1 May
2018

Plain packaging in South Africa, Alibaba cryptocurrency blow and a trademark tour of Seattle: 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 research finding that many beverage brands are idle on Twitter, Pfizer’s counterfeit enforcement stats, Apple’s purchase of a non-registered Chinese mark and the South African government’s comment period on plain packaging. Coverage this time from Trevor Little (TL), Tim Lince (TJL), Adam Houldsworth (AH) and Timothy Au (TA).

Legal Radar:

South African government seeks comment on plain packaging – The South African government has introduced a new bill that will potentially introduce stricter tobacco restrictions in the country, including the implementation of plain packaging. The ‘Control of Tobacco Products and Electronic Delivery Systems Bill’ would replace the previous tobacco act of 1993, and the draft of the new bill has been published in the government gazette for public comment. As well as introducing plain packaging on tobacco products, it also includes restrictions on smoking indoors, the display of tobacco products at the point of sale, and the use of electronic devices. Communications minister Nomvula Mokonyane commented: “It is not yet a decision – it would go out for public comment and will then come back for Cabinet consideration – and all those issues, from environmental groups, commercial people, and every other interested party – we’d appreciate feedback in this regard.” (TJL)

Nigeria releases latest trademarks journals – Nigerian Law Intellectual Property Watch reports that the trademarks, patents and designs registry in Nigeria has published four new volumes of the trademarks journal. In January, the registry published six journals, and on April 24 it released four new editions – including three online. Positively, the site notes, the journals include applications from 2017, suggesting that the office is making inroads on the backlog it has been battling. (TL)

Alibaba’s attempt to block cryptocurrency firm’s name failsLast month, Alibaba launched a trademark suit in the Southern District of New York against Alibabacoin Foundation, a Dubai-based cryptocurrency company, claiming that it was “[misappropriating Alibaba’s] renowned brand name in order to deceive investors in the US and around the world”. Alibabacoin subsequently denied these allegations, claiming that the suit was “neither a reasonable nor proportionate response”. This week, a US judge sided with with the cryptocurrency firm, rejecting Alibaba’s request for a preliminary injunction. Judge Paul Oetken in Manhattan stated that the Chinese retail giant had not demonstrated a “reasonable probability” that Alibabacoin’s websites were used for business transactions with customers in New York and that any injury Alibaba did suffer would likely to have occurred in China. (TA)

China’s Supreme Court rules in favour of Dior for perfume trademark – Last week, China’s Supreme People’s Court (SPC) ruled in favour of French fashion brand Christian Dior, overturning two rulings by lower courts. Dior had filed suit against China’s Trademark Review and Adjudication Board (TRAB), after the trademark office rejected its application for a mark for a perfume bottle in 2015. The French company subsequently appealed its case to the TRAB but this was also rejected. The SPC has now overturned these prior decisions, noting that the trademark office had procedural flaws when processing the application, and requesting that the TRAB review the application once more. (TA)

Market Radar:

Beverage brands idle on Twitter – Two weeks ago, we wrote about popular UK pub brand JD Wetherspoon leaving Twitter and Facebook. In announcing the decision, the company’s chairman Tim Martin explained that the company was “going against conventional wisdom that these platforms are a vital component of a successful business”. However, new research more brands are not engaging users on the Twitter platform – at least in the beverage industry. The study, carried out by YesMore and first reported by DrinkBusiness, has found that 40% of more than 100 spirits and liqueur company Twitter accounts have not posted any content in at least a month. Beyond that, over 32% have not posted in the past three months, and 20% have not posted in over a year. Some of the brands that have not posted for months include Bacardi (with over 100,000 followers) and Beefeater (with over 3,000 followers). The report suggests, then, that companies with many sub-brands are struggling to keep up with the sheer amount of social media platforms they are expected to maintain. “It’s clear that brands are suffering with too many channels and profiles across multiple territories – they are simply getting overwhelmed with places which they are supposed to post content – and the days of ‘getting the intern to do it’ are long gone,” said a YesMore representative. “It seems that some brands need to reinvent how they use social media to come up with a strategy that works across all platforms with whatever level of resource and investment the brand has.” While this research only covers beverage brands, it’s not a great leap to consider that other sectors are facing similar social media challenges. (TJL)

Survey finds one third of Indian online shoppers have received fake goods – A report on e-commerce experiences among Indian consumers by Velocity MR, a Mumbai-based market research company, has highlighted that up to one third of the country’s online shoppers have unwittingly purchased counterfeit products on the internet in the past six months. The research was undertaken against the background of the meteoric rise of online shopping in the country, whose e-commerce market is expected to reach $100 billion by 2020 and $200 billion by 2026. Jasal Shah, Velocity MR’s CEO, noted that this rise was not without its pitfalls, and his organisation had undertaken the study to gauge consumers’ responses to challenges, such as counterfeiting. Of 3,000 participants from Mumbai, Hyderabad, Delhi, Chennai, Kolkata, Bengaluru, Ahmedabad and Pune, only 29% said their negative experience had stopped them from using online shopping portals, while 53% said such incidents had made them more alert to the threat. (AH)

