Never Too Late: If you missed The IPKat last week

Did you miss the last week of IPKat and are you now feeling lost? Never fear, Never Too Late 104 is here. 

* e-Sport in the French Digital Republic Bill

Katfriend Jean-Sébastien Mariez introduces the new draft regulation on e-Sport adopted by the French Parliament. 

* Aspartame is back--and is Pepsi playing by a new branding playbook?

Neil Wilkof explains how brands like Pepsi walk the tightrope line between descriptive and distinctive marks in branding.

* The USPTO Moves to Clear "Trademark Deadwood"

New rules from the USPTO will require additional documentation to show that a mark is in fact in use. Mike Mireles explains the significance of the proposed changes and implications for the US.

* BREAKING: Court of Appeal of England and Wales confirms availability of blocking injunctions in online trade mark cases

The Court of Appeal upheld  the decision of Arnold J, confirming that blocking injunctions are available against intermediaries in trade mark cases. This case will be discussed at our rapid response event on 28 July with Simmons & Simmons.

* An opportunity for IP scholars seeking future careers

The Tilburg Institute for Law, Technology, and Society (TILS) invites IP scholars to apply for MSCA (Marie Skłodowska-Curie Actions) individual fellowships - the deadline is 14 September.

* BREAKING: CJEU says that operators of physical marketplaces may be forced to stop trade mark infringements of market-traders

The CJEU in Tommy Hilfiger Licensing v Delta considered that an operator providing a service to third parties relating to the letting or subletting of pitches in a marketplace must be classified as an ‘intermediary’ and can be required to prevent infringements, as Eleonora Rosati explains.

* Book Review: The law and practice of trademark transactions - A global and local outlook

This book has done well to cover a range of practical topics, writes Emma Perot - the sections dedicated to trade mark transactions in Europe being particularly topical currently.

* "Own Name" defence in Singapore--when "honest practices" does the heavy lifting

Katfriend Aaron Thng reports a recent case in Singapore which accepted that the "own name" defence is available to a corporation, contrary to the position in the EU (although the defence was not successful).

* Cartier rapid response event on 28 July: come join us!

Join us for a rapid response event to the Cartier decision upholding the validity of blocking injunctions against ISPs. You can register here.

* AG Wathelet advises CJEU to hold French law on out-of-print books incompatible with EU law

Amendments to the French IP code allowing collecting societies to authorise the digital exploitation of out-of-print books are not compatible with the Info Soc Directive, according to AG Wathelet's Opinion.

* MACCOFFEE? We're not lovin' it, says General Court

The CJEU upholds a decision to cancel a 'MACCOFFEE' trade mark on the basis that it was highly likely to be riding on the coat tails of McDonald's' marks. Nick Smallwood brings us this case.

PREVIOUSLY ON NEVER TOO LATE

http://pinkberrylicious.blogspot.com /2016/07/never-too-late-if-you-missed-ipkat-last.html" target="_blank">Never too late 103 [week ending on Sunday 3 July] Publicity Rights v First Amendment | EU Trade marks Article 28 Declarations | Non-EU UK in the UPC? | Book review: IP Strategy, Valuation and Damages | Brexit and Copyright | In memoriam of David Goldring | Openness, innovation and patents

Never too late 102 [week ending on Sunday 26 June]  | Neighbouring rights for publishers | US Supreme Court makes it easier to obtain patent enhanced damages | US Supreme Court in Halo and Kirtsaeng makes IP victory sweeter for successful parties | Enlarged Board publishes decision: EPO President violated judicial independence | Dear Europe... UK leaves the EU | Dear UK... 

http://pinkberrylicious.blogspot.com /2016/06/never-too-late-if-you-missed-ipkat-last_21.html" target="_blank">Never too late 101 [week ending on Sunday 19 June] Procedure to remove EPO Board Member ends abruptly | Trade mark "bully" | EU Trade Secrets Directive | Cannibalism, Branding and Market Segmentation | A-G Szpunar declares Rubik's Cube shape mark invalid | Apple and the podcast industry | IP Inclusive | Coke defends opposition to 'ZERO' marks

Never too late 100 [week ending on Sunday 12 June] 5G wireless technology | European Commission Update: Revised SPC tender now open | CJEU considers implemetation of the private copying exception | CJEU gives guidance for communication to the public cases |  Google's fair use defence succeeds against Oracle | The state of patent valuation | EPO's plans to restrict post-service employment | Tuesday tiddlywinks (pirates and cake)| Is obscurity a greater threat than piracy? | Justice Slade delivers judgement in Arthur J Gallagher Services v Skriptchenko 

Aspartame is back--and is Pepsi playing by a new branding playbook?

