15 Nov

A very Miami trademark dispute, Project Zero launches in India, and Nike ends Amazon deal: 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 a trademark infringement dispute between milk companies, how a potential change to Instagram could impact DTC brands, how ‘water stewardship’ could boost brand value, an office move for the UKIPO, and much more. Coverage this time from Trevor Little (TL), Bridget Diakun (BD), Jonathan Walfisz (JW)  and Tim Lince (TJL).

Market radar:

Potential changes to Instagram may negatively impact DTC brands – Instagram has been testing a new feature in Australia, Ireland and Canada whereby the platform hides ‘likes’ for groups of users. This feature is now being expanded to the US. Although the change is designed to take the pressure off users, as the amount of likes each post receives will no longer be made public, some direct-to-consumer (DTC) brands have expressed concerns that this will harm their businesses and hamper growth potential. Instagram is an important platform for young DTC brands who use it to test their advertising campaigns and grow brand awareness. There is a risk that without ‘likes’ there will be less engagement between brands and their consumers. Mel Wells, founder of DTC swimwear brand Beefcake, said that the removal of likes could be problematic because it acts as a way to legitimise the company and its products for new customers. Others have said that, while challenging, brands will just have to adapt to the changes by focusing on content that drives more conversation and engagement through polls and comments. The test run of this feature is still in the early stages and it remains to be seen if it will be rolled out in other jurisdictions. If it is, it could be a game changer that will force brands to shift their strategy or risk losing exposure on an extremely important social media platform. (BD)

LAA launches new website – The Luxembourg Arbitration Association (LAA), a non-profit organisation founded in 1996 and dedicated to the promotion and development of arbitration practice in Luxembourg, has announced the launch of a new website (link here). Those seeking an arbitrator, a counsel or a tribunal secretary can search in the members area, refining the search based on language spoken, nationality or areas of specialisation. Guy Harles, president of LAA, explained: “As the leading centre for legal competence in Europe, Luxembourg is the ideal platform from which to conduct international arbitration. The new LAA website offers access to a comprehensive range of specialist resources, optimised in one place.” (TL)

Amazon launches anti-counterfeiting programme in India – Amazon will now allow brands in India to directly remove a seller’s listings as part of its Project Zero programme. As WTR has covered before, Amazon’s Project Zero has already been rolled out across North America and Europe over the past few months, and is a step-up in Amazon’s efforts to combat fakes. Dharmesh Mehta, Amazon India's vice president of customer trust and partner support, commented on how effective this programme should be for local businesses: “If, for some reason, our automated protections miss a counterfeit listing that makes it onto our marketplace, a brand can on their own find that item and pull it down. It’s the first time that we’ve put this much power in a brand’s hands.” On top of that, it could help tackle India’s problem with fakes, claims Gopal Pillai, vice president of seller services, Amazon India: “In India, we haven’t seen any big counterfeit issues, but we have to invest in machine learning ahead of time. Because we have 13 different marketplaces worldwide, these are solutions built by hundreds of engineers and we want to leverage that for India.” (TJL)

Nike ends Amazon partnership – Elsewhere in Amazon related news, Nike has confirmed that its two-year partnership with Amazon to sell clothing and footwear has come to an end. WTR first reported on the partnership in June 2017, and focused on how the tie-up could “highlight the benefits of the e-commerce giant’s new programme for brands fighting the spectre of counterfeit goods” on Amazon. However, while we suggested it was a win-win back then, it appears plans have now changed. When it comes to the issue of counterfeits being sold on Amazon – an issue that Nike has raised before – the sportswear company gave no comment. (TJL)

How ‘water stewardship’ could boost brand value – An article this week at GreenBiz.com considered whether ‘water stewardship’ (taking steps to address water scarcity and water quality issues) could have a tangible effect on brand values. The article notes how ‘brands with purpose’ are increasingly seeing success in the marketplace, with consumers increasingly buying sustainable products and seeking brand transparency. Furthermore, consumers are also looking for brands that take action rather than just raise awareness of issues – especially around climate change. To that end, water stewardship is one issue that brands could focus on more. “Simply treating water stewardship as a risk mitigation strategy is insufficient and will not lead to capturing the true value consumers associate with ‘brands with purpose’,” the article notes. “Water stewardship performance can be transparently communicated through certification to the AWS Standard. Its five-step process acts as a strategic framework to move companies beyond simple risk mitigation and in-house water optimisation, to true stewardship that links inside and outside-the-fence-line actions, which is where brand value creation occurs at scale.” For companies that take direct positive action around sustainability, the AWS Standard could be one option – and, of course, any resulting brand value boost is a nice bonus too. (TJL)

