18 Sep
2018

Most relevant brands in China, OAPI hosts IP celebration, and Trademark Licensing Protection Act in the spotlight: 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 our latest edition, we look at a ranking of the most relevant brands in China, the IP office of Chile extending deadlines for Japanese trademark applicants, the WHOIS reform group at loggerheads, Indonesia stepping up anti-piracy efforts, and much more. Coverage this time from Trevor Little (TL) and Tim Lince (TJL).

Legal radar:

Act bids to reduce franchisor liability – Over on The Hill, the International Franchise Association's Robert Cresanti has penned an op-ed titled 'Support the Trademark Licensing Protection Act'. Cesanto writes that "by establishing control mechanisms to protect their brand – which franchisors are required by law to do – franchisors are penalized by employment law that increasingly considers them a 'joint employer' over its franchisees, ultimately opening up franchisors to inappropriate additional liability and threatening the independence of franchisees". The new act, introduced on 31 August, therefore seeks to ensure that the brand controls required under the Lanham Act cannot be used against franchises to establish 'joint employer' status. Reflecting on the proposed legislation, Andrew Price, partner at Venable, tells WTR: "The Act appears to be a pro-business move to ensure franchisors and other licensors are not on the hook for liability of franchisees and other licensees. If franchising and licensing became more risky due to such liability, it could stymie business growth. There could be reduction in the number of franchisees and licensees and an increase in the cost to franchisees and licensees, in the form of higher franchise fees and royalties that licensors would need to counterbalance the liability – and this would surely get passed on to consumers. It does not appear the Act will have a huge impact in view of the current regulatory environment, as I generally understand it, though it may be an attempt to ensure the status quo: that while licensors have a quality control requirement under the Lanham Act, this should not mean they are running licensees’ businesses and should bear more liability. In sum, the Act’s title (Trademark Licensing Protection Act) appears to reflect that the sponsors are trying to protect the act of trademark licensing and ensure it remains a viable business tool." (TL)

New Saudi agency discusses IP – The Saudi Authority for Intellectual Property, which was established in March this year to improve Saudi Arabia’s approach to IP law, has held a meeting with lawyers to discuss the future of IP law in the country. According to Arab News, the meeting included a historical background of intellectual property in Saudi Arabia, and the direction of the IP system in the Kingdom. It is hoped, states the article, that the meeting “will raise awareness of intellectual property law in the Kingdom and the activities of the authority”. (TJL)

Market radar:

Most relevant brands in China revealed – The 2018 China Brand Relevance Index has been published, with Alipay crowned as China’s most relevant brand. The research is conducted every year by marketing consultancy firm Prophet, and aims to find the brands that consumers in China rate as most relevant. While Alibaba’s financial brand Alipay topped the list, it was followed by other digital and technology brands including Android, WeChat, Huawei, Microsoft, Taobao, Intel, Meituan, QQ and Tmall. As noted by The Drum, the list is particularly interesting due to the prevalence of Chinese brands, with only 10 of the top 25 brands featured being Western brands (with Apple, Adidas, W Hotels, Airbnb, Estee Lauder, Philips and Dell all outside the top 10). Commenting on the research, Leon Zhang from Prophet (and a co-author of the report), said: “Undoubtedly, relevance with consumers is fundamental in building a strong brand. This year, we are glad to see more home-grown brands making striking progress in being pervasively innovative while remaining ruthlessly pragmatic.” For these Chinese brands, the next frontier is becoming truly international brands. (TJL)

Favourite brands of Gen Z consumers revealed – The brands favoured by people born after 1997, or ‘Generation Z’, have been revealed in a survey from Ybrands. The survey interviewed nearly 9,000 consumers within that age group, and asked them about their awareness, past purchase history and loyalty to a list of 332 brands. The most popular brand for young people is Google-owned video platform YouTube, followed by Doritos, Oreo, Netflix, Hershey’s, M&M’s, and Cheetos (with snack food being heavily represented at the top-end of the list). Bobby Calise, vice president of Ybrands, told Business Insider that there’s another key trend of brands that are popular with Gen Z: “In the past, brands might have considered playing it safe for fear of alienating some of its customer base. But in today's social and political climate, it's arguably riskier not to take a risk – even if it's a calculated one – when it comes to brands taking stands." (TJL)

