Category Archives: trademarks

Facebook Community Pages and the use of YOUR IP

Back in August 2010, Facebook launched their “community pages”.  In the spirit of social media and “shared knowledge” these pages are auto generated from content that is available online under a creative commons licence (mainly but not exclusively from Wikipedia entries).

But what if you don’t like what is written on your organisation’s auto generated community page?  From Facebook help centre:

“Can I edit the content on a community page?

No. Community pages display Wikipedia articles about the topics they represent when this information is available, as well as related posts from people on Facebook in real time. At this time, there is no way for you to add your own pictures or edit information on these pages.”

No?  This seems more than a little unfair.  Especially when the pages are often accompanied with official logos and it is not always clear which pages are owner generated, and which are auto generated…  From IPfrontline.com, “Facebook Community Pages Can Jeopardize Trademarks and Brands

“Users can easily be confused between official pages and community pages. For instance, when a user searches for Dr. Pepper using Facebook’s search bar, many “Dr. Pepper” pages pop up. The consumer can’t tell immediately whether it’s a community page, a fan page, or the official page…”

Help is at hand however, even if it’s not so widely publicised.  Download and read the following article: “Brand Owners Can Now Reclaim Facebook Community Pages” for more information on Community Pages, and steps you can take to reclaim your one if you need to.  See also “Have You Claimed Your Facebook Community Page Yet? Here’s How…”  and “How To: Claim Your Facebook Community Page” (Be sure to read the comments too as its not so straight forward.)

The Kilpatrick Townsend & Stockton LLP article also says:

“Facebook’s Community Pages are an excellent example of why brand owners should take a proactive approach to social media and have a clear social media brand protection strategy in place. This is not only important for a brand owner to fulfill its duty to police the marketplace but also to ensure that a brand owner has current information about the constantly changing state of social media. There is little doubt that brand owners will continue to see many new developments in the social media space”

For more information on this topic read also the Social Media Examiner article: “Facebook Community Pages: What Your Business Needs to Know

GI infringement case in India: “Darjeeling”

Results an infringement case in India involving the GI “Darjeeling”.  This post appeared on SpicyIP last month, “Breaking News: Darjeeling still lounges in Kolkata, says HC” – this week they updated the post bringing copy of the decision. “Darjeeling for Two in Kolkata

By way of an update on the “Darjeeling” Geographical Indications (GI) case we reported on some days ago, we have uploaded a copy of the decision on our site. This is a very interesting decision, not just because it is the first ever by an Indian court on the infringement of a registered GI; but also because it may have significant implications on the protection of GI rights in the country in the times to come.”

A detailed report on the decision is in the post.  They summed up saying:

“The decision was categorical in stating that the word “Darjeeling” could not be exclusively claimed by the Tea Board despite its GI and TM registrations. Crucially, the court held, “Even for a case of passing-off, the use of “Darjeeling” by a person other than the plaintiff can be complained of if the word or the geographical indication has any nexus with the product with which it is exclusively associated upon the registration.”

This raises an obvious interesting but unanswered question: what defines “nexus” as referred to by the Judge above? What degree of similarity will convince a judge to offer a different decision on passing off?”

Update on WIPO/WIPD; still causing confusion?

Remember the confusing “look & feel” of the WIPD (World Intellectual Property Database) site and the WIPO (World Intellectual Property Organisation)?  See our post “WIPD hopes to be confused with WIPO; spot the difference!”  Well, we can now take a small breath of relief.  The WIPD logo has been amended, diminishing the likelihood of confusion. WIPO’s actions must have had some effect!

You can check it for yourself and see whether it is still a cause for concern. See the screen shots below of WIPO and then WIPD’s home pages.

(thanks to Francesca Re Manning)

WIPD hopes to be confused with WIPO; spot the difference!

I read with alarm the IPKat post last week regarding the WIPD site.
Friday fantasies“.  Thanks for bringing this to everyone’s attention IPKat.

