4 Dec
2018

Angola brand deadline looms, France and Peru sign IP action plan, and new Chile trademark guidelines: 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 UK’s IP minister seat being vacant once again, Pakistan’s IP officer pledging to promote an IP culture in the country, question marks over affiliate links on Instagram, puns being encouraged at the Philippines IPO, and much more. Coverage this time from Trevor Little (TL), Bridget Diakun (BD) and Tim Lince (TJL).

Legal radar:

Brand registration deadline in Angola looms – The deadline set by the Angolan Institute of Industrial Property (IAPI) for applicants to present documentation to update requests to register their brands from 5,001 to 20,757, is looming, with 26 December 2018 now just weeks away. A post from Inventa International notes that in December 2017 the IAPI published a notification requesting all applicants and/or attorneys of trademark applications numbered from 5,001 to 20,757 to present documentation to update the files respective to these marks. Failure to update the records will lead to the expiration/forfeiture of the mark, making the deadline one to note. (TL)

Time for an IP rethink? – An interesting piece at The Fashion Law takes a look at how brands are looking to capitalise on the millions of followers built up by celebrity fan and mainstream culture accounts on Instagram – whether through sponsored posts or affiliate links. Account owners are also seeking to monetise their accounts through merchandise. However, the article notes that such activity can land account owners in hot water as they leverage imagery that they seldom own rights to. It notes: “With this in mind, a strict reading of the Copyright Act puts all of the aforementioned Instagram account holders on the hook for infringement – and a lot of it – by virtue of the fact that the images they are using are not their own and are almost certainly being used in lieu of proper licensing practices”. While that is something that IP practitioners will be well aware of, the piece is worth reading because it then explores the role of intellectual property in the digital era and whether there is need for doctrinal reform. The piece quotes Harvard Law professor and Creative Commons founder Larry Lessig, who has stated: “At some point [a copyright protected] work should become free for culture to build on it.” The key question relates to the length of protection granted to works – something the piece argues is “very much up for debate”. (TL)

Market radar:

The UK IP minister seat is vacant (once again) – In January we reported on the appointment of Sam Gyimah as UK’s minister for intellectual property as part of his role as a joint Mminister for higher education at the UK’s Department for Business, Energy and Industrial Strategy and the Department for Education. He replaced Jo Johnson, who was unveiled as the eight person to hold the position in less than nine years in January 2017. Fast forward eleven months and the revolving door is back in motion, Gyimah resigning from the post in protest over the UK government’s current Brexit strategy. Once again, a new incumbent will be in place soon – but whether they last more than a year remains to be seen. It is safe to say that, when it comes to IP policy oversight in the UK, whoever takes on the role may not want to get too comfortable. It is rarely a long-term job. (TL)

Office radar:

Pakistan IPO seeks to promote an IP culture – The chairman of the Intellectual Office of Pakistan (IPO-Pakistan), Mujeeb Ahmed Khan, has spoken this week about promoting an IP culture in Pakistan. Speaking at a meeting with Brand Foundation, a non-profit created to raise awareness of brand issues in Pakistan, Ahmed Khan emphasised a need for “advocacy and a massive awareness campaign focusing on all stakeholders – especially academia, chambers and business community”. (TJL)

Peru and France IPOs sign joint action plan – The head of the IP Office of France (INPI), Pascal Faure, and the president of the board of directors of the Peruvian IP Office (Indecopi), Ivo Gagliuffi Piercechi, have signed an agreement on joint action in 2019. As part of the plan, both parties agree to exchange information, cooperate in activities, and conduct training in various areas. According to the press release announcing the move: “The work plan contemplates bilateral cooperation on issues of promotion and protection of the IP system in Peru and France. Parties also agreed to exchange information and develop joint activities related to the implementation of IP pre-diagnostic service, which allows – based on a first assessment – an assessment of the IP assets with which an entity has an account. of actions related to collective brands, innovation, intellectual property and appellations of origin.” On the face of it, such a move is a positive one for brand owners in both countries. (TJL)

Puns encouraged at Philippines IPO – The Intellectual Property Office of the Philippines (IPOPHL) has written a light-hearted post warning students about creating merchandise using university brand elements. According to the blog, popular university basketball tournaments are currently being played across the country, with fans eager to create merchandise to support their team. But the registry suggests being careful in this endeavour – or risk universities with registered trademarks to enforce their brand rights. “This is not to say the creative community eager to express their school pride are prohibited from using their school name or symbols – just be sure your design, logo, or slogan (your ‘mark’) is original and not confusingly similar to that owned by your school,” the blog states, adding: “In fact, visual designers who are confident of their witty and pun-laden slogan or logo to be a hit, should consider registering it as a trademark thereby protecting it from copycats.” It’s often said that puns are the lowest form of humour – so it’s nice to see IPOPHL giving them the credit they deserve. (TJL)

