Every Tuesday and Friday, World Trademark Review presents a round-up of news, developments and insights from across the trademark sphere. In our latest edition, we look at Velcro Companies releasing a new music video, a law professor fighting to keep Rapunzel trademark public, the Germany whisky that may sound too Scottish, a warning about counterfeit electrical products, and a study that finds the vast majority of consumers want brands to speak up about political and social issues. Coverage this time from Trevor Little (TL), Tim Lince (TJL), Adam Houldsworth (AH) and Timothy Au (TA).

Legal radar:

Law professor fights to keep Rapunzel trademark public – It has been reported by the Boston Globe that a California-based company’s attempt to register the trademark for fairytale character Rapunzel is being challenged by a group of law professors and students from Suffolk University, Massachusetts. The applicant, United Trademark Holdings, a toy manufacturer, produces and sells various lines of dolls, toys and merchandise around characters from children’s stories, including a zombie series with characters such as ‘Zombie Pinocchio’ and ‘Zombie Cinderella’. The company made its Rapunzel filing in November last year after Mattel’s trademark on the character’s name expired. However, after discovering the application, IP law professor Rebecca Curtin – along with another professor at the university and third-year law students – filed an opposition with the USPTO, stating: “No company should ever be able to be the only company that can call their doll Rapunzel, because Rapunzel is already in the public domain. Rapunzel already belongs to everyone.” United’s lawyer, Erik Pelton, says that the complaint should be dismissed since Curtin is “not a competitor or someone in the industry”. He adds: “I don’t believe the law allows a law professor or her students to challenge the validity of [the application] as a part of their academics.” So far, only Curtin has opposed the filing – Mattel and Disney have yet to get directly involved. But, Disney has requested an extension with the USPTO for time to submit an opposition. (TA)

Ambush marketing warning: be careful around flags as well as FIFA – With the World Cup kicking off in Russia next week, a number of firms have been quick to remind companies of the rules around ambush marketing. On Lexology, MME Legal Tax Compliance warns that brands need to walk a careful line between prohibited parasite marketing (which “Includes, for example, the unauthorised use of the event's trademarks or creating the impression of being an official sponsor) and permitted ‘smart’ marketing. However, with regards the latter Fara Sunderji, partner at Dorsey & Whitney, notes that it is not only tournament-related legislation that companies need to pay attention to:“FIFA encourages the use of general football or country-related promotions, but marketers still need to consider other issues including rights of publicity, potential copyright issues and commercial use prohibitions related to flags. There is a seldom (if ever) enforced section of the US code that prohibits the use of the US flag for advertising purposes. It also states that the flag “should not be embroidered on such articles as cushions or handkerchiefs and the like, printed or otherwise impressed on paper napkins or boxes or anything that is designed for temporary use and discard. Advertising signs should not be fastened to a staff or halyard from which the flag is flown.”  (TL)

German whisky may sound too Scottish, says CJEU – The European Union’s highest court has asked a German court reconsider its ruling on whether German whisky brand Glen Buchenbach is confusing consumers into thinking they are buying Scotch Whisky, it has been reported. The case resulted from a challenge by the Scotch Whisky Association (SWA), which seeks to uphold its product’s Geographical Indication rights around the world. It argued that, despite each bottle of Michael Klotz’s Glen Buchenbach whisky being labelled ‘made in Germany’, the use of the word ‘Glen’ on the product is deliberately misleading to consumers. A court in Hamburg initially dismissed the SWA’s arguments, ruling that, because ‘Glen’ is also used in the names of whiskys from Ireland and Canada, it was not solely associated with Scottishness. The CJEU, however, has dismissed the German distiller’s argument that including information about the whisky’s origin is a defence against Geographical Indication infringement, and asked the German court to look again at the issue and determine whether “the average European consumer” would confuse the product for a Scotch Whisky. (AH)

Market radar:

