30 March 2018
In an event that captured the hearts and minds of 81 attendees on Saturday 24 March, a panel made up of 8 IP experts converged to present an engaging breakfast Symposium entitled “Evolving IP Issues in Brand Protection in the Digital Marketing Era” at Mayer Brown JSM’s offices. The panel comprised keynote speaker, Associate Professor, Dr Dev Gangjee, Visiting Fellow, DVC Oxford-HKU Visiting Fellowship, and DVC’s Winnie Tam SC (moderator of the 2nd Panel,) DVC’s Ling Chun Wai and Stephanie Wong, Mayer Brown JSM’s Partner and Co-Leader of Global Intellectual Property Practice, Gabriela Kennedy (moderator of the 1st Panel) and Counsel, Amita Haylock as well as Dr Haochen Sun, Associate Professor from the University of Hong Kong, and Head of Legal/General Counsel for L’Oreal Eugene Yap. The speakers quickly showed that they were more than the sum of their accomplishments when they unpacked a robust and illuminating presentation that was nuanced with real world examples of the positive and negative forces of digital marketing, the distinctions between SEO and SEM, Google AdWords and AdSense and this was supported with relevant case law.
Dr Gangjee opened with a map of the key digital marketing issues including: brand value addition, scope of protection, enforcement, hashtags and subsequently delved into the co-creation of brand image and values and demonstrated how hashtags had undergone a shakedown since the first ever trademark application was filed in 2010, given that they had experienced a 64% rise in one year. He concluded with an expertly crafted summary of enforcement as it related to freedom of expression defences, misappropriation and hijacking by competitors.
In an animated presentation, Dr Haochen Sun lifted the lid on the Shan Zhai phenomenon - a term which was originally coined to describe Chinese bandit/outlier companies. Today however, he explained, the term is used to describe manufacturers of fake or counterfeit goods who differentiate themselves from their competitors by incorporating an innovative twist. Essentially highly successful market disruptors with their own IP portfolios, Dr Sun showed the audience by way of various examples, how effectively these fast and flexible companies have carved out a niche in the Chinese market by offering consumers more choice at lower price points.
Ling Chun Wai discussed the Argos Ltd v Argos Systems Inc case, a trademark infringement and passing off dispute where the British retailer’s claim against the US defendant (for use of the sign ARGOS in its domain name www.argos.com and on its website) was dismissed for a host of reasons. Hot on the heels of the bellwether Interflora v Marks & Spencer case, CW examined the Argos case in the context of Google keyword advertising, the sufficiency test, and consent and targeting issues.
Gabriela Kennedy deftly moderated the 1st panel and concluded the day’s first session with a memorable video from the personal care brand Dove which portrayed how the brand was changing the landscape by partnering with other brands to ‘hack the industry from the inside’ in a bid to change the way advertising depicts women. Gabriela made the point that not only was Dove using digital media to empower women but it was one of the rare examples of a big corporation stepping outside of its comfort zone to collaborate with other companies/brand agencies to further a cause through digital marketing. To see the Dove video click here: https://www.youtube.com/watch?v=Bjrio1AUlKE
After a lively networking session, Winnie Tam SC expertly steered the 2nd panel and paved the way for presentations from Stephanie Wong, Amita Haylock and Eugene Yap. Stephanie examined the benefits and challenges associated with social media by breaking down various components of Google Analytics, and explaining how this was being used increasingly as evidence in IP litigation. She also peeled back the layers on two landmark judgements including the Google v Louis Vuitton and Interflora cases, and left the audience with actionable takeaways.
Amita Haylock cited various examples of how social media can help vs how it can harm and also referred to website cloning, that is the copying or modifying of an existing website to steal personal information to generate additional advertising income.
Eugene Yap wrapped up the day with a talk on grey goods, that is the selling of goods through unauthorised distribution channels and the innovative campaigns designed to try and extend the reach of a product through digital marketing.
A round of astute questions from the audience followed in an interactive Q&A session. This included topics ranging from artificial intelligence to Brexit to comparable case law in the US, which made for an edifying exchange between the audience and the panellists. The event was held with the support of Hong Kong University and with thanks to Mayer Brown JSM for their venue and a delicious breakfast.
Click on the links below to view the speaker's presentations: