14 Sep
2018

Saudi Arabia to adopt plain packaging, T-ara resolve trademark dispute, and ICANN needs your feedback on RPMs: 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 7-Eleven taking a menswear brand to court for alleged trademark infringement, IP experts boosting universities in Pakistan, the US brands with the most loyal customers, a restraining order being slapped on e-cigarette counterfeiters, and a long-running dispute between K-pop superstars T-ara and a former agency being resolved. Coverage this time from Trevor Little (TL), Tim Lince (TJL) and Adam Houldsworth (AH).

Market radar:

Saudi Arabia looks to adopt tobacco plain packaging – Saudi Arabia could be the next plain packaging domino to fall after the Gulf nation confirmed to the World Trade Organisation (WTO) that it was planning to adopt the measure on tobacco products. As reported by Euronews, the move follows a WTO ruling earlier this year in favour of Australia’s plain packaging regime (which is being appealed). Other countries that have implemented plain packaging measures on tobacco products include the UK, Ireland, France, New Zealand and Norway, while Canada, Romania, Thailand and Uruguay have passed laws that have not yet been implemented. A World Health Organisation spokesperson commented: “There's no other Gulf country that has implemented plain packaging, and we're not aware of any other Gulf country looking to implement at the moment.” With tobacco plain packaging rolling out at an increasing speed around the world, the next battlefield could be in other product sectors. (TJL)

US companies fear impact of China tariffs – Earlier this week, WTR reported on a recent trip to China, where we noted that, amongst international brands manufacturing and selling in the country, there was palpable concern over the negative impact of a trade war with the US. Yesterday AmCham China and AmCham Shanghai published research that backs up this observation. Close to two-thirds of the 430 respondents claim that the tariffs are having a negative impact, with 63.6% reporting that the initial $50 billion of tariffs from the US are affecting their business operations, while a similar number (62.5%) said the same about China’s $50 billion worth of tariffs. Eric Zheng, chairman of AmCham Shanghai, commented: “This survey affirms our concerns: tariffs are already negatively impacting US companies and the imposition of a proposed $200 billion tranche will bring a lot more pain. If almost a half of American companies anticipate a strong negative impact from the next round of US tariffs, then the US administration will be hurting the companies it should be helping. We support President Trump’s efforts to reset US-China trade relations, address long-standing inequities and level the playing field. But we can do so through means other than blanket tariffs.” If businesses feel the squeeze, inevitably those professionals tasked with brand protection in the Chinese market will also come under budgetary pressure. Indeed, a letter from various trade associations was sent to US government representatives earlier this year about how the tariffs could harm the fight against fakes. Whether calls to de-escalate trade tensions are heard remains to be seen. In the meantime, the angst will continue. (TL)

T-ara resolve trademark issue with former agency, claims band member – A member of the Korean pop group T-ara has spoken publicly about the high-profile trademark dispute the band has had with its former agency MBK Entertainment. As we wrote back in January, members from T-ara, which is one of the most popular K-pop bands in the world, began legal action for rights to use the group name following a trademark application by their former management agency, MBK Entertainment. Last month, the Korean IP Office (KIPO) rejected MBK’s trademark application for the term, but the company vowed to submit another application. However, in an interview this week, T-ara member Hyomin appeared to suggest that the dispute is over and that MBK will no longer be pursuing registered trademark rights to the band name. “The name ‘T-ara’ is not only ours or anyone else’s, and it was decided that it belonged to everyone,” she said in comments on Soompi. “We thought that too because we thought that we, the fans, and the agency who created us all had rights to it. Regarding the issue, we resolved the misunderstanding with our former agency.” If this really is the end, it brings to conclusion a bitter IP fight – though mostly between MBK and T-ara’s fans, who bombarded the entertainment company with angry letters, emails and social media posts following the discovery of the trademark application in January. (TJL)

