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 a call to boycott a Hawaiian food chain over trademark enforcement, YouTube star PewDiePie hits back over "fake" sponsored video accusation, an analysis of cutting-edge technologies being developed in the fight against counterfeit food, the name for Patrick Stewart’s Star Trek TV series may have been revealed in a trademark application, and much more.Coverage this time from Trevor Little (TL), Tim Lince (TJL), Adam Houldsworth (AH) and Timothy Au (TA).

Market radar:

New Star Trek series name “revealed” in trademark application – According to the popular Trademark Ninja blog, the name of Patrick Stewart’s new Star Trek series may have been revealed in a recent trademark application. TV network CBS filed a STAR TREK RELIANT trademark application on the same day that Patrick Stewart announced he was reprising his role as Jean-Luc Picard. The mark is filed in class 41 for services including “a continuing multimedia series featuring drama”. “Suspicious much?” the blog asked, while predicting that CBS will respond by claiming they “regularly file trademarks for all manner of things”. But relatively few Star Trek-related marks are filed by CBS, the blog points out, and all marks in recent years appear to have been used for products, TV shows, games and/or movies. If true, and Star Trek: Reliant is the name of Patrick Stewart’s upcoming series, then spare a thought for Newfoundland resident Darren Hann, who released an unofficial web series in 2012 called Star Trek: Reliant. Each episode of the fan-made show features a clear disclaimer, including a “thank you” to Paramount Pictures and Gene Roddenberry (creator of the original Star Trek series) for allowing the fan-made series to be made. But if an official show is released with that name, could an IP dispute arise? (TJL)

Five arrested in $70 million Air Jordan counterfeiting scheme – Five individuals from New York have been arrested following the discovery by US Immigration and Customs Enforcement (ICE) of a wide-scale counterfeiting scheme involving the importation of over $70 million worth of fake Nike Air Jordan sneakers. The imitation sneakers were shipped in from China to the US, where logos were then added. They were subsequently stored in storage units and warehouses in New York City and elsewhere. According to ICE, the five individuals imported nearly half a million pairs of knock-off Nike sneakers in total and sold them on to US buyers. Each offender faces up to 20 years in prison. (TA)

Calls for boycott over Aloha Poke trademark – The Hawaiian fusion food chain Aloha Poke Co has been criticised severely for sending cease and desist letters to small businesses seeking to prevent them from using the words “Aloha” and “Aloha Poke”. “Aloha” is a greeting in the Hawaiian language and “Poke” is a distinctive Hawaiian style of cuisine. Attempts to claim a commercial monopoly on these terms has provoked an angry backlash from many native Hawaiians, it has been reported. Kalama O Ka Aina Niheu, a Native Hawaiian activist, for example, is seeking to start a boycott against the Illinois-based company. He said: “We’re not opposed to fusion foods, we’re not opposed to bringing things into the new century. But what we are opposed to is rampant exploitation and harassment, really, of our people.” The concept of Aloha had been commercialised and downgraded for many years, he added. An online petition is even calling on Aloha Poke to stop using the words “Aloha” and “Poke”, which it claims belong to the Hawaiian people as a whole. It has acquired more than 160,000 signatures so far, and protests against the chain are expected in Chicago. (AH)

Pressure builds on South African government to abandon plain packaging bill – We previously reported on South Africa’s proposed new tobacco control bill, which would include the implementation of plain packaging for tobacco products. The National African Federated Chamber of Commerce and Industry (NAFCOC) is now the latest organisation to join calls for the proposed legislation to be scrapped. A number of lobby groups, businesses and organisations have expressed concerns that the bill would damage the economy and lead to job losses. NAFCOC, too, believes the bill may hurt the economy by reducing free and fair competition. Agricultural industry body Agri SA has gone as far as claiming that up to 8,000 jobs of commercial and emerging tobacco farmers are under threat. The Control of Tobacco Products and Electronic Delivery Systems Bill seeks to change the way tobacco products and e-cigarettes are marketed and regulated and would include a requirement for graphic health warnings to feature on at least 30% of the packaging of tobacco products. (TA)

Legal radar:

Nintendo targets couple in multi-million dollar trademark suit – It has been reported that Nintendo of America filed suit against Mathias Designs LLC and its owner Jacob Mathias last month for the violation of its trademarks and copyrights. After initiating the suit, it subsequently added Mathias’s wife as a party to the complaint as well. It is alleged that Mathias is the owner of two websites which together hosted thousands of video games for past Nintendo systems. The complaint also claimed that the defendants violated other copyrights of Nintendo works, including music. Nintendo of America is seeking a permanent injunction for all infringing activity and statutory damages of up to $150,000 for each infringed copyrighted work and up to $2,000,000 for each infringed trademark. The case is currently pending in the US District Court of Arizona, but the message sent by the company appears to have already hit its mark: another website hosting a number of Nintendo games online, Emu Paradise, has since removed all of its content, stating that it was not worth the “potentially disastrous consequences”. (TA)

Mexico trademark amendments come into effect – Significant changes to Mexico’s IP law came into force this week which could have an effect on trademark strategies. One of the major amendments include the introduction of non-traditional marks that can now be registered, including audio, scent and holograms. There is also the option to register certification marks, while acquired distinctiveness (secondary meaning) will now be recognised as an exception to the absolute grounds for refusal. Another big change is that mark owners will have to make a declaration of use under oath, which must be filed within “the three months following the third anniversary of the registration date”. For more details about the amendments, including more of the amendments that could impact rights holders, you can read World Trademark Review’s legal update from last month. (TJL)

