Tag Archives: trademarks

Branding stories; WIPO new online brand-search tool and Coca Cola

WIPO have launched another new tool this month.  See “WIPO Launches New On-Line Tool to Facilitate Brand Searches“. From their press release:

“A new on-line tool launched by WIPO … will make it easier to search over 640,000 records relating to internationally protected trademarks, appellations of origin and armorial bearings, flags and other state emblems as well as the names, abbreviations and emblems of intergovernmental organizations. The Global Brand Database allows free of charge, simultaneous brand-related searches across multiple collections.”

Thanks to WIPO for another free resource.  It is part of WIPO Gold, a “free public resource which provides a one-stop gateway to WIPO’s global collections of searchable IP data”

And the Coca Cola reference?  Well, whilst on the subject of brands, I was reading the Intellectual Asset Management blog.  They posted an item: “The Coca-Cola brand suffers a sharp fall in value as Google hits number one

Love it or loathe it, no matter where in the world you are, the chances of finding Coca Cola are pretty high.  It was interesting to read therefore that

“for the first time [Coca Cola] finds itself outside the list of the world’s top 10 most valuable brands, according to the annual Brand Finance 500 study”

The article concludes:

“…although there is a lot more to brands than trademarks, it does means that if you are working in-house as a trademark operator, the job that you are doing is absolutely vital to the maintenance (as well as the creation, of course) of profoundly important assets. I am sure that this is not huge news to the trademark practitioners reading this blog, but I wonder how many other people appreciate it. My suspicion is that it is not as many as should be the case.”

Ethiopia’s GI Bill

Ethiopia is in the process of ratifying a Geographical Indication Bill to protect indigenous products.  According to Addis Fortune

“Among these location-branded products are Tigray and Masha white honey, Harar senga (bulls fattened to be butchered), Dendi garlic, Limu coffee, Assosa mangos, Ankober sunflowers, and Debre Brehan brandy.” 

 (Thanks to Shlomo Bachrach (http://www.eastafricaforum.net/) for the link) 

The article describes an ongoing project intended to identify products which might benefit from GI protected branding.  This looks like a good idea and might result in increased incomes for producers.  But the value of IP protection – whether a trademark or a GI – will eventually be determined by the ability of the owner to enforce the grant of rights. 

Corporate trademark owners such as Volkswagen, Levi Strauss and Starbucks invest in protecting their global brands by employing investigators to ferret out black market products and other infringements of their IP.  One of the best examples of a GI that is backed up by heavyweight enforcement is owned by Consorzio del Prosciutto di Parma (association of Parma Ham® producers, CPP).  In a well-known 2003 case, CPP successfully sued ASDA: 

“UK supermarket Asda has lost a battle to sell authentic Parma ham under the Parma brand, when the meat is sliced and pre-packed in Britain.” http://news.bbc.co.uk/1/hi/business/3043283.stm 

CPP has protected production methodology, origin, packaging AND how the ham is sliced! 

The CPP is a powerful producer group because its members sell large quantities of Parma Ham, generating sufficient revenues to protect the GI.  If indeed Ethiopian producers procure GIs for products such as Ankober sunflowers, will sales volume generate sufficient revenues to adequately police usage of the name?  Even well known global brands such as Kiwi (shoe polish) are not policed in Africa; although Kiwi polish is widely available, it is all counterfeit.  Presumably Sara Lee Corporation (which acquired a number of UK brands from Reckitt and Coleman) cannot justify the cost of enforcement in Africa. 

 The Ethiopian coffee trademarking program was well conceived and generated a high level of attention from the international press.  But there is still little evidence that this initiative resulted in any income gains for producers.  A number of NGOs provide IP training in developing countries, and it might be advisable for them to position IP as one tool of many in the market development toolbox.  Without sustainable marketing plans and enforcement programs, these IP-centric initiatives are unlikely to be successful. 

Post written by Peter Bloch, 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

POORFARMER; something’s brewing in Ethiopia

Since the CAS-IP blog was launched over a year ago, we have posted several items relating to both Ethiopian coffee branding and to Eleni Gebre-Madhin, sometime economist at IFPRI and now Chief Executive Officer at the Ethiopian Commodity Exchange (ECX), an entity that she founded.  Gebre-Madhin was the principal investigator on a comprehensive report published by IFPRI in 2003 on supply chains  – Getting Markets Right in Ethiopia: An Institutional and Legal Analysis of Grain and Coffee Marketing.

We had also referenced the imbroglio surrounding the Government of Ethiopia’s (GOE) move to trademark several of their coffee names; this was intended to firmly establish these varieties as premium coffees, license the use of the names and, over time, to establish distribution chains that would result in a higher return to impoverished producers.  This met with substantial opposition from the US coffee industry, and the National Coffee Association filed a 200 page letter of protest with the USPTO.  Oxfam, supporting the producers, initiated a media campaign to persuade Starbucks to support the GOE plan.  The outcome of this initiative is that the GOE now owns trademarks to Sidamo, Harrar/Harar and Yirgacheffe in the US and in other territories, in spite of objections that these names were generic and/or merely geographically descriptive when the applications were filed in 2005.