The post concerns a website calling itself WIPD, which mimics the branding of WIPO and requests fees for dubious and badly defined services.  Even the strapline is similar; WIPO = “Encouraging Creativity and Innovation” and WIPD = “Imagine Creativity and Innovation.”  Whilst I easily found their list of fees, I couldn’t find the mechanism for processing them. Nonetheless the site is confusing in its content and closely follows the “look and feel” of the WIPO site, so at the very least it is compromising the integrity of the WIPO brand.  See for yourself!

the official WIPO logo (legitimate)

the official WIPO logo (legitimate)

WIPD logo (dubious)

WIPD logo (dubious)

The IPKat entry on Friday was an update from last week’s post in which they said:

“The IPKat is horrified that scam-merchants such as WIPD should be enabled to masquerade as a United Nations Agency in order to deceive and rip off gullible patent applicants, from whom it seeks substantial funds for its worthless services…”

The IPKat called on “WIPO to do something about it“.. and that “all patent practitioners to be aware of this rogue enterprise.”  I share IPKats disbelief that this is continuing.  It is nothing if not ironic…

Trademarks to distinguish products for consumers

It was interesting to note on the law360 site that more businesses are now looking towards TMs to maintain their market exclusivity.  In an item called, “Trademarks may help companies skirt patent woes” (free trail available to access full text) they talk about the increasing obstacles for securing and enforcement of patents as the reason behind “businesses seeking alternatives for intellectual property protection“.

They go on to say:

“People focus on the importance of patents, but forget that the trademark aspect of distinguishing products for consumers is also really important…it is consumers’ reliance on a product name that makes a difference on commercial sales, not on the exclusivity of the underlying product … part of the draw to trademarks compared to patents is that they can be obtained in months rather than years and they are generally not as expensive to file for or enforce”

We at CAS-IP know that TMs are an important intellectual property tool when considering market development options for products.  For more information see the market development section of the CAS-IP website.

(thanks to Victoria for sending this link)

Sustainable agriculture in Bolivia: Coca Colla

Last week  IP Tango drew my attention to some news from the South American continent that made me wonder whether the Bolivian government is being extremely strategic in its use of intellectual property, or not….

According to the item, Bolivia with the support of its president Evo Morales, have decided to start investing in the production of a new soft drink called “Coca-Colla Energy”.  There are of course many discussions to be had around the inevitable accusations of trade mark infringements from Coca-Cola (even though it is difficult to see how Coca-Colla could really damage its better known sister)! 

Whilst encouraging the local industry of a developing country is a good thing; coca is not going to sustain and feed the Bolivian population – and the Government wants to allocate 20,000 hectares to growing it!  It is also highly likely that there will be reactions in relation to the narcotic issue.  The International Narcotics Control Board has tried for years to ban coca leaf chewing, and could claim that the use of coca leaves in a different product should also be banned.  However, it is interesting to see that Bolivia’s new constitution, drafted by the ruling Movement Toward Socialism (MAS) party, recognises coca as “cultural heritage, a natural and renewable resource of biodiversity in Bolivia and a factor of social cohesion” and thus not a narcotic in its natural state…

Whatever the merits of this particular product and its obvious stance against a giant of global capitalism, the proposal raises interesting issues about alternative ways of exploiting IP for development; even if it is not quite ‘the real thing’!

Spanish speakers might enjoy the humorous comments from Renzo Colanzi.

Post written by Francesca Re Manning, consultant to CAS-IP

Starbucks & ‘Charbucks’; protecting a brand

The coffee retailer Starbucks has always vigorously protected its brand name.  While this is a wise business decision, they sometimes go too far.  In this case, a small roaster in New Hampshire (Wolfe’s Borough Coffee) created a blend they called “Charbucks”, referencing the darkness of the blend.  Starbucks went after the small company and lost.

Now, according to Bloomberg, the case “was revived after a federal appeals court vacated part of a ruling favoring the smaller company”.  You can read the story at: http://www.bloomberg.com/apps/news?pid=20601087&sid=a5LBaVSt8NkQ&pos=7.  Also visit the FindLaw site for case summary and links to the full decision.

