11 Dec
2018

UAE counterfeit seizures, Brazil predicted for 2019 Madrid accession, and Lacoste scores big win: 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 new gTLDs on the rise, the INTA pledging commitment to Africa and the Middle East, consumer trust in big brands, a General Court decision involving TMview, considering a trademark audit, and much more. Coverage this time from Trevor Little (TL) and Tim Lince (TJL).

Market radar:

Consumer trust in big brands remains, despite data breaches – A survey conducted by Janrain has found that most consumers put their trust in big brands, and are willing to part with personal data if they believe it can benefit them – and this is despite recent high profile data breaches. The company polled 1,000 UK adults as part of its Consumer Attitudes Toward Data Privacy and Security Survey. While big internet companies like Google and Facebook remain among the least trusted businesses, a large number of respondents put the most faith in pharmaceutical and travel companies including airlines – something the company identifies as surprising given incidents like the recent British Airways data breach that hundreds of thousands of customers. Elsewhere, only 18% of people noted that they would be likely to walk away from a business that required them to provide personal data like an email or phone number. The survey also revealed that just over 52% of people would willingly allow a company to use some of their data if they had something to gain from it. Janrain CEO Jim Kaskade reflects: “Despite high-profile missteps and outright failures in the way brands have approached data privacy and security, consumers are very open to a consent-driven relationship with brands, which will go a long way toward solidifying trust for stronger, longer-term relationships.” (TL)

25 million fakes seized annually in UAE – According to newly-released figures, 25 million counterfeited goods are seized every year in the United Arab Emirates. The figures were revealed by Hatem Abdelghani, director of the IP department at Legal Group, a organisation representing over 500 international brands in the country. In total, cosmetics and body care products are the most counterfeited items seized in the UAE, says Abdelghani: “We have been collecting thousands of counterfeit toothpaste lately. It's dangerous, because such products are threats to human health and safety. Fake auto parts and airbags can also put motorists' lives at risk.” The figures were released at a time when the INTA is hosting its annual Middle East and Africa Conference in Dubai, UAE, with various brand counsel in attendance. (TJL)

INTA pledges commitment to Africa and Middle East... – In a speech this morning at INTA’s Middle East and Africa Conference, association CEO Etienne Sanz de Acedo spoke about his commitment to the region. In all, he revealed that INTA’s membership base includes around 450 organisations from Africa and the Middle East, making up around 1,500 individual members. Of those, 160 are part of INTA committees. At the top-end of the association, he said there is currently one advisory director from South Africa on the board of directors, as well as a director from Nigeria. In all, he added, there have been five directors from the region on INTA’s board of directors in the past half-decade. When it comes to events, the association has been in the Middle East numerous times (including in 2013 and 2016) and there was a ‘Building Africa With Brands’ event in Cape Town, South Africa in 2016. In the future, Sanz de Acedo promised another INTA conference in the region in 2021 – with the room erupting into applause at this news. (TJL)

… and looks to the future – Also in his morning speech, INTA CEO Etienne Sanz de Acedo spoke about some of the priorities the association has planned for the future. First of all, though, he had a message for yesterday’s opening speaker. “I would like to give a special thank you to Tish Berard,” he said, to rapturous applause. “She’s been talking through the entire year about being an INTA ambassador and we can be extremely proud of our 2018 president, she has been an incredible ambassador. The reason I’m saying that is because every time there’s been a meeting, she’s been prepared to join that meeting; every time there’s been a delegation, she’s been ready to be there. We said yesterday that she should never resign as president – well, our president changes every year, but I agree with you, she should never resign as president.” Nonetheless, this will be Berard’s final event as INTA president. But what will be on the INTA’s agenda in 2019 and beyond? Well, much of that information can be found in the association’s 2018-2021 Strategic Plan, although Sanz de Acedo broached on some of the most pressing priorities. The first, he said, directly led on from Berard’s presidential taskforce. “How can we better promote IP among SMEs?” he asked. “That is clearly a priority for us. Here in Dubai, there are around 100,000 SMEs and entrepreneurs, that’s a great opportunity, and this is the same scenario all around the world. We have to think of IP as not just for big corporations, but also for SMEs and entrepreneurs, so we need to reach them and probably change our language for that.” Other priorities include the trademark impact of innovation, such as through the development of AI and blockchain, and also seeking more harmonisation when it comes to brand valuation and brand equity. For INTA, Sanz de Acedo made clear that 2019 is going to be a busy year. (TJL)

Legal radar:

Canada, Brazil and Pakistan predicted for 2019 Madrid accession – Also at this week’s 2018 Middle East and Africa Conference, there was an update from WIPO on the Madrid Protocol. Panellist Debbie Roenning, director of the Madrid Legal Division at WIPO, said that there has been some progress this year, but more is expected in the upcoming 12 months. Specifically, she revealed that three new countries were added to the Madrid Protocol roster this year – Afghanistan, Malawi and Samoa. But it is next year when the much predicted accessions of Canada and Brazil are expected, with Malta, Malaysia and Pakistan also touted to accede in the next 12 months. Beyond that, other countries currently preparing include the Democratic Republic of Congo, Djibouti, Jordan, Saudi Arabia, United Arab Emirates, Papua New Guinea, Sri Lanka, Bangladesh, Barbados, El Salvador, Jamaica, Trinidad and Tobago, and South Africa. Indeed, when it comes to the latter, a representative from South Africa’s national IP office (CIPC) gave an update on how preparations are going. “We’ve looked at other countries to learn lessons about how they acceded,” explained CIPC commissioner Rory Voller. “For example, we saw the pushback that often happens within the legal fraternity when Madrid is in the works, so it was important for us to take a non-formal approach to achieve buy-in from the law community in South Africa before we move forward.” In terms of when it is likely that South Africa will actually join Madrid, no specific date was given, but Voller warned brand owners not to expect it any time soon. “In South Africa, it’s a fairly lengthy process to get anything passed – there’s a lot of hurdles to overcome,” he said. “The hope is to go through the parliamentary process in 2019 – the only issue is that it is an election year in South Africa in 2019, and when that happens, the new administration will need to familiarise themselves with Madrid before the process can move forward.” The honest assessment that it could take years for South Africa is welcome, as the country has been expected to join ‘within months’ for years now – at the INTA Annual Meeting in May 2017, for example, it was expected that South Africa could be joining imminently. (TJL)

Lacoste scores big win in India – Lacoste S.A has prevailed in a counterfeit court case brought against two Noida-based firms for the sale of counterfeit Lacoste products. The win, in the Patiala House Court, marks the culmination of a three-year legal battle with the two infringing firms, which were ordered to cease the sale of counterfeit Lacoste goods and pay damages to the company on account of loss to goodwill and reputation suffered from the sale of fakes. The suit was filed against M/s Fashion Zone and M/s Export Hut, which were using the LACOSTE mark, along with the crocodile logo. The court accepted the suit and appointed the local commissioner to carry out search and seizure actions on the infringing firm’s premises. In the resulting judgement, Judge Twinkle Wadhwa ruled that Lacoste was entitled to a permanent injunction restraining Kulbhusan Goel, proprietor of M/s Export Hut, from selling counterfeit Lacoste, and ordering the payment of  Rs.1lac in damages. Puneet Kumar, manager of M/s Fashion Zone, gave an undertaking to not infringe Lacoste’s rights in the future. (TL)

Time for a trademark audit? – While, during the scramble to year-end, rest and recreation may be on the minds of trademark counsel, over on JDSupra Goulston & Storrs PC’s Andrew Ferren and Andrew O’connor suggest that the time may be right to conduct a trademark audit. The piece suggests that three steps should be followed. First, that rights owners make an inventory of all registered and unregistered marks. With this in hand, trademark professionals can then analyse gaps in protection, the authors stating: “Formulating a plan of action will [then] help ensure adequate brand protection moving forward and can assist with budgeting the costs associated with protecting the trademark portfolio.” Finally, it is important to evaluate third party use of brands, as “formulating a trademark monitoring plan will assist with enforcing trademark rights and strengthening the trademark portfolio.” While it may not be the first thing that springs to mind this holiday season, a trademark audit may stand rights owners in good stead going forward. After all, a trademark is for (brand) life, not just for Christmas. (TL)

Office radar:

TMview has character – An update posted by the EUIPO notes that, by a judgment rendered on 6 December in Deichmann v EUIPO – Vans (T-848/16), the General Court has confirmed that extracts from TMview are acceptable evidence in inter partes proceedings before the office in order to substantiate earlier trademarks registered with the participating offices, as long as they contain all relevant data. Expanding on the decision, the office notes that the General Court held that an extract from TMview, in relation to international registrations designating the European Union, constitutes a copy of the registration certificate issued by WIPO and, where appropriate, a document equivalent to the most recent renewal certificate within the meaning of Rule 19(2)(a)(ii) of Regulation No 2868/95 [now Article 7(2)(a)(ii) EUTMDR], provided that the extract contains all relevant information. If the list of goods or services contained in the TMview extract is not in the language of the proceedings, the excerpt must be submitted together with a translation of that list. (TL)

Domain radar:

The new gTLDs bounceback is on? Over on Domain Incite, Kevin Murphy reports on new Verisign data which shows new gTLDs growing from 21.8 million names to 23.4 million names, a 1.6 million name increase, over the third quarter. The rise follows a year-long slump in registration levels. However, looking ahead, Murphy predicts a return to decline over the next few quarters, and also notes that ccTLDs shrunk for the first time in a couple years over the third quarter. We won’t know whether a longer-term gTLDs bounceback is on for some time yet. (TL)

And finally…

Obtain high-level trademark management and brand protection insights – WTR is hosting two events, on consecutive days, in Chicago in March 2019. The Brand Protection Online: Strategies for Ethical Enforcement and Managing Trademark Assets USA events will deliver high-level insight and practical takeaways for those tasked with managing, protecting and monetising brands. On 5 March 2019, Brand Protection Online event will take a deep dive into practical strategies for fighting infringement on ecommerce sites, navigating the changing domain landscape and managing reputation online. Taking place at the same venue the next day, the fourth annual Managing Trademark Assets USA will again focus on the cost-effective management of international portfolios, and comes at a time when it is more important than ever for brand owners to ensure they are integrating innovative and disruptive strategies into their trademark operations. To register for Brand Protection Online (or both events) click here. To register for Managing Trademark Assets USA (or both events) click here. (TL)

Adam Houldsworth

Reporter

ahouldsworth@GlobeBMG.com