy Au (TA).

Market radar:

YouTube embroiled in brand safety fiasco again as Mars suspends ads – Concerns over inappropriate content appearing besides brand advertisements have proved to be a persistent headache for YouTube in the last 18 months. This issue has seen hundreds of brands, including the likes of Cadbury, Adidas and Mars, pull their marketing spend on the site over brand safety worries. Now, Mars has once more suspended advertising after discovering that an advert for Starburst was appearing at the start of a rap music video with alleged links to gang violence in London – one of the group members featured in the video was killed recently due to an allegedly gang-related attack. A Mars spokesperson stated that the appearance of the advert before the video was “unacceptable and disappointing” and that it breached their brand safety guidelines. Other companies, including Dettol and Clearblue, have also claimed they will be reviewing their spend on the video-streaming platform. A spokesperson for YouTube has confirmed the company is reviewing the videos and working with the UK police on the matter. (TA)

Companies are ineffectively managing IP risk but IP insurance interest is growing – A new report from Willis Towers Watson’s (WTW) states that multinational companies are falling short when it comes to managing the financial impact of their IP risks, and in particular the potential impact of IP litigation. Analysing the current IP litigation landscape as a whole, the study finds that the frequency of disputes in China is fast increasing, while IP litigation remains the most severe in terms of costs in the US. Based on the survey it conducted, WTW found that barely half of respondents tracked what IP litigation was costing their company on a per-incident or annual basis. Additionally, 50% of those surveyed agreed these costs could have a significant impact on their businesses but less than 10% had IP insurance coverage (the report also offers an examination of the IP insurance market). We have previously written about the generally low levels of interest and awareness for IP litigation insurance, but the report finds that this is slowly changing. It notes that new entrants together with more data and capacity are helping to drive growth in the market. (TA)

China announces AI-learning support system for IP infringement and counterfeiting – China’s State Intellectual Property Office (SIPO) has announced a plan to put in place a technical support system to detect and track evidence of IP infringement and counterfeiting by 2020, according to Xinhua. This system will involve a number of databases, including one with the core information of IP authorisation files, another with an intelligent detection system, and one with IP legal judgments to aid in artificial intelligence learning. As outlined in a working plan on IP protection by the SIPO, the whole system will be connected to other management systems, such as those for law enforcement, to provide assistance and guidance. (TA)

Consumers prefer to ‘discover brands’ outside of ads – New research from referral marketing platform Mention Media has found that consumers in the UK prefer to discover new brands and products through “self-discovery” rather than via traditional advertising channels. The study found that 71% of consumers prefer to find brands via “friend’s recommendations, browsing in-store or online searches”, according to an article on Marketing Week. When it comes to trust of those recommendations, paid-for endorsements ranked the lowest of all metrics (even lower than traditional advertising). So despite increasing spend in this area (for example, brands partnering with prominent ‘influencers’ on Instagram ad YouTube), just 3% of respondents say they trust such recommendations when it comes to brand discovery. Crucially, though, it adds to the growing body of evidence that traditional advertising is not the way that most consumer seek out new brands. For trademark practitioners, this could see increased challenges, as marketing moves into the more difficult to enforce environments to engage with consumers. (TJL)

Malta is latest to join UN protocol to eliminate tobacco illicit trade – It was announced on Saturday that Malta has acceded to the United Nations Protocol to Eliminate Illicit Trade in Tobacco Products, joining a number of other member states to help end the smuggling, illicit manufacturing and counterfeiting of tobacco products through the securing of supply chains. The Health Ministry issued a statement underlining the need to take action to protect the population from the harmful effects of tobacco, particularly through the tackling of illicit trade. The protocol is set to come into force at the end of September. (TA)

Legal radar:

Four countries join TMview – The EUIPO has confirmed the addition of Uruguay, Honduras, El Salvador and Costa Rica to its TMview and TMclass tools. As of 30 July 2018, the trademark data of all four has been added to the TMview search platform. In total, then, TMview now contains information on 51 million trademarks from 67 participating offices. In its announcement, the EUIPO stated: “The implementations of DNPI, DIGEPIH, CNR and RNPCR in the flagship tools are concrete results of the IP Key Latin America programme directed by the European Commission and executed by the European Union Intellectual Property Office.” (TJL)

Scotch Whisky wins GI protection in South Africa – The Scotch Whisky Association (SWA) has successfully applied for certification mark rights in South Africa, ensuring that only approved Scottish producers are allowed to market products bearing the Scotch Whisky name in the country. The association has been seeking to gain and enforce certification rights around the world to protect an that earns the UK £4 billion each year; exports to South Africa were worth £144 million in 2017 – over 20% greater than the previous year. According to The Drinks Business, the SWA’s chief executive, Karen Betts, said that new mark is “a milestone for Scotland’s national drink in our largest export market in Africa, and one of the largest in the world... This registration offers Scotch Whisky a greater degree of legal protection and will allow us to prosecute rogue traders who seek to cash-in on the heritage, craft and quality of genuine Scotch”. (AH)

Chinese trademark applications continue to grow at rapid pace – The first half of 2018 saw 3,586,000 trademark applications made in China, points out a recent article by the China Law Blog. This puts 2018 on course to exceed 2017’s tally of 5.7 million filings. And it took the total number of applications filed in the country to 31.5 million by June 30th 2018, with 19.4 million marks registered. According to statistics from The China Trademark Office, the average time taken to process eacfh application is down to 7 months; though the blog comments that this “seems generous”. (AH)

Media watch:

Seek “super trademarks” in China, blog suggests – A recent blog in The National Law Review gives some useful hints about the best way to reduce the time, difficulty and expense involved in enforcing rights and tackling trademark squatters in China. Laura Kees of Womble Carlyle writes that companies should consider seeking “super trademark” protection by acquiring copyright registration as well as a trademark for creative design branding. She points out that copyright registration in China, unlike trademark registration, covers all goods and services and is typically completed in a short space of time; perhaps one of two months if no objections are raised. If you have a copyright registration, it can be used as proof of rights for cease and desist letters, and can help to enforce trademarks. Bear in mind, though, that copyrights must be registered at the Copyright Protection Centre of China, rather than at the China Trademark Office. (AH)

Audi reveals “how employees fight trademark infringements” – A new multi-part series on the website of automotive giant Audi takes a detailed look at the company’s brand protection strategy. Speaking with employees in its so-called Audi Brand Protector team (which consists of three lawyers, two accounting clerks and two technicians), the posts detail how Audi identifies and removes fake parts from the marketplace. Part one looks at awareness and how Audi supports the ongoing #buyreal campaign by the UKIPO. Part two expands on how consumers can identify fake car parts and how prevalent the problem is. For example, when asked where most Audi fake car parts are produced, the answer was not surprising: “The main production sites are all located in Asia. According to our findings, around 90 percent of all components are produced in China and disturbed worldwide from there.” Part three goes into more detail about how Audi cooperates with authorities to tackle the trade of such dangerous car parts. In it, brand protection manager Serhyi Jewtymowycz described how one particular city in China is a hotbed for counterfeits. “The home of plagiarism, however, is the Chinese counterfeiting capital Wenzhou. Here, Audi parts are forged on a large scale. Weekly raids on the production sites are intended to combat the problem at the source, so that counterfeits cannot make it into global trade.” More articles will follow in this series, which is a good example of how brands can raise awareness about counterfeits and even bring in brand advocates as part of the fight. (TJL)

And finally...

Get to know the corporate trademark world’s leading lights – World Trademark Review has published the enhanced version of the 2018 WTR 300: The World’s Leading Corporate Trademark Professionals list. This community-led research project identifies the individuals deemed to be the leading lights of the corporate trademark world, and now features profiles of many of the industry’s leading trailblazers. Click here to access the enhanced version. (TL)

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