25 Jan
2019

JPO apologises for data leak, Brunei joins TMview, and Absolut accused of trademark bullying: news digest

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 Japan Patent Office apologising following an accidental leak of applicant data, a sauce company suing fast food giant Wendy’s, the evolution of WeWork’s trademark portfolio, counterfeit buyers react to Alibaba’s latest Taobao claims, and much more. Coverage this time from Trevor Little (TL), Adam Houldsworth (AH), Bridget Diakun (BD) and Tim Lince (TJL).

Market radar:

Canada releases 2018 IP report – The Government of Canada has released its 2018 IP report, in which it analyses data from the Canadian Intellectual Property Office and WIPO. Trademark filings showed the strongest growth out of all IP activity, increasing by 8% in 2017. The increase in application volume was seen in both domestic and international filings. A comparison of 2008 and 2017 numbers sees residential applications up by 29%. Foreign applications grew by 38% between 2007 and 2016 (according to the latest available data). The report predicts that trademark filing activity will be facilitated by the implementation of the Madrid Protocol. The introduction of the Madrid system better aligns Canada to the rest of the world, but it will take time to see whether or not this increases foreign filing levels. (BD)

Replica forum reacts to Alibaba’s Taobao claims – In the past week, Alibaba Group has been promoting its latest annual intellectual property (IP) protection report, which recorded a number of positive gains in the company’s fight to stop fakes on its platforms. For example, notes The Straits Times, only “one in every 10,000 orders” on Alibaba’s Taobao marketplace last year involved counterfeit goods, with IP rights complaints from brand owners falling by 32% in 2018. This led Alibaba’s chief of platform governance, Zheng Junfang to claim: "Sources of counterfeit goods were put under unprecedented pressure, and the space for counterfeiters was squeezed to a high degree last year.” But such claims were ridiculed by most users of Reddit’s ‘Fashion Reps’ forum, which claims to be the world’s largest replica discussion board and openly promotes Taobao as the most effective marketplace to buy fake goods. For example, one user claims Alibaba is just “putting on a show” with the data, while others claim the figures are “fake”. One user, though, did admit that the ability to buy fakes on Taobao is more difficult today than in the past: “We can all laugh and still know there are [replicas] out there, but from someone who's been purchasing from [Taobao] since late 2016, they've definitely been squeezed by the US Trade Representative (USTR) and other IP legal organisations,” the user wrote. “It’s become way harder to access [fakes]. I can remember merely typing 'Ultraboost' or 'Adidas' or something similar and getting hold of decent reps quickly. It takes much longer to find the same quality [replicas], and hidden gems are now almost impossible to find with reverse image search and are now blurred/cropped to such an extent that you need to have a PhD in footwear to make out what they are.” The figures from Alibaba Group, and the experience of quite a few brand owners that WTR has talked to, suggest that positives steps are being taken to quell the trade of fakes on Taobao. However, it remains a leading destination to buy counterfeit goods – so it is clear that more works needs to be done. (TJL)

Complaints following claims of Amazon removing listing using ‘3M’ – On Tamebay, there have been reports this week that Amazon has begun removing product listings featuring the term ‘3M’ in a product description. The 3M Company is, of course, a US multinational conglomerate corporation which sells various health and consumer goods. But claims that a “3m cable” listing (the ‘m’ pointing to the metre length of the cable) on Amazon has been removed “on the grounds that 3m is a brand name” is sure to cause ire. “While, keywords such an Apple, Chapstick and Band-Aid must be avoided for use in product titles, due to the trademark infringement reasons, it appears that generic terms like ‘3m’ are best to shy away from too,” claims the article, with the reports currently originating from Amazon’s Spanish marketplace. Unsurprisingly, comments on the article are negative, claiming it's yet more evidence of trademark enforcement overreach (although one user, who described the story as “a ridiculous situation”, noted that “the simple solution would be to write the word ‘metres’ instead of just using an ‘m’”). (TJL)

Macedonian businesses told to register trademarks in anticipation of Prespa Agreement – A historic deal which would end a 30-year dispute between Greece and Macedonia is awaiting ratification, and companies have been encouraged to register trademarks prior to this. Since Macedonia proclaimed independence in 1991, Greece has thought its name and symbols to be a territorial claim against its own province of Macedonia. If the agreement is accepted then Macedonia will change its name to the Republic of North Macedonia. The warning particularly applies to agri-food businesses, where there are an estimated 39 entities using the terms “Macedonia” or “Macedonian” in their names. Across all sectors the number rises to 182. The trademark for “Macedonia” and “Macedonian” has yet to be specified in the agreement, and will only be decided after ratification. Athanasios Saropoulos, the president of the Central Macedonian branch of the Geotechnical Chamber Greece said that those who fail to immediately register their marks would struggle to win trademark disputes in the future. (BD)

Legal radar:

Sauce company sues Wendy’s – A small US sauce company, Jaymo’s Sauces LLC, has accused burger giant Wendy’s of trademark infringement through the use of a ‘S’awesome sauce’. According to local media, the company claims it has a registered trademark for the term S’AWESOME and sells a sauce product with that name. In a lawsuit filed earlier this week, Jaymo’s claims Wendy’s began advertising and selling a chicken product with S’Awesome sauce in 2017, stating: “Within days of the airing of that commercial Jaymo’s received multiple telephone calls and personal inquiries from friends and customers expressing confusion and asking if Jaymo’s was somehow affiliated with Wendy’s.” A lawsuit wasn’t the first port-of-call for Jaymo’s, however, as it claims to have sent Wendy’s a cease-and-desist letter first – which was allegedly ignored. Jaymo’s seeks to stop the use of S’Awesome by Wendy’s and is also requesting monetary damages. (TJL)

Hawaiian coffee brand accuses The Absolut Co of trademark bullying - A small Hawaiian business is having a trademark application challenged at the USPTO by well-known Swedish beverage brand The Absolut Co, according to local media. Hawaiian Happy Cakes, based in Honolulu, applied for the rights to Kaholo Coffee in March 2018. But its application is being opposed by the Swedish company, famous for its vodka, which claims the mark is confusingly similar to its own Kahlua Coffee Liqueur brand. The proposed trademark is “extremely similar to KAHLUA insofar as both marks begin with ‘KAH’, contain an ‘L’, end with a vowel, contain three syllable, and otherwise have very similar overall impressions,” the notice of opposition states. Owen O’Callaghan, owner of the Honolulu company, said that Hawaiians would laugh at claims that the two names sound identical, adding: “What this is, is a small Hawaii company being bullied by one of the largest liquor companies in the world.” The Absolut Co is demanding the company ceases to use the name, abandons its application, acknowledges the Swedish company’s trademark rights and promises not to file further trademarks for the word. O’Callaghan has stated his intention to fight on. (AH)

Office radar:

JPO apologises for data leak – The Japanese Patent Office (JPO) has apologised to users this week after one of its contracting companies, O&M Co, accidentally revealed personal information of over 800 IP applicants. According to the JPO, O&M have been contracted to conduct work related to a briefing session in Tokyo related to designs. Last Friday, 18 January, O&M sent an email to 849 applicants about the session, and it appears all of the applicant’s email addresses were contained in the ‘CC’ box of the email rather than the ‘BCC’ box – meaning they were visible to all receivers of the email. The JPO was informed about this from one of the respondents on Monday, and on Wednesday issued an apology. “Such a situation is extremely regrettable and I sincerely apologise to the people concerned,” the office wrote. “In addition, as a patent office, we will try to thoroughly inform about information management so that the same situation does not occur.” On top of that, O&M Co were asked to apologise to each of the applicants, and the JPO has launched an investigation and sent a reminder to other contracted companies to ensure the same situation is not repeated. Any data leak is a nightmare, especially for IP offices which are often tasked with protecting a significant amount of personal information. It appears in this instance that the JPO has responded swiftly, and its transparency in this effort will no doubt be appreciated by users. (TJL)

Brunei added to TMview and DesignView roster – As of Wednesday (January 23), trademark and designs data from the Brunei Intellectual Property Office (BruIPO) has been added to the EUIPO’s TMview and DesignView search tools. In all, BruIPO adds 46,000 trademarks to the TMview platform, meaning the total is now 52.5 million. In terms of designs, BruIPO’s 190 designs sees the DesignView total grow (slightly) to 14.4 million. (TJL)

Vietnam IPO reports increase in applications – According to a local media report, the National Office of Intellectual Property of Vietnam (NOIP) has announced that it saw a 5.9% increase in IP applications last year. The most significant details released by the registry were on GIs. Specifically, up until December 31 2018, Vietnam has certified 69 national GIs and 6 international GIs. Of those, 47% are for fruits, 23% are plant/forestry products, 12% are aquaculture, and 8% are rice. On top of that, eight are non-food products, including the Hue palm-leaf conical hat, Vinh Bao pipe tobacco, Nga Son sedge mat, and the Yen Tu yellow apricot blossom. Registry director Dinh Huu Phi said that GIs have been a huge success in Vietnam, claiming that – for example – Cao Phong oranges has seen a two-fold price rise, while Meo Vac honey has increased by up to 80%. Looking ahead, the office expects to certify another 10 GIs in the coming year, while 39 currently-registered Vietnemese GIs will be protected in the European Union (EU) when the  EU-Vietnamese Free Trade Agreement comes into effect. (TJL)

Godfather talks with Philippines registry – The Intellectual Property Office of the Philippines (IPOPHL) has posted an interview this week with the owner of a local shoe brand, Godfather Shoes, exploring how a registered trademark is helping business growth. “When I started on this journey,  I took it as my mission to not just build a brand that Filipinos can be proud of, but a brand that would last in the market,” said Aaron Angeles, the owner of Godfather Shoes. “When people think of 'fast food in the Philippines' they think of Jollibee; I want Godfather Shoes to be top of mind when it comes to locally-made men's footwear in the Philippines. That's my vision and that's why I have to protect it.” Indeed, the blog mentions that the shoemaker recently attained registered trademark protection in the country for the company’s logo. The interview serves as an example of how the IPOPHL uses new marks to educate the public about both the advantages of IP protection and of interesting domestic businesses. (TJL)

Media watch:

The evolution of WeWork’s trademark portfolio - A recent article in the The Real Deal analyses the development of WeWork’s marketing strategy by tracing the development of its US trademark portfolio. This includes at least 94 trademarks registered since 2011, it notes, spanning an ever-increasing number of industry sectors, including household linens, educational services, apartment rentals, restaurant services and pet day care, as well as its core co-working offering. This expansion culminated two weeks ago in the company changing its name from WeWork to We Company. In the beginning, WeWork’s applications were limited to marks closely relating to its core office-sharing functions, with a few tangential brands, such as WeSleep. Its efforts to diversify the brand began in 2014-2015, when it registered marks such as WeMove (a health and fitness brand), We Bike (a bike valet service brand), WeEat (the name of a meal delivery software), WeLive (a residential brand), WeWork Labs (a start-up accelerator service mark), and WeLearn (an educational services brand). At around the same time, the company registered a plethora of related catchphrases, the article notes. These includes “We Generation”, “Create Your Life’s Work” and “Thank God It’s Monday”. Under its new name, the company has now arranged into three sections dealing with its office business, its residential company and its educational services. With investor confidence in the company said to be shaky, it remains to be seen whether its multi-sector approach will bear fruit in the long run. (AH)

On the move:

Tilleke promotes new IP partners in Thailand and Vietnam – Southeast Asian law firm Tilleke & Gibbins has announced the promotion of two intellectual property attorneys to the firm’s partnership. Linh Thi Mai Nguyen, based in the firm’s Hanoi office, heads the trademark team in Vietnam and draws on more than a decade of experience as IP counsel to owners of world-famous brands, and five years as a legal program officer with the USAID-funded STAR project, where she coordinated with government agencies to ensure that Vietnam’s legal regime complied with international commitments. Wiramrudee (Pink) Mokkhavesa is an attorney in the firm’s regional intellectual property practice, based in Bangkok. Her practice focuses is focused on IP portfolio strategy and the management and protection of trademark, copyright, patent, and other intellectual assets. (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:

  • Reported that the USPTO, which to date has weathered the storm of the ongoing US government shutdown, has enough funds in reserve to maintain trademark operations until mid-April. The news for the patent community, however, was not as positive;
  • Sat down with Vincent Stauffer, trademark counsel at the Federation of the Swiss Watch Industry, for an exclusive interview - in which he spoke about his industry's fight against fakes and the struggle to protect Swissness rights worldwide;
  • Presented a guest post in which legal experts considered the immediate consequences that will result from the Supreme Court’s review of Iancu v Brunetti;
  • Assessed benchmarking data which revealed the variance in the hourly rates charged by law firm practitioners for trademark-related work in key jurisdictions, with the hourly rate for a partner ranging from $30 to $880;
  • Argued that no role in the IP world is likely to change as much in the next decade as that of the in-house trademark counsel – and that law firm and non-legal service provider offerings will need to adapt or face losing ground to competitors;
  • Reflected on the latest Brand Finance Global 500 report, which named Amazon as the world’s most valuable brand, with Microsoft and Huawei also experiencing significant year-on-year growth;
  • Interviewed the video creator behind the YouTube channel ‘C3 TheCollywoodLife’, who explained why he started filming counterfeit goods in Chinese shopping centres and what brands should know about the culture of fakes in China;
  • Published the latest edition of Designs: A Global Guide 2019, which provides trademark professionals with comprehensive guidance on the key issues involved in the protection and enforcement of design rights.

And finally…

Obtain high-level trademark management and brand protection insights – WTR is hosting two events, on consecutive days, in Chicago in March. The Brand Protection Online: Strategies for Ethical Enforcement and Managing Trademark Assets USA events will deliver high-level insight and practical takeaways for those tasked with managing, protecting and monetising brands. On 5 March 2019, Brand Protection Online event will take a deep dive into practical strategies for fighting infringement on ecommerce sites, navigating the changing domain landscape and managing reputation online. Taking place at the same venue the next day, the fourth annual Managing Trademark Assets USA will again focus on the cost-effective management of international portfolios, and comes at a time when it is more important than ever for brand owners to ensure they are integrating innovative and disruptive strategies into their trademark operations. To register for Brand Protection Online (or both events) click here. To register for Managing Trademark Assets USA (or both events) click here. (TL)

Adam Houldsworth

Life sciences reporter

ahouldsworth@GlobeBMG.com