Facebook’s WHOIS access woes, DPMA’s IP workshop for refugees, and Santa-Cruz leaves INAPI: news round-up

Facebook’s WHOIS access woes, DPMA’s IP workshop for refugees, and Santa-Cruz leaves INAPI: news round-up

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 the Croatian president speaking up the concept of country branding, Gucci voicing its “reluctance” to work with Alibaba and JD.com, the Paraguay IPO conducting a counterfeit operation at the country’s largest international airport, brand owners being advised to get ready for motion marks, and much more. Coverage this time from Trevor Little (TL), Adam Houldsworth (AH) and Tim Lince (TJL).

Market radar:

Michael Kors targets New York-based landlords for failure to stop counterfeiting – Michael Kors last week claimed that “certain areas of New York City have long been major distribution hubs for counterfeit goods that are sold throughout the United States,” it has been reported. The brand has “been plagued by the sale and distribution of counterfeit goods at location all over New York City for years,” is it claimed in a lawsuit filed against in a New York federal court. The suit targets Amush Enterprises and other companies, which are alleged to have “turned a blind eye” to the sale of counterfeits from a building they own in the city – a building that has had a “revolving door” for fakers for over a decade. Michael Kors claims that the landlords are culpable for not acting against their tenants, despite receiving several notifications of criminal activity being carried out on the premises. (AH)

Gucci “reluctant” to partner with Alibaba and JD.com due to counterfeit concerns – According to the Financial Times, fashion giant Gucci has expressed reluctance at working with Chinese e-commerce platforms Alibaba and JD.com due to worries around fake goods. At the Business of Fashion conference in Shanghai, the company’s president and CEO Marco Bizzarri was quoted as saying: “Frankly speaking, on most of the platforms there’s a lot of counterfeiting, and I don’t want to certify counterfeiting, because I belong to these platforms.” This rhetoric is in contrast to Kering – parent company of Gucci – last year announcing a “landmark” anti-counterfeiting collaboration with Alibaba after dropping a lawsuit. (TJL)

Croatian president speaks up concept of country branding – The president of Croatia, Kolinda Grabar-Kitarović, has discussed the advantages of country branding. According to Emerging Europe, the president said the ability for a country to boost its brand is becoming increasingly important. “In a globalised world, a country’s image plays an extremely important role since it determines a number of factors that define its position, competitiveness and influence in international relations – but also the economic, demographic and other trends important for the stability and prosperity of the country,” she explained. “The Republic of Croatia has a well-recognised tourist and sports brand, but it should create its own powerful and effective national brand in order to give us a key competitive advantage over other countries.” During the speech, she confirmed that the Croatian government will set-up a working group to develop Croatia’s country brand. The concept of nation branding has been covered extensively at WTR, with a previous article noting how country branding can boost the health of corporate brand value too. It’s good to see nation leaders taking note of such importance. (TJL)

Legal radar:

Brands owners advised to be ready for motion – On 14 January 2019, brand owners will be able to apply for protection for moving images and sounds – with one local expert predicting a rush to secure such rights. In preparation for the upcoming changes, which removes the graphical representation requirement in applications, the UKIPO has indicated that any applications related to moving images and sounds should ideally be made in MP3 or MP4 formats. In a press release from Withers & Rogers, trademark attorney Mark Caddle noted that “we could see a rush to register moving images and sounds, as many brands have been preparing applications ahead of time”, adding: “The rise of e-commerce means online visibility is becoming more important to all brand owners. The ability to own dynamic brand assets, such as moving logos, sounds, holograms and filmic sequences, will not only help brands to stand out online, it will give them a new weapon in their armoury to fight copycats. These changes are long overdue and brand owners should review their intellectual property strategies ahead of their introduction in January.” (TL)

US ‘Swiss Military’ trademark under dispute – Victorinox, known for producing the iconic red Swiss army knives, has been asked to abandon its US trademark for ‘Swiss Military’ by one of its main customers, Switzerland’s Federal Office for Defence Procurement (Armasuisse). The company, which has supplied the Swiss military with knives since the 19th Century, registered the mark several years ago. But Armasuisse, in keeping with a 2013 law requiring the protection of Swiss state symbols, is now contesting Victorinox’s use of the trademark in the US. Demanding $1 million in compensation, it has said, however, that it does not seek to harm a “valued and long-standing partner”, implying that the threat of damages is being used as leverage to persuade the defendant to sign over the right. Victorinox has launched a counter-suit, but a scheduled court hearing has been postponed in light of ongoing settlement negotiations. (AH)

Office radar:

Santa-Cruz leaves Chile IPO – After nine years at the registry, Maximiliano Santa-Cruz has this week left the role of director of the Chilean National Institute of Industrial Property (INAPI) after deciding not to enter into the process of selection for the next director. In a blog post confirming his departure, some of his achievement were listed, including the rise in teleworking (with 35% of INAPI employees doing it) and the increasingly relevant role in public policy and innovation the office now has. Indeed, in terms of innovation, INAPI was ranked by WTR as the joint-fifth most innovative IP office in the world. “I leave with the satisfaction of leaving a mature institution which has gained prestige both inside and outside of Chile, and that is the result of the work of all INAPI officials – we are one of the best trademark and patent offices in the world,” said Santa-Cruz, who also gave a parting interview to WTR last month. (TJL)

