China pledges more affordable IP protection, “Weird Al” gets defensive and CITMA celebrates first anniversary: 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 today’s edition, we look at Thailand considering a new industrial design law, a Wu-Tang Clan member’s trademark dispute with a dog-walking company, China State Council premier making fresh IP pledges and Alibaba forging a new brand protection partnership. Coverage this time from Trevor Little (TL), Tim Lince (TJL), Adam Houldsworth (AH) and Timothy Au (TA).

Legal Radar:

Thailand considering new industrial design law – Thailand’s Department of Intellectual Property is planning to introduce new legislation for industrial designs. Such a law would be the country’s first dealing specifically with industrial designs, which are currently covered by the Thai Patent Act. Draft legislation has not yet been completed, but a number of proposals have already come to light: changing the term of industrial design protection from 10 years to 5 years with the possibility of two renewals (potentially extending protection to 15 years); reducing the time applicants have to respond to the formality examination; and instating a requirement of ‘creativity’ in order to have designs protected. These changes are being considered against the backdrop of the efforts by ASEAN member states to join the international Hague System of industrial designs. (AH)

CITMA celebrates a year of Royal Charter – The Chartered Institute of Trademark Attorneys (CITMA) marks its one year anniversary as a chartered organisation today (November 24 2017). The Royal Charter, granted by the Queen, has enabled fully qualified CITMA members to use the title Chartered Trademark Attorney, which signifies their status as the leading practitioners in their field.  CITMA president Kate O’Rourke reflects: “It was with immense pride that we launched CITMA a year ago today. Being granted a Royal Charter is a great privilege for our profession and is a mark of the quality of service our members provide. It has also cemented CITMA’s position as the pre-eminent organisation for trade marks in the UK… The added gravitas of our Royal Charter has also helped CITMA to build upon our influence with key stakeholders – which at such a key time for our profession has been extremely valuable.” (TL)

Malawian official stresses value of geographical indications – Geographical indication rights (GIs) are crucial for adding value to agricultural products, one of Malawi’s top legal officials has stressed. Solicitor General Janet Banda made the remarks at the official opening of the 41st Session of the Administrative Council of African Regional Intellectual Property Organisation (ARIPO), being held in the country. GIs are especially important for agriculture-focused economies, such as Malawi’s, and were part of the government’s strategy to support the country’s entrepreneurial classes, she said. (AH)

Critics decry ‘paw form’ over Wu-Tang dispute – The leading ‘celebrity suing a small business’ news story this week was certainly the one involving RZA, a member of Brooklyn rap group Wu-Tang Clan. As reported by Mashable, the musician has taken legal action against a New York dog-walking company by the name of Woof-Tang Clan. The line seems to have been crossed, across to the articles, when the pet company filed for its own trademark in June, as well as the sale of various merchandise that parody Wu-Tang album covers (its shop appears to be empty now). Unsurprisingly for a ‘David versus Goliath’ trademark story, public reaction to the dispute are mostly in support of the pet business, with users calling Wu-Tang Clan “money grubbing”, “pathetic” and other more offensive terms. It’s a reminder, then, of the difficult PR position public figures face when infringement is identified. This is, of course, not the first high profile music figure to enforce their trademark rights; Rihanna fought retailer Topshop in court over the use of her image on a t-shirt, while Lady Gaga is reportedly in an ongoing dispute with a Belgian TV show called Radio Gaga. (TJL)

Market radar:

CBBC and Alibaba expand brand protection agreementThe China-Britain Business Council (CBBC) and Alibaba Group have signed an agreement that builds on the two parties’ existing partnership. The agreement will lead to the two collaborating on increased training on processes for the removal of IP-infringing listings, enhancing pre-emptive measures to stop infringing content from appearing online, and strengthening offline cross-border law enforcement cooperation. Tim Moss, CEO and comptroller general of the UKIPO, commented: “This agreement… strengthens IP protection for brand owners and increases consumer confidence that their online purchases are legitimate products.” The partnership has received the thumbs up from British technology company Dyson, with Gill Smith, group IP director, reflecting: “Thanks to the CBBC-Alibaba collaboration on IP, we have been able to remove more fakes from e-commerce sites than ever before. Their support makes a real difference to our ability to protect consumers from poor quality imitation products.” For Alibaba, the move is another opportunity to publicise its IP protection activities, with the official press release heavy on links to stories about its “extensive IP protection programs”. (TL)

China’s premier talks up IP protection as an economic driver – Li Keqiang, premier of China’s State Council, has highlighted the strategic economic importance of enhancing intellectual property protection in the country, noting that inadequate protection levels have contributed to a decline in private investment. Reuters reports that the cabinet plans to increase costs for those caught infringing on IP rights, and will make rights protection more affordable. His comments come at a time when the country is stepping up its own IP financing efforts. As we reported in July, Chinese businesses leveraged trademark rights to receive loans totalling Rmb65 billion in 2016, more than double the sums lent in 2015. Economic investment in intellectual property is clearly becoming a prime focus as the country seeks to boost the brand landscape. (TL)

Brand protection must be a boardroom issue On the MarkMonitor blog, Chrissie Jamieson, global head of marketing, argues that online brand protection must be a topic for boardroom executives and not just marketing, IT and/or legal teams. She notes that board members are fully invested in all online brand protection efforts, and the only way to ensure effective brand protection strategies is through a unified approach across all areas of the business. Jamieson adds that it must be crystal-clear to consumers that brands are taking online protection seriously, lest they risk a damaging snowballing effect to their reputation. Finally, it should also be the responsibility of the board to ensure that a formulated strategy is followed consistently and correctly by all areas of the business; if one department differs in approach to another to brand protection, little to no progress will be made. (TA)

On the move:

Cozen O’Connor adds litigation expert – Cozen O’Connor has announced that Hugh J Marbury has joined its intellectual property department as a member. A former partner at DLA Piper, Marbury will serve as a lead trial lawyer overseeing IP and commercial litigation matters in the firm’s Washington DC, office. His practice includes trademark, patent, copyright, and trade secret litigation in a range of technological areas. (TL)

Media watch:

Fake Brooklyn Nets merchandise found as Alibaba co-founder buys stake in team – Alibaba has been forced to respond after Recode found fake NBA goods on Alibaba on the day that the retailer’s co-founder Joe Tsai purchased 49% of NBA team the Brooklyn Nets. When alerted to the fakes, an Alibaba spokesperson told Recode: “Once these listings, which were posted by third-party sellers on Alibaba’s marketplace, were brought to our attention, we took action to investigate and remove them. As is our commitment and practice, we will continue to do so in close cooperation with rights holders.” One imagines, whether fairly or not, that this kind of article will appear any time an Alibaba executive invests in a company that sells merchandise. On the bright side, it allows Alibaba to further promote its efforts to tackle counterfeit goods on its various marketplace platforms. (TJL)

Weird Al gets defensive over link to Al Franken – American parodist “Weird Al” Yankovic posted a tweet this week urging the public and media outlets to “please use a different name” when insulting other public figures called Al. The post included an image of a USPTO letter confirming his registered trademark for the term WEIRD AL. The tweet follows newspaper headlines using the “Weird Al” alongside a picture of US senator Al Franken inappropriately groping a female radio host. (TJL)

Popular podcast looks into counterfeit cash – The design podcast 99% Invisible, regarded as one of the most popular podcasts in the world with 150 million downloads to date, had an episode this week focused on the history and production of counterfeit currency. Titled “Money Makers”, it looks at the strict penalties in the United States for counterfeiting that have existed since the 1860s, focusing on the restriction to be able to photograph or film images of the US dollar. The episode includes some interesting anecdotes, including how the Secret Service was formed specifically to deal with the problem of counterfeiting. We’ve written before about the need to raise awareness to the public about IP crime and counterfeiting – and episodes like this are positives examples of how this can be done. (TJL)

And finally…

Outstanding speaker line-up revealed for Brand Strategy China This week we unveiled the speaking faculty for the second annual Brand Strategy China event, taking place in Shanghai on December 7. Amongst the confirmed speakers on our high level roster are senior industry leaders from adidas, Brita, Chanel, Ford, Honeywell, L Brands, NBC Universal, New Balance, Philips,  and Whirlpool Corporation. The full programme and speakers list is available here. Click here now to reserve your place at this innovative industry event - just a few remain available at the discounted rate of $695 (using code ONLINEEB). (TL)

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