China announces IP protection success at Beijing event – Earlier this week a forum was held in Beijing to evaluate China’s performance in IP rights protection since 2008, when the country implemented a new overarching IP strategy. Shen Changyu, head of China’s State Intellectual Property Office, announced that the country has achieved remarkable results since that time. Among the many statistics listed, it was highlighted that China now has three specialised IP courts, 19 IP protection centres, and has continued to strengthen its patent, trademark and copyright laws. While application levels have risen across the board, so too have the number of infringement and counterfeiting cases: in the past five years, there were 192,000 patent infringement cases and 173,000 cases of trademark infringement and counterfeiting. Although filing volume and caseloads have increased, the country’s IP system has also managed to cut down on processing times. It was emphasised that patent infringement processing times have been cut from over three months to one month; the authorisation cycle for invention patents has been reduced from 22 months to three months; and trademark registrations have decreased from nine months to eight months. Finally, it was stated that almost 80% of Chinese universities have established full-time or part-time IP management institutions and over 60% now have IP-related interest distribution systems in place. (TA)

Not enough being done to curb electrical counterfeits, suggests UK charity – UK charity Electrical Safety First has undertaken a study which suggests that one in three UK residents has mistakenly purchased a counterfeit product online, with the proportion being higher among millenials. Safety testing purchases from three ecommerce platforms (eBay, Amazon, Fruugo) the charity also found a number of dangerous electrical items, including kettles, tumble dryers, travel adaptors and hair straighteners. As such, it has been reported, it has called on online platforms to better protect their consumers from fakes and dangerous products. “In the age of artificial intelligence and strict online regulations, it’s reasonable to expect these websites to have the skills and technology required to weed out the dodgy sellers,” said Jenna Haldane, who works for the charity. The latest study comes just six months after an Electrical Safety First revealed than more than 50% of the fake Apple chargers sold on the internet posed risk of causing a fire or delivering a lethal electric shock. (AH)

Brands should get political, research finds – We’ve written before about the significant risks associated with brands taking political stands, and the proactive steps that trademark practitioners can take. Despite the risks, there are opportunities to be had too – and research confirms that consumers are clamouring for more socially and politically engaged brands. A study by Sprout Social asked over 1,000 US consumers about how they want brands to react to the big issues of the day. As Forbes describes, “consumers want you in the game”, with 66% of respondents saying they want brands “to engage in social and political issues, with a majority citing social media as the best channel for it” – with that number climbing to 73% for consumers aged between 18-34, and still high (62%) for consumers 55 and older. However, while they are eager for brands to engage, the research finds that they don’t expect brands to change their minds, with two-thirds claiming “brand posts rarely or never shift their views based on brand messages.”. Rather than shifting views, then, the research found that consumers want brands to “motivate change” by providing them with avenues to engage and contribute towards the big issues. The data is clear – more brands should seriously consider getting political. The key, especially for those in the brand and trademark team, is to have guidelines in place to be prepared for the risks associated with speaking up. (TJL)

Media watch:

Don’t be a muppet? – Over on Abovethelaw.com, Krista L Cox has asked the question: “When will people learn that censorship attempts only draw more attention to the issue?” The question was sparked by the lawsuit lodged by Sesame Workshop against the film Happytime Murders, which is a mystery set amongst the lives of muppets when they are not being filmed. Sesame Workshops objected to a trailer released by filmmaker STX Films, which they noted features “explicit, profane, drug-using, misogynistic, violent, copulating, and even ejaculating puppets, along with the tagline “NO SESAME. ALL STREET” – and arguing that this deliberately confuses consumers into believing it is associated with, or endorsed by, Sesame Street. What caught Cox’s eye was not just the dispute itself but the response from STX, which posted response from Fred Esq, a muppet lawyer. Considering the humorous response, Cox notes that her interest in a movie she would not otherwise have been keen to watch has been piqued, and contends:  “In initiating the lawsuit in the first place, Sesame only drew more attention to the movie”. (TL)