German IPO to host workshop for migrants and refugees – The German Patent and Trademark Office (DPMA) has announced a new workshop for start-up businesses with a migrant and refugee background. To be hosted next Monday, 22 October, the event is titled "Infoday: Managing Intellectual Property (IP) for Start-ups with migrant and refugee backgrounds" and will take place at the DPMA’s office in Berlin (the full programme can be viewed here). In announcing the event, the DPMA gave a clear message on how it wants to help teach IP to those with a migrant background: “Have you fled to Germany and have little or no knowledge of intellectual property? Would you like an introduction to patent, trademark, design and utility model protection rights? Perhaps you would like to bring registered intellectual property rights with you to your new company to be founded in Germany? Then the information event will tell you what you can have protected and how you can integrate IP into your company, use it and increase its value.” We’ve often written about the need for IP offices to educate the public and domestic businesses about the benefits of IP – and this initiative should prove beneficial for groups of people not always specifically targeted in such outreach. (TJL)

UKIPO to run annual China IP Roadshow – The UKIPO has announced details regarding its annual China IP Roadshow, which will run from 1 to 7 November in Cardiff, Bristol, Guildford and London. The events will be run by the UK’s IP Attaché to China, Tom Duke, who will offer advice based on his extensive experience assisting UK companies to protect their IP rights in the country. The events will cover a broad range of IP rights, including trademarks, and are also intended to provide networking opportunities for large and small businesses interested in operating in the Chinese market. (AH)

OAPI hosts event on GIs – The African Intellectual Property Organisation (OAPI) has organised a meeting on the development of geographical indications (GIs) in Africa. The meeting was held yesterday, October 18, and was attended by representatives from the African Regional Intellectual Property Organization (ARIPO), the French Agency for Development (AFD), the European Commission, the World Intellectual Property Organization (WIPO) and the Food and Agriculture Organization of the United Nations (FAO). The purpose of the meeting was to agree on a common plan of action for the development of geographical indications in Africa, including a clarifying the multi-year funding for it under the 2014-2020 Pan-African Program for International Cooperation and Development initiated by the African Union (AU). The meeting comes in the week that Russia confirmed it is looking to introduce GIs. (TJL)

Paraguay IPO conducts airport counterfeits raid – The Anti-Piracy and Counterfeiting Directorate of the National Intellectual Property Office of Paraguay (DINAPI) has conducted a significant operation targeting counterfeit items at Paraguay’s main international gateway, the Silvio Pettirossi International Airport. The operation resulted in the retention of fake merchandise, and in total over 22,000 items were found with a market value of $1.3 million. According to the registry, some of the items include mobile phone items that contained the brand names Samsung and Motorola. To aid the operation, lawyers from the companies representing the seized items also accompanied the enforcement officers at the airport. (TJL)

Domain radar:

Facebook’s WHOIS access woes revealed – In a letter published in the run-up to next week’s ICANN gathering in Barcelona, at which WHOIS access is set to be a key talking point, AppDetex Brand Protection have illustrated the scale of the struggle for brand owners seeking to obtain information related to domain name ownership. Relaying the “extreme difficulties faced in obtaining “reasonable access” to redacted WHOIS for legitimate purposes”, the company highlights Facebook’s 9,041 request notices sent to a universe of 350 registrars – of which only 3% have resulted in access to full WHOIS records. Meanwhile, 11.4% of responses required a subpoena or UDRP action to be lodged before the request would d be granted. More worrying, 59.6% of requests had gone unanswered. Of course, this does not mean that 60% of registrars are not responding – it could be that a smaller pool of registrars received a significant portion of the overall requests – and without seeing the nature of the requests it is hard to make a nuanced reading. However, it does illustrate the scale of the challenge faced by large brands – and will no doubt be the focus of discussion in Barcelona by those on both sides of the privacy debate. (TL)

Friday catch-up:

Every Friday in our news round-up we will provide a quick rundown of the latest news, analysis and intelligence posted on World Trademark Review. Over the past week we:

  • Spoke to local legal experts about how the establishment of a ‘trademark protection office’ in Shanghai, designed to provide local companies with legal support and international know-how, plays into the Chinese government's drive to take local brands onto the global stage.
  • Sat down with Philip Morris’ Manager of Illicit Trade Prevention, who expanded on the importance of anti-counterfeiting efforts as the company transitions to a smoke-free future.
  • Explored the implications of a draft bill, introduced in Russia, which would establish geographical indications protection in the country.
  • Presented analysis of the role of anonymous confusion in litigation, with parties being warned to prepare for concerns related to relevance, hearsay and authentication.
  • Considered new research that revealed Amazon.com has overtaken Microsoft as the company boasting the highest level of intangible value – and the revelation that the picture is different when only disclosed intangible value is considered.
  • Explained why Canada’s legalisation of recreational cannabis is a development that trademark counsel should monitor, whether they reside with or without the country
  • Reported on a new agreement which is set to benefits brands protecting their rights in countries across Africa.
  • Published a column exploring brand communication strategies and efforts to reduce the risk of genericide 

And finally…

Get the inside track on cost-effectively managing trademark portfolios WTR is pleased to announce that Managing Trademark Assets Europe will be heading to London on 28 January 2019. The event will present cutting-edge strategies for the creation, protection and monetisation of strong brands, with attendees hearing senior in-house counsel across a range of industries discuss how best to manage risk, ensure continued brand protection coverage and communicate the value of brands to the business in a bid to secure multi-stakeholder support. Delegate places cost just £795 but registrants using the code ONLINEEB before 7 December can save £200 on this rate. Click here to register. (TL)

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