US brands with most loyal customers revealed – A major new study from Morning Consult has revealed the brands with the most loyal customers, with Amazon and Walmart topping the list. In the research of over 6,500 shoppers, according to Business Insider, it was found that reliability is the most important factor for a brand to deliver if it wants to increase its customer loyalty. Another takeaway from the study was that the smartphone industry has particularly loyal customers – for example, 61% of smartphone owners “are likely to buy a new phone from the same manufacturer as their current phone”. The top 10 US brands with the most loyal customers, in order, are: Walmart, Amazon, Target, Apple, Kroger, Costco, McDonald’s, Coca-Cola, Nike and Lowe’s. For trademark practitioners, such loyalty suggests brands are not just well-known but also potentially have sufficient goodwill to enlist customers in the fight again infringement – for example, when Coca-Cola recently asked users to notify it of fake products they find. (TJL)

IP experts join up to boost Pakistan universities – According to local outlet The News, government departments in Pakistan and the United States have collaborated to host intellectual property licensing workshops at universities in the country. The first workshop was held on the campus of the National University of Science and Technology (NUST) in Islamabad, and included input from the US Department of Commerce, in partnership with the Higher Education Commission of Pakistan (HEC), the Continuing Legal Education Institute of Pakistan (CLEIP), and the Intellectual Property Organization of Pakistan (IPOP). As well as educational sessions, the end of the workshop included students working on a series of case studies to develop specific licensing strategies and agreements. In comments at the beginning of the two-day event, US Embassy Islamabad’s counsellor for economic affairs, Michael Sullivan, said: “Laying the foundation for IPR protection is one of the best ways for Pakistan to create an environment that cultivates innovation and attracts foreign direct investment, which ultimately increases Pakistan’s global competitiveness and creates a stronger economy.” (TJL)

Domain name radar:

“Don’t assume others have this covered”: ICANN needs your RPMs feedback – ICANN is currently conducting a survey of brand owners in a bid to assess the use and effectiveness of the Sunrise and Trademark Claims rights protection mechanisms (RPMs) as part of the new gTLDs program. Open until 28 September, the survey is an important one to contribute to because the output – together with surveys which have been issued for registries, registrars and other domain name registrants – will be fed into ICANN’s ongoing review of the Rights Protection Mechanisms. In short, the survey will be central to decision-making over potential changes to the RPMs that rights holders rely on as part of online enforcement strategies. Speaking to WTR, Susan Payne, head of legal policy at Valideus, highlighted the importance of the trademark community having its say: “Please do take the time to complete the survey and share your experiences of the Sunrise and Trademark Claims – don’t assume that others have this covered. There will not be any improvement to the RPMs for any future new gTLD releases if the working group does not receive the necessary data to support it, and there are plenty of participants in the ICANN community who believe that the existing RPMs already amount to “trademark overreach”. Those ready to respond to this call can click here to access the online survey form. (TL)

Legal radar:

Restraining order slapped on e-cigarette counterfeiters – A US Federal District Court has granted e-cigarette brand Juul Labs a temporary restraining order against roughly 30 Chinese companies alleged to be selling fake versions of its products online. The businesses have also had their PayPal accounts frozen, it has been reported. Juul CEO Kevin Burns said: “The scale of counterfeit Juul products is alarming. These counterfeiters also drive a black market where there is no age verification.” The fast-growing e-cigarette market has become a major target for counterfeiters in recent years; Juul claims that it has had 16,000 listings taken down from e-commerce platforms so far this 2018. (AH)

7-Eleven takes fashion brand to court for alleged infringement – Well-known convenience store brand 7-Eleven is reportedly involved in a trademark spat with menswear company Original Penguin, which is alleged to have been selling garments featuring its marks. The New York-based fashion entity is said to have inter alia used 7-Eleven’s SLURPEE, SLURPEE LITE and BRAINFREEZE trademarks on t-shirts, shirts and swim-shorts. The convenience store chain claims says this constitutes “trademark infringement, dilution, unfair competition, counterfeiting, and unjust enrichment”. It has requested that a Texas court order Original Penguin to stop selling the allegedly infringing products, forfeit all profits, pay monetary damages, pay attorneys’ fees and destroy all products featuring the 7-Eleven marks. This is not the first time a fashion house has made use of another company’s branding for its designs, of course; Moschino and Supreme have both famously done this too, though without having legal action taken against them. (AH)