A part of our mission at CAS-IP is to help small-holder farmers in developing countries raise their incomes through increased productivity, value add and benefit sharing.  Lessons learned from the Ethiopian trade marking program might inform related projects and support our work with commodity producers in the South (see our market development project).  By way of disclosure, I was the co-founder of Light Years IP and, prior to joining CAS in 2007 acted as COO.  With funding from DfID, Light Years represented the GOE, and I managed the coffee trade-marking program  until 2006.

The latest development brings Ethiopian coffee and Gebre-Madhin together at the ECX Specialty Coffee Event.
The story can be read at:
http://af.reuters.com/article/investingNews/idAFJOE59K0I020091021?feedType=RSS&feedName=investingNews&rpc=401
I would like to thank Shlomo Bachrach and eastafricaforum.net for bringing this to my attention.

According to Reuters:

Ethiopia plans to move the trade in its specialty coffee to an Addis Ababa-based commodities exchange instead of the current channel of selling the beans at auctions overseas, a senior trade official said.
Eleni Gebre-Madhin, Chief Executive Officer at the Ethiopian Commodity Exchange (ECX) said up to 30 percent of the country’s produce is classified as specialty beans but that higher prices for the fine coffees were not trickling down to farmers.
“The initiative positions Ethiopia to have perhaps the only domestic marketing system in the world for discovering and trading specialty coffee at the arrival stage, thus benefiting the farmers who produce these coffees, rather than at the export end of the chain…..”

Wondwossen, an Ethiopian blogger (http://poorfarmer.blogspot.com) provides coverage of the Ethiopian coffee saga.  His three-part, in-depth report on recent events suggests that relationships between specialty coffee importers in the US (and Europe) and Ethiopian producers have been disrupted by the GOE’s move to channel sales of all coffee through ECX.  When I spoke to Wondwossen, however, he observed that “coops and large estates growing specialty coffee are allowed by the GOE to bypass ECX and sell directly to the ultimate buyers”.

It is difficult to determine whether Wondwossen’s analysis is accurate (although his past reporting has proven to be reliable), but the real questions remain:

• has the trade-mark program effected an increase in s/h farmer incomes?  Not so, according to Gebre-Madhin.  The trade-mark and licensing program would, however, likely not deliver results for several more years;
• will the channeling of all (or most) coffee export sales through ECX have a negative impact on the availability and/or sale of premium coffees in the West?

One informed observer suggested that the Government’s activities are destructive.

We know from studying the market for premium chocolate that direct buyer-seller relationships have been critical in helping producers to achieve a consistent high quality bean, and that this has helped certain estates to sell their output for double the commodity price.  We also know that Starbucks has developed relationships, many of which include grants, with producers with the intention of ensuring a consistent and high quality product.  But there is little if any evidence that high prices in the West for premium coffee or premium chocolate have had much impact on producer incomes.

By way of conclusion:  the Ethiopian coffee supply and distribution chains have been tinkered with, and producer-importer relations disrupted.  The outcomes are unclear, as is the impact of the trade-marking, branding and licensing programs.  Wondwossen is considering a more academic study (he is currently seeking an academic institution to sponsor this, and can be reached though his blog).

More information at:
http://www.bloomberg.com/apps/news?pid=20601116&sid=aAwrvMjuvdbc
http://www.lightyearsip.net/
http://www.ethiopiancoffeenetwork.com/

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.”

Strategies for brand protection in Africa. Trademarks, Service Marks and Domain Names.

http://afro-ip.blogspot.com/2008/12/african-trademark-strategies-read-all.html
The latest issue of the World Trademark Review  was entitled “African strategies and developments” – see the lead link for Afro-IP’s blog  posting.  They say:

“The article picks up significant issues in some nine African states, together with ARIPO. … the registration of service marks is not something you can take for granted, since there are still plenty of jurisdictions where such registration is not available.”

Additionally, the article picks up important points regarding domain names registration, cyber-squatting and subsequent enforcement issues in Africa – using several examples.  There is also mention of a new initiative in South Africa to grant extended protection to traditional knowledge.

Copyright and trademark issues – updates on the Hasbro & Scrabulous case

http://spicyipindia.blogspot.com/2008/10/fabulous-tale-of-scrabulous.html
I blogged this story when the legal battle was in progress.  SpicyIP recently blogged the outcome of the case http://spicyipindia.blogspot.com/2008/09/breaking-scrabulous-news-mattel-wins-on.html and more recently an update to the story (lead link).  In the update they provide some useful insights and analysis of the trademark and copyright arguments.  I personally found this case interesting as it seemed to highlight a clash of the new and old (the online vs. pre-online worlds).  Plus, at the time many commented on ways this case may have been avoided by Hasbro whilst benefiting from exploiting a new opportunity.  Finally, the whole story provides some interesting analysis and comment for those who like to chew the fat on copyrights and trademarks!