Pfizer reveals enforcement stats – In a Jakarta Post article, Pfizer’s Asia-Pacific global security director Tetsuya Ikeda reveals figures related to the company’s battle against counterfeit goods. He said that 154 websites that sold fake products were taken down from 2016 to 2017, as well as 14 shops being raided following requests by the company. He revealed that the most commonly counterfeited Pfizer products include erectile dysfunction pill Viagra, cholesterol treatment drug Lipitor and painkiller Ponstan. Most seized items were from China, followed by Pakistan and South Korea, Ikeda added. The interview highlights the scale of the problem that Pfizer faces in the ongoing war against fakes, and how evidence suggests it continues to get worse. (TJL)

Apple targets $8 million Chinese trademark – Apple has agreed to purchase a non-registered trademark from Hanwang Technology for $8 million, spread out over six payment instalments, reports Patently Apple. The trademark in question, however, has not been revealed. Hanwang Technology is a China-based manufacturer focused on developing products related to intelligent interaction, including smartpens and tablets. According to a statement from the Chinese company notes that there are a number of performance obligations on the transfer of rights and interests that must be fulfilled before the transaction is completed. (TA)

Malaysia Airlines sends warning to infringers – This week Malaysia Airlines Berhad (MAB) released a statement announcing noting that its logo and name is a registered trademark belonging to the Malaysia Aviation Group – and warning that “any unauthorised trademark infringement on the registered logo and name, will not be tolerated and civil action will be instituted against those who unlawfully use the Malaysia Airlines logo and name for their own personal benefit”. It is unclear whether the statement was in response to a particular threat or merely a signal to the market that it takes infringement seriously. If the latter, the message has got out – a number of media outlets were quick to report on the statement, albeit with little additional detail. A reminder, then, that sometimes you don’t need to be embroiled in a dispute in order to get word out that you take trademark infringement seriously. (TL)

On the move:

AIPEX makes appointment to drive business growth – IP provider AIPEX has appointed Rachel Townley as IP portfolio paralegal. Townley boasts more than twenty years’ experience in the legal IP sector, with more than ten years focusing on formalities and renewals. (TL)

Media Watch:

Call to save global brands from local pirates – In an op-ed piece in Business Daily Africa, William Maema has called for the Kenyan government to enact legislation to protect well-known marks in the country. He notes that, while well-known status is obtainable in the country, “the Achilles heel for owners of well-known brands is that the alleged notoriety of the mark must be within Kenya. The reputation of the brand outside Kenya is irrelevant. Therefore, a brand that has never been used in Kenya will not enjoy this privilege”. Given that, in the internet age, Kenyans encounter global brands online on a regular basis, he urges that “Kenyan trademarks law should be amended by removing the local notoriety requirement. This will adjust the law to the current business realities presented by technological advancement”. Turning his attention to the higher degree of threshold that could also be afforded to ‘famous’ marks, he concludes: “The enactment of a law that provides for the protection of famous marks would save Kenya from fast becoming a pirates’ den for global brands.” (TL)

Taking a trademark tour of Seattle – On Foley Hoag’s Trademark & Copyright Blog, partner David Kluft has published the first part of the “Seattle trademark history tour” in preparation for the International Trademark Association (INTA) Annual Meeting later this month. In it, Kluft suggests eager lawyers can visit locations related to some of the first trademark disputes involving the city of Seattle (which date from the early 20th century). As well as write-ups about Seattle’s trademark history, the post includes a handy map for those that may want to go on a self-guided walking tour. There’s no doubt plenty to do in Seattle during the days of the INTA Annual Meeting – including hundreds of sessions, receptions, networking events and meetings – but for those that find they’ve got some hours free, perhaps a trademark history tour of Seattle is just the ticket to pass the time. (TJL)

And finally…

Issue 73 of WTR now live – The latest edition of World Trademark Review magazine is now available online. The cover story – which subscribers had early access as part of our commitment to the digital-first delivery of content – presents in-depth analysis of this year’s Global Trademark Benchmarking Survey. Additionally, the issue contains coverage recent and developing trends in false advertising law, analysis of recent UDRP decisions, an exploration of the future of 3D trademarks and a reassessment of the enforcement toolbox in China – and much more. To browse all the newly available content, click here. (TL)

Adam Houldsworth

Author | Reporter

ahouldsworth@GlobeBMG.com

Adam Houldsworth