2 Oct
2018

Philippines IP Office to begin mandatory mediation, Donuts adds rights protection feature, and KFC versus KKFC: 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 USPTO collaborating with Saudi IP authorities, a reported rise in fake Irish whiskey, the Kenyan government blaming border countries for its counterfeit problem, the Pakistan IPO moving one of its regional offices, a new report claiming that brands should ‘stand for something’, and much more. Coverage this time from Trevor Little (TL), Tim Lince (TJL) and Adam Houldsworth (AH).

Office radar:

IPOPHL to begin mandatory mediation – In a significant move, the Intellectual Property Office of the Philippines (IPOPHL) has announced that all intellectual property cases will be subject to mandatory mediation by disputing parties. The move has been launched “in a bid to achieve a quicker, more cost-effective, more amicable means of resolving IP disputes”, the office states. The mandatory mediation comes into force from October 5, and has been issued through Memorandum Circular No. 008 s. 2018 on the Revised Rules for Mediation. According to IPOPHL director general Josephine R. Santiago the procedure could transform the IP dispute environment in the Philippines. “Right now the yearly average of cases that accept mediation is 40 to 45% of IP disputes. If they don’t accept mediation, they return to litigation and that process is quite long not to mention expensive,” Santiago explained. “In mediation, the resolution is arrived at by the parties themselves, so benefits can be mutually received. In litigation, a judge or a hearing officer hears the evidence and makes a decision to favour one or another, and only awards the winner. In mediation, they can make a compromise agreement with mutually beneficial terms. That’s the value here.” For those practitioners considering an IP dispute in the Philippines, this is a development worth noting. (TJL)

USPTO to collaborate with Saudi IP authorities – The Saudi Authority for Intellectual Property and the USPTO have signed a memorandum of understanding (MoU) to cooperate in the field of intellectual property rights and to exchange experiences and visits by specialists, reports Arab News. The media outlet explains that the MoU aims to facilitate the processing, examination and registration of applications for patents, industrial designs and trademarks – and follows on from a similarly announced collaboration with the South Korean office. (TL)

Pakistan IPO regional office moves – In a brief announcement from the Intellectual Property Organisation of Pakistan, it has confirmed that its regional office in Lahore will be moving this week. The Lahore regional office conducts a number of trademark-related services, including the examination and issuance of trademark applications. The new address is at the Chamber of Commerce Building at 11-Shahrah-e-Aiwan-e-Sanat-o-Tijjarat in Lahore. (TJL)

EUIPO revised design guidelines enter into force – The EU Intellectual Property Office (EUIPO) has reminded users that its revised Guidelines for Examination of Registered Community Designs has entered into force. The revision focuses on a number of issues, including the role of product indications and functionality in designs. According to the EUIPO, the changes were “intended to update the office’s practice on designs in view of the previous changes for trademarks triggered by the Legislative Reform process, for instance, on priority assessment.” (TJL)

Market radar:

KFC v KKFC – Stories of knock-off brands have long been media mainstays and this week The Reporter’s Samuel Getachew chronicles the rising challenge facing food franchises in Ethiopia. The piece was sparked by the news that, just as Yum! Brands is to open its first Kentucky Fried Chicken (KFC) franchise in the Addis Ababa, it faces competition from “knock-off restaurants” set to open in the Bole area next month, including Kentaki Krunchy Fried Chekin (KKFC). Curiously, the owner of the latter claims to have a license to operate from Sheikh Hamid Al-Ahmar, the owner of KFC Yemen. Whatever the circumstances In this example, Getachew states that “this is not the first time such experiences have occurred in Ethiopia, tarnishing the country’s hard fought reputation as business friendly and one worthy of foreign investments”. As examples he points to copycats of such brands as In-N-Out, McDonald’s, Starbucks, Subway and Burger King – adding: “When The Reporter visited the so-called Subway last week, the restaurant was said to run out of sandwiches and instead offered local Ethiopian delicacies of stews.” For brands in the sector, Ethiopia is a market of opportunity – and one to police. (TL

Dangerous EU counterfeits seizures increase, as overall number of fake seizures falls – While the volume of counterfeit goods seized by EU customs officials has declined since 2016, the quantity of dangerous goods taken off the market has risen, it has been reported. Food, toys, electrical goods and medicines constituted 43% of the 31 million counterfeit items seized last year – compared to 26% and 34% in 2015 and 2016 respectively. The largest of these categories was food, which accounted for 24% of all confiscated goods. According to the EU Commission, China and Hong Kong were the two main sources of fake goods, originating 73% and 10% of seized counterfeits, while India was a significant source of dangerous medicines and Turkey has emerged as a hub of counterfeit clothing. In total, 65% of all confiscated items entered the EU in large maritime consignments. (AH)

Kenyan chamber of commerce blames border counties for counterfeit problems – Kiprono Kittony, chairman of the Kenya National Chamber of Commerce and Industry, has raised concerns about imported counterfeits, which he says are denying revenue to domestic traders. Speaking last Friday, he said that the country’s border counties had an important role to play in preventing fakes from entering Kenya. His comments were made against a background of concerns about fake goods being imported across the border with Uganda. However, it is not clear what powers border counties have to take more effective action against the inflow of counterfeits into the country. (AH)

Legal radar:

Not just Dunkin’ Donuts – Whenever a major company looks to rebrand, it will inevitably garner media attention and this week on Above the Law, Scheef & Stone’s Tom Kulik has considered the recent announcement by Dunkin’ Donuts that, in January, it will officially rebrand as Dunkin’ – warning that “the company risks leaving a hole in more than just its donuts, treating us some valuable lessons about trademarks in the process”. Kulik argues that the ‘donuts’ element of the name – with that spelling – has become so accepted that “the term itself is generic”, adding: “Although the company is ostensibly dropping the term so as to ‘modernize’ the brand, this decision also stands to strengthen the brand as a result.” However, rebrands can be tricky things, and Kulik warns that, when they go wrong, years of goodwill can be lost. Ultimately, he applauds the company’s efforts to modernize its brand but the move is not without risk. (TL)

Fake Irish whiskey on the rise – Suspected fake Irish whiskey products have been discovered in Russia, reports The Times, in a piece headlined “Russian producers ‘cashing in’ on Irish whiskey name”. The media outlet spoke to a representative of the Irish Whiskey Association, who noted that cases of suspected counterfeit whiskey have been rising as international sales grew – with counterfeit goods utilising deceptive labels (such as ‘Irish style’), using blends that include Irish whiskey and brandishing Celtic crosses, shamrocks or harps on the label. Positively, while trademark departments across the globe continue to experience budget cuts, the organisation has reportedly trebled its legal budget for next year to fight such cases. (TL)

Feyoncé not to be confused with Beyoncé, court rules – The world-famous musician Beyoncé has failed in her long-running trademark infringement suit against the purveyors of Feyoncé merchandise, including clothing and kitchenware. Despite the singer being “exceedingly famous”, a New York federal court yesterday turned down her request to ban the use of the word, ruling that consumers are unlikely to be misled into thinking that Beyoncé has endorsed, or has a connection with, the Feyoncé products marketed by Andre Maurice and Leana Lopez of Texas. In a 2016 complaint, she accused the defendants of willful infringement, unfair competition and trademark dilution, “causing immediate and irreparable harm”. In addition to a permanent injunction, Beyoncé sought exemplary damages, attorneys’ fees and costs. But Judge Alison Nathan decided that, while the two marks in question are similar, they were identifiably different to consumers because of their sharply contrasting connotations. Given that many of those purchasing the allegedly infringing products are engaged to be married, it seems that consumers understand that the branding is a play on words, she said.  (AH)

Media watch:

Brands should stand for something, new report claims – The marketing press today has reported on a new study from Edelman about the rise in so called “belief-driven” consumer purchases. The report, called “Beyond No Brand’s Land”, reveals that 65% of global consumers are making “belief-driven purchases”, a 50% year-on-year rise. According to AdWeek, this is a trend that is widespread: “In every market surveyed, there were more consumers taking a brand’s mission and activism into account when making decisions about what to buy. Even more striking is that consumers today see a brand’s values as being equally as important as a product’s features when contemplating a purchase.” While obvious high-risk examples were brought up in the study, including Nike’s recent ad campaign with NFL player Colin Kaepernick, Edelman says that such risky approaches aren’t necessary – and pointed to Dove’s “Real Beauty” campaign as a low-risk way for brands to take a stand. As we’ve written about before, brands taking political and social views has many trademark considerations that practitioners must be aware of. (TJL)

Domain radar:

Donuts adds DPML feature, increases price – Over on Domain Incite, Kevin Murphy reports that Donuts has added homograph attack protection to its Domain Protected Marks List (DPML) offering, meaning that rights owners can block variations of their brand that contain non-Latin characters across the company’s TLDs. We recently reported on the rising threat posed by homographs, particularly for brands in the financial services sector. A such, any move to enhance brand protection mechanisms in this regard will be welcomed. Less welcome will be the news that the cost of the DPML will rocket by more than a third from January 1. While Donuts does not disclose its wholesale pricing, Murphy reports that some registrars have quoted pricing of $6,000 to $6,600 for a five-year block – a contrast to the $2,500 to $3,000 range back in 2013. Murphy notes that Donuts has explained the price increase by pointing to the growth of its portfolio of gTLDs over the last few years (the company now boasting 25% more than at the last price increase). However, for trademark owners it adds pressure to budget planning. (TL)

On the move:

Dykema adds two in Minneapolis – Law firm Dykema has announced the addition of attorneys Robert C Freed and Conrad A Hansen to its Minneapolis office to bolster its IP practice. The move sees local firm Moore & Hansen, the first IP firm to open in Minnesota, effectively shut down after 130 years, according to the StarTribune. In a statement, Freed stated: “This is a natural next step for Moore & Hansen as our clients and their legal needs have continued to evolve along with those of the region's predominant industries and technologies. Dykema's national platform will allow us to expand our services to clients." Dykema's Minneapolis office opened five years ago, and the addition of Freed and Hansen sees the attorney account rise to 14. (TJL)

New IP firm opens in Portland – In a press release published yesterday, Shawn Kolitch and Thomas (TJ) Romano have announced the formation of a new intellectual property firm, Kolitch Romano LLP. Located in Portland, Oregon, the new firm will serve both a US and an international client base, according to the firm. It will specialise in strategic protection, monetization, and enforcement of patent, trademark, copyright, and trade secret rights. The big sell, according to comments in the press release, is that it will do “much more than just file patent and trademark applications”, with Kolitch expanding: “Using a rare combination of deep scientific knowledge and extensive federal court experience, Kolitch Romano LLP provides and executes IP strategy recommendations that add real value to a business by creating meaningful, enforceable barriers to competition. Our core values of extreme integrity and responsiveness allow us to maintain long-term relationships with our clients.” (TJL)

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