As trademark attorneys, we have an ambivalent relationship regarding generic terms. On the one hand, we are trained to warn our clients against

such marks because they fail the basic function of a trademark, namely as a source identifier of a good or service. However, because most clients for marketing purposes prefer a mark that bears some connection to the goods or services, we are called upon to seek registration of marks that are, if not generic, arguably descriptive. After all, from the client’s perspective, what can be better than registering a mark that straddles the descriptive/non-descriptive divide, thereby providing the trademark owner with an asset that has the potential to exclude others from using similarly descriptive terms. Guest Kat Emma Perot recently discussed an example of this, namely the dispute between Coca-Cola and RC Cola before the USPTO over the registrability of the world “ZERO” in various combinations. Seen from this perspective, trademark strategy is about how to game this descriptive/non-descriptive divide for the client’s benefit.

Nevertheless, it turns out that trademark strategy may sometimes be better viewed as the use of generic (or nearly so) terms without any apparent interest in whether or not they meet the requirements for registration. Case in point is the announcement last week by PepsiCo, as reported here, regarding changes to its soft drink line-up and the names assigned to these products. At the heart of these moves by Pepsi is the presence or absence of the artificial sweetener, aspartame. While used for a long time, aspartame has been challenged on various health grounds, so much so that in 2015 Pepsi removed it from the formulation for its Diet Pepsi soft drink product, in favor of sucralose. Pepsi thereby hoped to capture customers who are wary for health reasons of products containing aspartame. The problem is that the removal of aspartame from the Diet Pepsi soft drink did not blunt the continuing decline in sales. The solution—bring back the diet version with the aspartame ingredient.

But how to signal to customers of this change (set for September 2016)? The answer seems to be, not by adopting a mark that meets the traditional function of signaling the source of the product, but rather by adopting a wholly and unabashedly descriptive addition to Diet Pepsi-- “Diet Pepsi Classic Sweetener Blend.” It seems that Diet Pepsi (i.e., the non-aspartame diet drink version) will continue to be called Diet Pepsi. Moreover, the Pepsi soft drink product known as Pepsi MAX will have its name changed to “Pepsi Zero Sugar” and it will retain aspartame as an ingredient. Unlike the ambiguity regarding the ZERO mark on this point, in the case of Pepsi, there should not be any doubt about the nature of this product—it contains no sugar and presumably, no calories.

So what do we make of this? The official line from Pepsi, as reported, takes the position that –

“[c]ustomers want choice in diet colas, so we’re refreshing our U.S. lineup to provide three options that meet differing needs and taste preferences.”

But in so doing, Pepsi seems to be creating a new play book on soft drink branding. Brands are typically about creating short-hand ways of bonding the customer with the product via a mark. Consumers are not really accustomed to bonding to a name, the key part of which is a highly descriptive phrase such as “classic sweetener blend” or “zero sugar” (even if such product name also contains the word Pepsi). Somehow, this Kat thinks that advertisements for these new product names will fall flat on their face. After all, I just want to be able to continue to buy my Pepsi MAX. I’m sorry, I meant Pepsi Zero Sugar. Ugh.

Lest Kat readers think that this Kat is being a curmudgeon about all of this, he is not alone. Consider the words of blogger Bob James, who writes about these proposed changes as follows—

“Personally, I think all the changes in product names are part of the problem. We’re creatures of habit. We grab what we know is our favorite and we’re always in a hurry. So, when I look at a product on the shelves and don’t automatically know what it is, I’m not going to take time to study or buy it.”

Pepsi better hope that Mr. James is wrong.