Chinese brands rise, app store warning and K-pop fans furious over T-ARA trademark: news round-up

In our latest news round-up we look at a brand protection technology company closing a $12 million investment round, an author seeking registered trademark protection for a ‘steamy’ National Hockey League team name, the EUIPO no longer accepting applications by fax and a new warning about brand misuse on app stores. Coverage this time from Trevor Little (TL), Tim Lince (TJL), and Adam Houldsworth (AH).

Market Radar:

(More evidence of) Chinese brands on the rise – China’s State Intellectual Property Office (SIPO) has given a promotional boost to the World Brand Lab, which included 37 Chinese brands on its recent list of the World's 500 Most Influential Brands. A post on the office’s official site, sourced from China IP News, notes that State Grid, Tencent, Haier, Huawei, CEFC, TSINGTAO, Wuliangye, Air China and China Taiping all feature on the list, with Xie Jinghui, a brand expert from Shanghai Academy of Social Science, quoted as saying: “Building a brand is urgent for implementing innovation-driven development strategy and driving market players to compete internationally. Our tasks in taking on the challenges include making Chinese brands carrying more weight, facilitating the changes from ‘Made in China’ to ‘Created in China’, from Chinese speed to Chinese quality and from Chinese products to Chinese brands." In the latest edition of World Trademark Review, we identify the rise of Chinese brands as one of the 25 industry trends to watch over the coming two years. This year 37 make the top 500 list. Next year, expect more. (TL)

Brand protection tech company closes $12 million investment round – Online piracy and counterfeiting detection specialist Red Points has announced the closure of a $12 million Series B round, led by European VC Northzone (with participation from previous investors Mangrove and Sabadell Venture Capital). In 2017 Red Points, which has developed a cloud-based SaaS solution for IP infringement detection and removal, achieved annual growth of 350%. It is due to open a New York office next month as it seeks to expand its operations and, in a press release announcing the injection, Josep Coll, chairman and founder of Red Points, stated: “To remain the world’s leading technology solution in online counterfeiting and piracy prevention, we need to lead the sector in terms of technology, professional expertise and knowledge. This investment round gets us closer to this.” (TL)

Legal Radar:

Red Bull decision shows difficulty of maintaining colour marks, argues lawyer – The EU General Court recently upheld the decision of the EU Board of Appeal to cancel two Red Bull colour trademarks (coverage is available here). A recent blog by Gill Grassie, a partner at Brodie’s, argues that the decision reflects the desire of the authorities to keep colour monopolies as limited as possible. Having registered two rights protecting the combination of silver and blue in 50/50 proportion in 2002 and 2005 respectively, Red Bull had its colour combination mark invalidated by EUIPO in 2013 for lacking distinctive character. Upholding that cancellation, the recent General Court decision noted that the descriptions were not precise enough in setting out the scope of the protection “with regard to the systematic arrangement associating the colours in a predetermined and uniform way”. Grassie concludes that the decision shows how difficult it is even for an iconic brand like Red Bull to uphold and enforce a colour combination monopoly. (AH)

EUIPO stops accepting applications by fax – A quick reminder for counsel that still regularly use fax machines – the EU Intellectual Property Office (EUIPO) stopped accepting EU trademark applications and renewals via the technology from last week. The move is in accordance with Decision EX-17-4, which states that fax will no longer be accepted except as a backup system for if, or when, a technical malfunction prevents the ability to submit a digital filing. (TJL)

Author files mark for steamy NHL team name – A romance author has filed a trademark application for the name of a fictional NHL team featured in her steamy novel series. Jami Davenport has written nine books about the ‘Seattle Sockeyes’ team, and told ESPN that the marks were not about profit, but about protecting her business: “I have built this brand around the Seattle Sockeyes over the last three or four years. I got a logo, t-shirts, jerseys. I make a good amount of money off it, and I know how closely the NHL guards its own brand and its trademarks.” Indeed, it seems there is a popular, and growing, niche of romance novels based around popular sports leagues. There’s an entire page on GoodReads dedicated to ‘hockey romances’, with one series, ‘NHL Scorpions’, now up to five books (and described in one review as “a fun, sexy read”). Unsurprisingly, the author of the NHL Scorpions series, Nikki Worrell, has not attempted to attain registered trademark protection. (TJL)

Research radar:

New research sees plain packaging in a positive light – Academics at the University of California’s San Diego School of Medicine have published research that suggests plain, standardised cigarette packaging “can help to eliminate any false perceptions that smokers might have about certain products being safer than others”. In the research, which was based on an online survey of 900 consumers, it found that cigarette brands that used terms such as low-tar, natural, organic or additive-free created an impression that they are safer than other cigarette brands. When plain packaging was substituted for these brands, “smokers' perceptions of their safety decreased significantly. There’s a growing body of studies in relation to plain packaging since it was introduced in Australia in 2012. However, authors of research into plain packaging have complained that results are often being used to push an agenda – with one professor telling World Trademark Review last year that his study, which looks at the effectiveness of warning labels on alcoholic products, was being used to push a ‘pro plain packaging for alcohol’ narrative. It seems that as we enter 2018, plain packaging remains a hot button – and emotive – issue. (TJL)

Media Watch:

K-pop fans furious over music company’s trademark application – A South Korean entertainment company has caused ire after filing a trademark application for the term T-ARA, which is also the name of a popular Korean pop (K-pop) band. It was reported over the weekend that MBK Entertainment applied to register for the term on December 28 at the Korean IP Office. If accepted, it has been claimed that members of T-ara, one of the most popular K-pop bands in the world, will not be able to promote under that name for the duration of the registration – and even if they change their name, they may have to pay royalties to the agency if they perform songs that were released under their original name. One nuance is that T-ara originally formed under the management of MBK Entertainment, and the band announced their departure from the music agency a week ago. Therefore, when MBK Entertainment commented on the move, a spokesperson said: “We believe that we are justified in applying for this trademark as the [former] agency [of the group]. We parted on good terms and the members have not decided on their future plans yet. We don’t believe it is right for us to be criticized for our actions.” Nonetheless, there has been significant criticism of the move from K-pop fans. For example, the comments on one article at are nearly all negative, with users accusing the agency of “blatant pettiness”. In another, on AllKPop, users labelled the company "bitter" and "money hungry". But if, as it seems, MBK Entertainment own the band's songs and other intangible rights, then – in the mind of some users – “business is business”. But in the close-knit K-pop community, where reputation is everything, it could be a move that MBK Entertainment ends up regretting. (TJL)

12 resolutions for brand owners doing business in China – The China Law Blog has set out the first six of its 12 new year’s resolutions for companies seeking to protect their brands in the China in 2018. The handy tips for operating include taking advantage of not being required to prove use by registering more trademarks than you need, and creating a distinctive Chinese name for your brand. Tackling squatters when they become vulnerable to non-use action after three years is another piece of advice, as is monitoring your marks closely to avoid missing out on the short window for oppositions. For seasoned trademark counsel these may seem like common sense, but a reminder of best practice is always useful. (AH)

Beware of Justin: TrademarkNow warns about app store misuse– Intellectual property technology company TrademarkNow has penned a blog post warning about the dangers of brand misuse on app stores. While an estimated 60,000 new apps are created every month, a tiny number of developers seek registered trademark protection for the name of their apps. However, these app names are protected under common law. It’s for that reason, the blog adds, that legal counsel should conduct comprehensive clearance searches on app stores to avoid any unexpected issues. To double-down on this point, it presents a hypothetical situation of Justin, a college freshman who releases an app called ‘Fireplace’. This fictional app makes $50 in its first year, and Justin plans on updating the app because he sees it as having a “viable revenue stream” in the future. However, in this fictional universe, toy conglomerate Hasbro is about to release a board called – you guessed it – ‘Fireplace’. As TrademarkNow states: “This ONE kid could theoretically force a GIGANTIC corporation to change its entire branding strategy, costing them thousands (if not millions) of dollars.” So brand owners beware – real-life equivalents of Justin could cause you headaches if you don’t perform adequate trademark clearance searches. (TJL)

On the move:

Tilleke & Gibbins promotes trademark expert to partner – Southeast Asian law firm Tilleke & Gibbins has announced the promotion of four new partners, including intellectual property enforcement specialist Loc Xuan Le. A recommended expert in the World Trademark Review 1000, Loc serves on the executive board of the Vietnam IP Association. Tilleke & Gibbins now boasts 24 partners across its seven regional offices. (TL)

DLA Piper appoints new IP co-chairs – Multinational law firm DLA Piper has named Frank Ryan as co-chair of its global Intellectual Property & Technology practice. Ryan also serves as deputy chair of the firm's global Media, Sport and Entertainment sector, and joins Stéphane Lemarchand as global co-chair of the IPT practice. Furthermore, the firm also announced the appointment of Ann Ford as co-chair of its US IP & Technology practice. Both roles were effective from January 1. (TJL)

J A Kemp opens Paris office – European IP firm J A Kemp has confirmed it will open an office in Paris, its second in continental Europe. Opening on February 1, the office will offer the full range of patent, trademark and design services, including prosecution, oppositions, appeals, portfolio management, litigation and dispute resolution. The new office’s trademarks operation will be led by James Fish, a partner at the firm who currently heads up the Trademarks and Designs Group. According to a spokesperson for the firm, the opening of a Paris office represents the success the firm is seeing, including a 30% headcount growth in the past five years and the opening of an additional UK office, in Cambridge, in 2016. (TJL)

Barnes & Thornburg adds new IP litigator – US law firm Barnes & Thornburg has hired Bruce Little, an experienced trial lawyer, as a partner in its IP department. He is one of seven new attorneys to join the firm’s Minneapolis office since the start of 2018. Little joins from Lindquist & Vennum, and his practice focuses on advising clients on the licensing and financing of patents, trademarks, copyrights and trade secrets. “IP is a core strength of our firm and Bruce continues that outstanding tradition as one of top litigators and advisers in the Twin Cities,” commented Connie Lahn, managing partner of the firm’s Minneapolis branch. (TJL)

And finally…

Litigation guide released – The 2018 edition of Trademark Litigation 2018: A Global Guide is now available to view online. For trademark professionals, litigation is usually the action of last resort or launched only when faced with critical brand challenges. When it does become unavoidable, it is essential to create a robust strategy, taking into account the applicable systems and procedures in the relevant jurisdiction. Reflecting this, our free-to-view guide serves as an invaluable reference guide to the litigation regimes in 16 important jurisdictions. (TL)

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