Velcro sings again – Last year, Velcro Companies famously released a song urging viewers not to use the Velcro brand name but rather the term 'hook-and-loop'. The song was big, bold and brash, and it ended up going viral with over 300,000 views in the first few days and widespread media coverage. We wrote about the positive feedback the video had received, with Morrison Lee founding partner Ryan Morrison labelling it "the greatest trademark lesson I've ever seen”, while legal scholar Rebecca Tushnet called it “possibly the best attempt to create an alt generic term ever". Fast forward a few months, and Velcro Companies has returned with a second musical video. "Thank You For Your Feedback - Don't Say Velcro" quotes comments from the original video, and includes familiar faces and colourful language. To date, this second video has not caught on like the first video (it currently stands at 3,600 views while the original now has over 550,000). So time will tell whether it eventually catches on, but for trademark nerds, it's certainly a fun watch. (TJL)

US eyes IANA clawback – While the dust is still settling on ICANN’s efforts to ensure that WHOIS is compatible with the European Union’s General Data Protection Regulation (GDPR), the IANA stewardship is back in the news after the National Telecommunications and Information Administration posted a surprise notice of enquiry asking: “Should the IANA Stewardship Transition be unwound? If yes, why and how? If not, why not?” The motivations behind the question remain a mystery. Over on Domain Incite, Kevin Murphy ponders whether the question was posed in the wake of GDPR, the US having opposed WHOIS going dark. If so, he warns that the reversing the IANA transition would likely not empower the US to also reverse WHOIS policy, arguing: “GDPR is not ICANN policy, after all. It’s a European Union law that applies to all companies doing business in Europe. Even if the US were to fully nationalize ICANN tomorrow and rewrite Whois policy to mandate the death penalty for any contracted party that refused to openly publish full Whois records, that would not make GDPR go away, it would probably just kick off a privacy trade war or mean that all US contracted parties would have to stop doing business in Europe.” (TL)

Friday catch-up:

Every Friday in our news round-up we will provide a quick rundown of the news, analysis and intelligence posted on World Trademark Review that week. Over the past week we:

  • Examined a new report which scores 84 economies on the extent that they enable or prevent illicit trade. As we noted, the study contains useful insights on the anti-counterfeiting landscape.
  • Reported on the new IP Law coming into force in Laos this weekend. The law introduces trademark opposition procedures to the country, as well as expanding the range of images eligible for trademark protection.
  • Explored the key takeaways from the EU Intellectual Property Office’s ‘synthesis’ report, which offers a comprehensive and updated picture of the scope and impact of IP rights infringement in the EU.
  • Spoke to a trade association representative who warned that – when considering the Trump administration’s recent steel and aluminium tariffs on the European Union – targeting trade allies rather than partnering with them “weakens” the ongoing battle against the scourge of fake goods.
  • Took a deep data dive into Japan’s brand landscape, highlighting the country’s unusual distribution of applications by trademark class, analysing the volatile values of the leading Japanese brands, and much more.
  • Published insight from The Scotch Whisky Association’s director of legal affairs, who pulls back the curtain to reveal how the industry protects its heritage.
  • Presented analysis on the treatment of IP in the video game environment

And finally…

Free-to-view anti-counterfeiting guide now available – The 2018 edition of Anti-counterfeiting – A Global Guide, which provides trademark and brand protection professionals with critical guidance on anti-counterfeiting laws, procedures and strategies in key jurisdictions around the world, is now available to view online. This indispensable publication analyses the anti-counterfeiting frameworks in place in 21 jurisdictions, with two regional chapters identifying wider trends and best practices in the European Union and the Western Balkans. In addition, an industry insight section offers guidance on the creation of global anti-counterfeiting programmes, analysis of the liability of physical intermediaries and an exploration of best practice in working with online platform operators. There is also tailored strategic advice for those operating in the fashion and luxury sector. You can access the guide here. (TL)

Adam Houldsworth

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