Netflix and Nickelodeon announce $200 million deal – In a bid to tackle competition from Disney’s new streaming service, Netflix has made a deal with children’s television network Nickelodeon for rights to create works with their IP. The deal is touted to be worth over $200 million to Nickelodeon, reports the New York Times. The first fruits of the partnership will be a SpongeBob SquarePants spinoff music project focused on Squidward, a misanthropic mollusc. The deal marks a strategic departure for Nickelodeon and parent company, Viacom, opting for licensing deals instead of building a standalone streaming service. This is possibly in reaction to Disney’s streaming service, Disney Plus, with 10 million people already signed up to access a wealth of content from Disney, Pixar, Marvel, Star Wars and National Geographic. When it comes to the Netflix deal, this author has fingers crossed for a gritty reboot of Rugrats. (JW)

Legal radar:

“A very Miami trademark lawsuit” kicks off – Over in Florida, the Miami Herald has reported on a trademark dispute it has dubbed “The Juice War”. Specifically, a popular Latin food restaurant chain in Miami, ‘El Palacio de los Jugos’, has issued a lawsuit against a competitor with a familiar-sounding name, ‘El Patio de los Jugos’. In the lawsuit, the restaurant claims the rival’s “similar appearance” and “highly phonetic sound and pronunciation” will cause a “likelihood of confusion” for consumers. However, the rival’s owner, Yoel Hernandez, denies any similarity, telling the paper: “It’s completely different. Patio is Patio. Palace is Palace.” While we’re unsure if that argument will work in a courtroom, it’s clear Hernandez is willing to be open – and cheeky – when talking to the media about the case. “Maybe they’re suing because my food is better,” he also said. The lawsuit is asking for damages and for El Patio to change its name and look. With the Miami media spotlight on this case, this legal battle has erupted into war. (TJL)

No use crying over spilled oat milk… or trademark infringement? – Alternative milk company Oatly has been accused of milking the Swedish trademark register by Arla Foods. As written about in a blog post by TrademarkNow, Danish company Arla Foods ran an ad campaign in Sweden which included a slogan of multiple variants on the Swedish word for milk (mjölk) such as: pjölk, brölk, trölk and sölk. The campaign was centred around the idea that ‘only milk tastes like milk’. After the campaign had run, Oatly registered the same words as eight trademarks at the Swedish Patent and Registration Office (PRV) and began to use the words on its own oat milk cartoons. In reaction, Arla has filed pending applications for the same words. Arla say they will go ahead with more ad campaigns with the same concept and that Oatly made their registrations in bad faith. Oatly maintain the words are great for their products and that they have no intention of promotional campaigns as Arla has already done a great job for them. (JW)

Office radar:

The UKIPO is moving – The UK Intellectual Property Office (UKIPO) will have a new address from 18 November 2019. The office says that its move (to 3rd Floor,10 Victoria Street, London SW1H 0MB) will not impact services. The new office is opposite the Department for Business, the nearest London tube stations being St James’s Park or Westminster. WTR recently moved its own offices and appreciates the work that is involved – so wishes the office’s staff good luck as they pack their boxes and get ready to settle in to new surrounds. (TL)

Singapore ramps up IP collaboration with China, Japan and Russia – The Intellectual Property Office of Singapore (IPOS) has announced a number of new collaborations. First, a  partnership between Industrial Property Cooperation Center (IPCC), Japan, and IPOS International will see the two appoint each other as a branch office in its respective country for patent search and analysis work. Thus, IPOS International will lend its suite of patent search and analysis services to Japanese companies through the IPCC and local enterprises in Singapore can tap on IPCC’s services, such as prior art searches in the Japanese language, through IPOS International. IPOS also highlighted new developments in its network, pointing to a bilateral partnership with the Suzhou Industrial Park Administrative Committee (SIPAC) to jointly develop initiatives and training programmes to help Chinese companies manage their intangible assets, protect and commercialise their IP overseas – as well as a tripartite partnership with the Russian Internet Initiatives Development Fund (IIDF) to collaborate in creating a platform for technology transfer between the Russian Federation and the Republic of Singapore. Daren Tang, chairman of IPOS International, stated: “This is an exciting time for the IP community as intangible assets (IA) and IP are increasingly driving enterprise growth. To better support this growth, IPOS International will expand its networks and collaborate more closely with partners across the world. Coupled with our deep technical expertise, we hope to bring value to innovative enterprises seeking to scale-up and help anchor Singapore as a base for these companies to expand into the region and beyond.” (TL)

On the move:

DLA Piper expands New York office with IP hire – DLA Piper has appointed Erica Kuo to of counsel within the firm’s IP and technology practice in the New York office. Kuo specialises in pharmaceutical and biotechnology patent law, assisting clients with patent portfolio acquisition, development and enforcement. Kuo joins the firm from Goodwin Procter where she was a partner. (BD)

Finnegan adds former TTAB attorney to its bench – Katie McKnight, a former interlocutory attorney at the Trademark Trial and Appeal Board (TTAB), has joined Finnegan as of counsel, according to a press release on the firm’s website. During her role with the TTAB she was responsible for researching, drafting and working with the Solicitor’s Office and administrative trademark judges on seven precedential decisions. The addition of McKnight in the Washington DC office will strengthen the firm’s trademark practice. (BD)

Shauna Norton joins Dickinson Wright in Las Vegas – Dickinson Wright has hired Shauna L Norton as of counsel within the firm’s Las Vegas office. Norton’s practice focuses on copyright and trademark law. She handles prosecution and enforcement matters, and also has experience in negotiating and drawing up trademark licenses. Norton further represents clients in domain name disputes. (BD)

Quarles & Brady strengthens life sciences team – Quarles & Brady has announced the appointment of Christine Hansen to partner within the IP practice group. Hansen specialises in the life sciences and chemical technologies sectors. She advises clients on patent portfolio strategies, landscape analyses, due diligence and freedom-to-operate. Hansen previously worked in private practice, acting as in-house patent counsel to a French pharmaceutical company. She can be found within the firm’s Indianapolis office. (BD)

Polsinelli continues IP hiring spree – As part of its ongoing efforts to expand its nationwide practice, Polsinelli announced that it has hired four patent attorneys who will join the IP department within the Seattle office. Emily C Peyser and Margie Aoki have been appointed as shareholders, Katherine D Lee has joined as counsel and Jeniffer Junkin as an associate. These additions will strengthen the firm’s offerings within the electrical engineering and computer science patent prosecution spaces. (BD)

Ex-Microsoft in-house counsel joins Fish – Law firm Fish & Richardson has announced the addition of Jenifer deWolf Paine to its New York office as of counsel in its Trademark and Copyright Group. Prior to this role, Paine was in-house counsel in the trademark group at Microsoft, where she was responsible for all aspects of trademarks for the company's most high-profile and consumer-facing brands, including Xbox, Minecraft, Surface, and Windows. (TJL)

And finally...

Managing Trademark Assets returns to London Following the success of this year’s event, WTR’s  Managing Trademark Assets Europe will be returning to London on 28 January 2020. The event provides an opportunity for attendees to hear best practice and insight from leading in-house counsel from the world’s biggest brands as they discuss their approaches to critical areas, as well as share their own insights with peers and colleagues. For the upcoming event we are also increasing the interactive nature of the programme, introducing informal, small-group discussions on dispute resolution scenarios - allowing participants to workshop possible responses with their peers and colleagues. Among the other areas to be explored are budget management, dispute negotiation tactics, best practices around diversity and team building, and how to fight counterfeits on a finite budget. The current registration rate for the event is £395 (excluding VAT). To sign up to attend Managing Trademark Assets Europe, click here. (TL)

Jonathan Walfisz

Author | Reporter

[email protected]

Jonathan Walfisz