Starbucks has taken legal action against dozens of alleged infringers of their IP.  Perhaps the most ridiculous was an attempt in 2006 to claim ownership of the term “double shot”.  Matthew Williams (“I live coffee”) commented on http://www.coffeegeek.com that:

“I don’t think Starbucks (or any other company) should be allowed to trademark the name of a particular product that is based on a common usage idiom (units of measure in this case). Imagine a company making hotdogs trademarking “footlong” or a snack maker trademarking “cupcake.””

Post written by Peter Bloch, consultant to CAS-IP

Unusual trademark decision from Israeli Patent Office

http://blog.ipfactor.co.il/2009/05/06/israel-patent-office-allows-two-companies-to-register-same-trademark/

This post from “The IP Factor” blog earlier this month talks about the Israeli Patent office allowing two companies to register the same trademark – most unusual.  As the author points out:

“The purpose of a trademark is to prevent competitors from selling confusingly similar goods with confusingly similar names”

This decision goes against that. I passed the item around the CAS-IP team  for comment and got a response from both Peter Bloch and Francesca Re Manning.  Peter said:

“I agree with the reporter that: “This decision does not serve the interests of the manufacturer or of the public.”  And that surely is the bottom line!  It is the responsibility of the trade mark office to render appropriate decisions, which this is not and there may very well be an appeal. “

Francesca commented:

“I honestly wonder what the examiner was trying to do here … how can he claim that consumers cannot be confused [by] identical trade marks for identical products which are sold in identical shops and in identical manners? If such a decision is not appealed and overturned, it can open huge controversy. OHIM … can always rely on its rules but how different are they from the law that the Israeli Patent Office applied?”

The OHIM that Francesca refers to is the Trade Marks and Designs Registration Office of the European Union.  Incidentally their website has some good general information on trademarks for those interested. Visit their “Quick Guides” pages for:

“A series of multimedia “Quick Guides” covering trade marks, designs and IP in general… The “Quick Guides” are easy to follow and user friendly. They take you you step-by-step through the different types of IP protection available and explain the pros and cons of each.”

Rice varieties. Nericas® & case for using intellectual property management for stewardship

http://www.wipo.int/wipo_magazine/en/2009/02/article_0006.html

This recent article in the WIPO magazine  talks about Nerica®, – a subject CAS-IP has been following closely with the Africa Rice Centre (WARDA).  

“Helping agricultural research centers manage their intellectual assets as public goods is the raison d’être of the Central Advisory Service on IP (CAS-IP), a unit of the Consultative Group on International Agricultural Research (CGIAR) to which WARDA belongs. WARDA and CAS-IP are holding ongoing workshops to determine how IP mechanisms could best support the impact of this agricultural success story. Nerica was registered as a trademark with the USPTO in 2004, and as the expanding range of Nerica products are adopted by ever more smallholder farmers, CAS-IP notes that it will be increasingly important to protect the quality associations that have been so carefully established by WARDA, and to ensure that any Nerica seeds acquired by a farmer are the real thing.”

I have quoted this paragraph in its entirety as it was so well put! 

There has been some criticism around the use of “formal” intellectual property mechanisms such as trademarks in the field development as it has been viewed as “restrictive”, and counters the spirit of a “public good”. 

From our perspective this couldn’t be further from the truth!  We see a crystal clear case for IP mechanisms of this kind facilitating effective stewardship of research outputs.  A research breakthrough is the first step — after that, as the output makes it way downstream into the farmers hands and fields, this product MUST perform to expectations or the well intended mission of international research falls short.  Intellectual property management is one tool to help encapsulate the knowledge and experience of the original research into the product as it enters the supply chain.  Stewardship of breeding, storing, complementary inputs and techniques can be built into a brand and a brand can be moulded using formal IP such as trademarks.  To repeat the WIPO article, the aim is:  “to ensure that any Nerica seeds acquired by a farmer are the real thing.”