Kaepernick ad polarises, but crucially speaks to Nike’s core audience – Last month we reported on the media buzz surrounding former NFL player Colin Kaepernick’s trademark application for I'M WITH KAP. In the time since, Kaepernick has featured in an advertising campaign by Nike, launched to mark the 30th anniversary of the sportswear giant’s ‘Just do it’ campaign. The campaign has been a polarizing one – for instance, this week Associated Press reported that Mississippi’s public safety commissioner declared that state police will no longer buy Nike products, saying the athletic apparel maker is unpatriotic and fails to support those in uniform. However, overall the campaign has been a successful one for Nike, with reports that sales are up following the debut of the campaign (with sports retail analyst Matt Powell telling CNN that the campaign has played well with Nike's core customers of Millennials and younger men in cities, the company communicating to them in a way that is “authentic, culturally relevant, experiential and emotionally engaging”). Over on CNBC, analyst Erinn Murphy concurs, stating that “history has proven it is much more valuable [for brands] to 'be there/visible' for major sports and social moments than to offer up a neutral position or no stance”. (TL)

Indonesia to step up anti-piracy efforts – The Jakarta Post reports that the Indonesian Creative Economy Agency (Bekraf) is to form an anti-piracy task force in collaboration with a number of other agencies. The outlet notes that the task force will consist of Bekraf, the Communications and Information Ministry, the Intellectual Property Directorate General, the Prosecutor’s Office and the police. Operations are set to begin later this year, with Ari Juliano Gema, Bekraf’s deputy head for intellectual property rights facilitation and regulation, explaining: “The task force will provide a channel for the public to submit their report. Our job is to divide the task. If there's a report of a website with illegal content, the person with said information will be directed to the ministry. Meanwhile, if it’s about a certain person, then it’ll be directed to the police.” (TL)

Domain name radar:

WHOIS reform group at loggerheads – We have previously reported on the expedited policy development process (EPDP) for the temporary specification for gTLD registration data, which was designed to ensure that WHOIS data access complies with the EU General Data Protection Regulation (GDPR). In unsurprising news, these efforts have proven combative and Domain Incite reports that ICANN has hired professional mediators to help resolve “strong disagreements” in the group. As Kevin Murphy notes, the group had been tasked with delivering its consensus-based Initial Report at the upcoming ICANN meeting in Barcelona, which takes place next month – a task that Murphy notes is going to be tough given that the working group has “been beset by its fair share of distractions, petty squabbles and internal power struggles”. (TL)

Office radar:

CIPO to modernise practice manuals – The Canadian Intellectual Property Office (CIPO) is planning to modernise its Trademarks Examination Manual (TEM) and Industrial Design Office Practice Manual using the Qweri publishing platform. According to a blog post from Oyen Wiggs, the new format will “ensure that CIPO can update these manuals in a timely manner, and also provides new functionality such as links to websites containing relevant information or services”. Beta versions of the manual are currently available online, and CIPO is seeking feedback on them before launch. (TJL)

OAPI hosts IP celebration as Bangui revision looms OAPI hosted the 19th African Day of Technology and Intellectual Property last week with a theme of “invention: engine of industrial development”. The event was attended by members of OAPI staff, IP councils, authorised representatives, and residents of Cameroon; one notable attendee was Mohamed Tahiri, a patent examiner at the Moroccan IP office, who shared “the Moroccan experience in the examination of the substance of inventions”. The event, according to the press release, was particularly timely as OAPI is preparing for the forthcoming entry into force of the revised Bangui Agreement, which could see significant changes to IP proceedings in the country. (TJL)

INAPI offers extension of deadlines for Japanese rights holders – The IP Office of Chile (INAPI) has announced that, due to a recent strong earthquake that affected Japan, it has suspended the notification of resolutions to applications whose applicant or representatives reside in the country. In an announcement from the office, it was confirmed: “In order to facilitate compliance with the stipulated deadlines for all holders of applications whose reported residence corresponds to this country, INAPI has determined the following measures: the suspension of the notification until October 8 of new resolutions in files whose holders are Japanese; and extensions of deadlines in progress will be notified in the administrative files by September 7.” Furthermore, INAPI added that it was not ruling out other measures to help those affected by the earthquake. (TJL)

Media watch:

IP rock stars cap hat trick of titles – Noise in the Basement, an alt-rock band featuring Venable attorneys Andrew Price, Damon Wright, Bri Rizzo, and Steve Freeland, has won the annual Law Rocks DC battle of the bands fundraiser for a third year in a row. The group raised over $20,000 in donations, ticket sales, and sponsorships, of which over $8,000 will be donated to Venable's pro bono client, Together We Bake. Founded in 2012, Together We Bake empowers women who have experienced incarceration, homelessness, and long-term unemployment with the knowledge, job training, and life skills to improve their lives. The band will presumably now be eying a fourth title but in the meantime the WTR team salutes your achievements. (TL)

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)

Adam Houldsworth

Author | Reporter

ahouldsworth@GlobeBMG.com

Adam Houldsworth