Chile IPO finalises updates trademark guidelines – The National Institute of Industrial Property of Chile (INAPI) has announced that it has made available its second trademark guidelines, replacing the original one from 2010. The move follows a process that begin in November 2017, when six chapters were made available, with further released in May 2018, and the final two chapters now released. The new trademark guidelines, according to the office, are “necessary to update the contents, in order to reflect the legislative and regulatory reforms and especially the practices of the office, as well as the jurisprudence of the courts”. One major upgrade from the original guidelines is that it is 100% electronic. Commenting on the release, INAPI’s national director Carolina Belmar said: “The culmination of this project meant a great challenge, having to adapt not only the legislation and internal practices, but also the jurisprudential trends that inform this matter. We are proud to offer this product to our users, in a modern and friendly format.” The new trademark guidelines can be viewed in full on the INAPI website. (TJL)

UKIPO shares trademark lesson from well-loved pie brand – In a meaty post on the website of the UK Intellectual Property Office (UKIPO), trademark examiner Dan Anthony waxes lyrical about one of the best-loved food brands in the UK. “The Fray Bentos pie, along with products like corned beef and tins of Scotch broth, are long standing members of British cuisine,” he writes. “When the Fray Bentos pie first appeared, tinned food was as futuristic as any microwavable jalfrezi, or quinoa and aquaculture-grown mange tout might seem today.” He explains that the Fray Bentos mark was first registered in 1881, although the actual tinned pie the brand is best known for wasn’t invented until 1961. Interestingly, before moving to Scotland, its original factory (with original company name LEMCO) was built in the 1800s in Uruguay – and the town which grew around the factory was given the name Fray Bentos (for unknown reasons). But the main trademark lesson, claims Anthony, is: “The Fray Bentos pie remains quintessentially British: both global and local. It proves that the secret ingredient for trademark immortality is not extract of meat, nor is it El Dorado - it is imagination.” (TJL)

Media watch:

Unilever to purchase Horlicks from GSK – Unilever is set to buy Horlicks, a nutrition brand, from GSK for $3.8 billion. This malted drink will help to expand Unilever’s reach in the fast-growing Asian markets. Other consumer goods conglomerates who fought for the brand were Nestle and Coca-Cola. The move will be a major boost for Unilever’s food and drinks division in India, as Horlicks is widely known as the health-drink which dominates the jurisdiction. (BD)

Brands navigate the art of marketing through smart speakers – Since the explosion of Google Home and Amazon Echo speakers, companies are looking to capitalise on these devices as a marketing opportunity, reports The New York Times. The catch? Neither Google Home or Amazon Echo run paid advertising. This leaves only two options for brands. The first is to figure out how search results are coded, and then find a way to have their products mentioned first when the smart speaker is asked to buy items. Alternatively, companies can create games or tools which can be accessed through the speaker as a means to build brand recognition. For example, Procter & Gamble has created ‘skills’ for its popular brands. Those with the Tide application will be able to ask Alexa questions about how to remove stains from clothing. This so-called “voice strategy marketing” may prove to be critical in the future. As it stands, more than 20 million homes in the US have a smart speaker, with this number projected to grow to cover 50% of all American homes by 2022. Furthermore, there is strong potential for cars and TVs to be equipped with this technology. Amazon and Google have both refused to comment on whether paid ads will be a possibility in the future, but they have supported and worked with ad agencies along with marketers to develop applications for their speakers. Such strategies have IP implications – for example, possible sound marks becoming more important through such audio devices, and whether the devices pronounce key brand names correctly. (BD)

On the move:

HGF calls out the Docter – HGF has expanded its Amsterdam-based team with the appointment of Willemijn Docter. A senior trademark attorney with more than 20 years of experience, she advises clients from a wide range of business sectors on the protection and management of their trademark and design portfolios. She also assists clients in opposition and cancellation proceedings before the Benelux and EU Offices for Intellectual Property. Prior to joining HGF she worked for almost 21 years for Novagraaf. (TL)

Glaser Weil appoints new chair to its IP department – According to a press release by Glaser Weil, Lawrence Hadley has joined the firm both as a partner and as the chair of the IP department. Hadley has over 25 years of experience, and his litigation practice focuses on patents, copyrights, trademarks and trade secrets. The chair of the firm’s litigation department, Patricia Glaser, comments: “His experience working on unique and broad intellectual property litigation in the technology and material science industries adds tremendous value and enables the firm to offer supplementary resources to better serve our clients.” (BD)

Rob Maier to take over Baker Bott’s IP group – Baker Botts has announced that Rob Maier will become the chair of the New York IP group as of the first of December. He is taking the reins from Rob Scheinfeld, who has led the practice for 15 years and will remain with the firm as the partner-in-charge of the New York office. Commenting on Maier’s apporint, Scheinfeld says “Rob Maier is an outstanding lawyer and will do a tremendous job in continuing to grow the practice in the years to come”. (BD)

And finally…

Nominate the world’s leading corporate trademark counsel WTR is now inviting nominations for the next editions of the WTR 300 and WTR Industry Awards, designed to identify the world’s leading corporate trademark counsel and teams. Nominate now to ensure that the important work undertaken by in-house professionals across the globe receives the recognition it deserves. The nominations window is open until 11 December 2018, during which time we are seeking details of the corporate counsel deemed to be the leading lights of the trademark industry, who are adding significant value to their organisations and are exemplifying the qualities that other counsel should aspire to. You can read more about the process on the nomination page. (TJL)

Adam Houldsworth

Reporter

ahouldsworth@GlobeBMG.com