Pakistan’s competition commission punishes seven trademark infringers – Seven packaging and fabric companies have been penalised by the Competition Commission of Pakistan (CCP) for fraudulent trademark use, Pakistan Today reports. The companies are said to have been using the PASHA FABRICS trademark, belonging to the fabric manufacturer SharjarPak. After an investigation, the CCP concluded that SharjaPak had not granted any of the companies the right to use its mark, and that the businesses in question had broken the country’s competition law by misleading consumers and damaging the right owner’s interests. A modest penalty of Rs500,000 ($7,000) has been imposed on Kausar Brother Plastic Corner, Sufi Cloth House, Aamir Cloth House and Ahmad Pasha Collection; whereas a Rs750,000 (£10,400) fine has been imposed on Baba Plastic, Ahmad Plastic, Dabba House and M Ramzan Fabrics, which failed even to appear before the commission. They have 60 days to pay the penalties. (AH)

On the move:

LP adds IP expert – Levenfeld Pearlstein has announced that Paula Jill Krasny has joined the firm as a partner in its intellectual property group. Krasny has 30 years of experience providing and implementing strategic solutions to businesses seeking to build, protect and monetise global brands and other intellectual property assets. Previously a partner at Baker McKenzie and McDermott Will & Emery Krasny also serves on the Board of the Anti-Defamation League (Greater Chicago Upper Midwest Region). In 2011, the ADL recognized Paula as a Woman of Achievement, an honour given to select female executives for their civic contributions. (TL)

Clyde & Co hires IP and data expert – Sarah Lenoir has joined Clyde & Co as a legal director. Hired to develop the IP/IT and data protection practice in the firm’s Paris office, Lenoir’s practice focuses on intellectual property, emerging technologies and data governance. She joins from French law firm Lexing Alain Bensoussan, where she was a director in the IP, IT, Data department. (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:

  • Presented an exclusive interview with Mars Inc’s Sophie Anger, who explained how she optimises relationships with business colleagues, and how efficiency is her guiding principle when it comes to trademark prosecution;
  • Featured a guest blog that examines China's newly-adopted e-commerce law and identifies the aspects which will have the most significant impact, both good and bad, for IP enforcement work;
  • Reported on fears over potential phishing attacks, which arose after it was revealed that a domain name previously used by South Africa's Companies and Intellectual Property Commission had been purchased by an individual in Mexico;
  • Spoke to The Precious Metals Association of North America (PMANA), which has lauded the Trump administration in its response to China’s adoption of long-awaited e-commerce legislation;
  • Assessed the Chinese government’s ambitious brand-building drive – an ambitious project that will have consequence for all rights holders - no matter where in the world they are located;
  • Published detailed analysis of the World Trade Organisation’s panel report in the cases brought against Australia’s plain-packaging regime – which argued that some of its key arguments are without merit.

And finally…

Your new look WTR To coincide with the resumption of our full subscriber service on September 3, the World Trademark Review platform was reengineered to offer a refreshed look, enhanced functionality and a more responsive and faster website. Over the past nine months we have made a series of enhancements to the site. In November 2017 we stepped up our content output and also provided subscribers with early access to the 2018 rankings tables for the World Trademark Review 1000 – The World’s Leading Trademark Professionals. In February, we then re-engineered the site to create a series of microsites that allow users to quickly navigate to, and bookmark, the content most relevant to their needs. These included nine topic landing pages, eleven industry sector sites and five regional landing pages. This latest refresh marks the next stage of WTR’s journey and we have exciting plans for the coming months. WTR subscribers get automatic access to all parts of the refreshed WTR platform; while our registered users can continue to see everything that is in front of the paywall.  Should you wish to become a WTR subscriber, click here. (TL)

Adam Houldsworth

Author | Life sciences reporter

ahouldsworth@GlobeBMG.com

Adam Houldsworth