The latest on Ethiopia’s coffee trade; news reports and expert comment

http://dinersjournal.blogs.nytimes.com/2009/03/25/ethiopia-stops-coffee-exports/

IP watchers (and coffee aficionados) will be interested in developments in the Ethiopian coffee sector.  Ethiopia is one of the few coffee producers to trade mark what are, effectively, regional coffee varieties (e.g., Yirgacheffe) in the hope of increasing prices.   Ethiopia’s move to develop IP protection for its premium coffees sparked a pitched media battle between Oxfam and Starbucks in 2005, and big coffee (the National Coffee Association) filed a 300 page Letter of Protest claiming that the names were all generic.  The history – and outcomes – of this initiative likely have a bearing on any attempts by developing countries to trademark agricultural products in the West.

For more information:
http://www.lightyearsip.net
http://www.ethiopiancoffeenetwork.com
http://poorfarmer.blogspot.com

Shlomo Bachrach, a long time Ethiopia watcher and editor of East Africa Forum comments as follows:

“The surprising report that Ethiopia has suspended coffee exports — its primary source of export income — is easily misunderstood.  In part this is probably a case of irresponsible reporting and both contradicts what the government has been demanding from its coffee exporters and is almost certainly inaccurate.

Ethiopia is desperately short of hard currency. This is the consequence of many factors, including the worsening global economic decline, Ethiopia’s policy of deficit- financed budgets (which the IMF and others have been warning would worsen inflation, which has now declined to 32%, the government proudly announced this week), the inevitable need for foreign capital to finance infrastructure and other development, etc.

Ethiopian businesses are starved for foreign currency to finance imports of raw materials.  Coca Cola (an African-owned franchisee) has temporarily closed its bottling plant because it can’t pay for the syrup from the company. This is only a particularly visible impact of the hard currency shortage.

Prime Minister Meles, desperate for export revenue, has taken control of the coffee owned by exporters and held in the new Commodity Exchange warehouses.  He accused the owners of ‘hoarding’ the coffee in the hope that coffee prices, now far below last year’s prices (down from $1.60/lb+ to below $1.20), will rise.  They claim that they will lose money if they sell at current prices.  But Ethiopia is not suspending coffee exports.  It is suspending the freedom of the owners of the coffee to trade in their own coffee, and asserting the government’s right to do so on their behalf, for the good of the country. The exporters will get the proceeds, in local currency.  Whether the exporters lose money or not doesn’t matter.  The government wants the hard cash right now.

The issue is financial and political, not agricultural.  It is probably not a permanent move into coffee marketing.  But who knows?  It’s an ominous precedent, as any potential investor will tell you. Ethiopia needs a lot of investment in the coffee sector. The long term benefits are probably huge.  The benefit of this strong arm intervention will be short, the damage is likely to last longer.  If the government is capable of this, goes the obvious reasoning, what else might it do? This is the kind of action that is hard to undo.

In Seattle, home of Starbucks, where the press probably knows the coffee business better than most, a newspaper noted that Starbucks had recently announced that it had ‘postponed’ the creation of its promised Farmer Service Center in Ethiopia, intimating that the company might use this as an excuse to drop the plan altogether.  Starbucks has already invested in a bigger Farmer Service Center in Rwanda’s fast-growing coffee sector.

The coffee sector has reason to wonder what might come next.  Meles regularly defends the right of his government to manage and intervene in the economy in a form of  ‘state capitalism’.  He was an avowed socialist for many years, becoming a reluctant free marketer when his rebel movement took over the government in 1991 and he needed foreign assistance from the US and Europe.  (His socialist roots are not entirely without benefit: Ethiopia has spent heavily on health, education, infrastructure, etc., though it remains relatively underdeveloped because it started from such a low level.) The government controls key economic sectors like banking and internet/telecommunications.  Internet and cell phone service are, consequently, exceptionally poor in Ethiopia compared with its neighbors, who allow foreign investment and competition, and where service is cheaper, better, faster and more widely available.”

Post written by Peter Bloch, consultant to CAS-IP