Controversial T-ARA trademark rejected by KIPO – Music company MBK Entertainment’s trademark application for the term T-ARA, the name of a popular K-pop group that left the label last December, has been rejected by the Korean Intellectual Property Office (KIPO). Back in January, we reported on controversy around the trademark, with members of T-ara commenting that they “hope that all of this will be resolved in a satisfactory manner”, while fans accused MBK Entertainment of “blatant pettiness” and being "money hungry". For its part, the music agency released a statement saying it is “justified in applying for this trademark as the [former] agency of the group”. Fast forward to now, and the KIPO has denied the T-ARA trademark after members of T-ara filed documentation outlining grounds for rejection. According to Soompi, MBK Entertainment responded to the refusal by stating: “It is true that our trademark application for the name ‘T-ara’ was denied. However, we have a total of four opportunities to file an application, meaning we have three more chances to plead our case. We plan to submit another application after strengthening our case with more referential documents.” It appears, then, that this bitter legal dispute will continue. (TJL)

Media watch:

Cutting-edge anti-food fraud technologies – The Financial Review recently published a blog overviewing some of the key technologies being developed in the fight against counterfeit food and beverage products. Food fraud, it points out, is a major problem for high-quality brands, with over 50% of Australian wine marketed in Asia thought to be fake. Three main technologies – each with its own strengths and weaknesses – are increasingly being used to help tackle this phenomenon. Digital blockchain, the blog explains, is being used to track packaging along complicated supply chains, thereby creating greater accountability and monitorability in the food and beverage market. However, this technology is less useful if counterfeiters are able to replace the products within the packaging. Biomarkers, the unique DNA, proteins and chemicals of produce, can also be used to determine the provenance and authenticity of food and beverages with great accuracy. This too has its drawbacks, though, with the necessity of laboratory testing making the process time-consuming. But the development of biomarker field tests is a promising trend for brand holders, the article argues. External tracers and edible inks are the third type of technology increasingly being used in the fight against food fraud. These are designed to allow produce – rather than packaging – to be tracked along supply chains. But at present, the blog laments, fraudulent tracers are relatively easy to apply. In the future, it concludes, we can expect to see combinations of these technologies used to ensure better protection for consumers and brands against fake or substandard produce. (AH)

YouTube star hits back over “fake” sponsored video accusation – Popular YouTube creator PewDiePie, who has over 65 millions subscribers on the video platform, has hit back over claims that he has “fake” sponsored videos. A recent article by Digiday highlights a year-old video from PewDiePie titled “SPONSORED BY VOLVO” in which he records himself playing a video game (including a moment when he finds a car and jokingly refers to it as a ‘Volvo’). Digiday contacted Volvo to see if the video was actually sponsored by the company, and a spokesperson confirmed it was not. The article also quotes an expert claiming that “some micro-influencers will literally lie about sponsorships to be more attractive to brands”, and notes past controversies involving PewDiePie (including videos which featured Nazi imagery) that led to brands, including Disney, severing ties with the content creator. However, in his latest video, PewDiePie hits back at the article, claiming it is clear the ‘Sponsored by Volvo’ video title was not serious. “They’re not associated [with the video], it’s a joke – I’m driving around killing people with a car. It’s a joke, why do I have to spell it out?” he asked. “It’s pretty clear that [Digiday] are not that stupid, nobody is that dumb. They're pretending to be dumb just so they can ask brands whether it’s true. They’re implying that this isn’t just a joke, that this was me trying to get brands to pay me money and tricking people into thinking this video was actually sponsored by Volvo.” Indeed, he acknowledged his past controversies, but argued that some brands play it too safe when seeking partnership with online influencers. “There’s a disconnect between the corporate world and the culture on the internet, and there’s a disconnect between what my brand is and how a lot of bigger corporations perceive it,” he said “Yes, I am a controversial figure, I don’t care about working with you if you don’t know who I am. This article is a way to hurt me even more. [...] I agree, if you’re a company and you’re not aware of who I am, you shouldn’t be working with me either. I want to have genuine, good relationships with brands.” We’ve written before about the “risk for brands” when working with YouTubers, with one expert saying “marketers should calculate a certain amount of brand risk into every YouTube buy and realise that when you give a young person with an inflated ego a camera, they are apt to do or say something stupid”. But there’s also a risk for brands to play it too safe, as the most popular, well-respected channels on YouTube are often those with sometimes controversial content (eg, PewDiePie, H3H3 Productions, iDubbbzTV). Obviously weighing up the risks and benefits will always be important for brands; there’s a fine-line between edgy subversive content and maliciously offensive content. On the flip-side, ‘advertiser-friendly' content creators may be safe bets for brands but they are often not well-respected or trusted. Taking the plunge and working with more risky content creators has proven successful for some brands – eg, Amazon’s Audible, Dollar Shave Club, Harry’s Razors, Leesa Matress, and Squarespace have been sponsoring edgy comedy podcasts and YouTube channels for years – but it appears that, for now, most brands and marketers would rather play it safe. (TJL)

And finally…

Get to know the corporate trademark world’s leading lights – World Trademark Review has published the enhanced version of the 2018 WTR 300: The World’s Leading Corporate Trademark Professionals list. This community-led research project identifies the individuals deemed to be the leading lights of the corporate trademark world, and now features profiles of many of the industry’s leading trailblazers. Click here to access the enhanced version. (TL)

Adam Houldsworth

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