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 Chinese regulators launching an investigation into e-commerce platform Pinduoduo, how tomato DNA is being used to combat dangerous counterfeits, an IP workshop in Kashmir, the Vega+ games console losing branding rights, members of new WHOIS working group revealed, and much more. Coverage this time from Trevor Little (TL), Tim Lince (TJL), Adam Houldsworth (AH) and Timothy Au (TA).

Market radar:

Counterfeiters continue to target Kickstarter projectsBuzzFeed News reported this week on a Kickstarter campaign for FinalStrawn, “the world’s first collapsible, reusable straw”. The campaign raised nearly $2 million last April, with nearly 86,000 straws ordered in total. But as the organisers fought to keep up with demand, it was discovered that “cheap knockoffs” were being sold on Alibaba, Amazon and eBay. “If you go to these websites and type in ‘FinalStraw’ or ‘collapse straw’, they are hard to miss,” said FinalStraw co-founder Emma Cohen. “It’s my face. I am advertising these knockoff straws. People are just genuinely confused. Some are angry and upset.” We’ve written before about how Kickstarter is often a platform that counterfeiters go to for ideas on new products to copy. Or, as one expert said at the time, it is a haven for fakers: “It is time to recognise that Kickstarter could be seen as a treasure trove of product designs for would-be counterfeiters and copycats around the world.” Two years on, and it appears little has changed in that regard. (TJL)

Chinese regulators investigate Pinduoduo over counterfeit sales – Pinduoduo, a Chinese e-commerce platform for discounted goods, is being investigated by the country’s State Administration for Market Regulation following allegations that the site is involved in the sale of counterfeit goods. The Shanghai Municipal Administration of Industry and Commerce has been asked by the State Administration to interview those who operate the site, it has been reported. Pinduoduo – which recently debuted on the Nasdaq – has been the subject of at least one IP infringement lawsuit in recent months, coming to blows with diaper brand Daddy’s Choice; and several other companies have raised concerns about activities on the platform. But, hosting 1.7 million merchants and counting, it faces a difficult task to prevent IP-infringing goods being sold on its site; it took down 11 million suspicious listings and blocked 40 million external links in 2017 alone, according to Techcrunch’s 2017 consumer rights protection report. (AH)

Crowdfunded games console Vega+ loses brand rights – Retro Computers Ltd (RCL), the company behind a crowdfunding campaign for a retro handheld games console named Vega+, has lost the right to use and feature a number of brands and games it had promised fans, according to the BBC. Having established a working relationship with RCL, broadcasting company Sky had allowed the company to use the ZX Spectrum and Sinclair brands without charging royalty payments. But, due to RCL’s repeated failures to meet delivery deadlines and the “consistently substandard build quality of the units tested”, Sky has since decided to withhold use of both trademarks as well as a number of Spectrum games that were meant to come pre-installed on the console. A Sky spokesperson claims that RCL had breached the terms of its licence, even after having three additional months to deliver its products. The campaign managed to raise more than £500,000 in total and backers were originally told that the first deliveries would be made in 2016, but the first units were only shipped last week. While 1,000 licensed games were meant to be included, those that have begun receiving the consoles report that only 19 games appear to be on the system. (TA)

Tomato DNA used to combat breast implant counterfeits – An article in Phy.org took a look at an innovation to combat a particularly dangerous form of counterfeiting. Back in 2010, news broke that a French company was selling breast implants made of “cheap industrial silicone components”. That scandal is still ongoing today. To avoid repeating such a situation, which led to 30,000 women having to remove defective breast implants, a team of researchers at the Fraunhofer Institute for Applied Polymer Research IAP have come up with a method to identify such dangerous fake implants. Curiously, the solution involves DNA that is derived from tomatoes. “We isolated genomic DNA (gDNA) from tomato leaves and embedded it in the silicone matrix.,” said researcher Dr. Joachim Storsberg. “This works much like a paternity test. The advantage of tomato DNA is that it costs next to nothing and is suitable as a counterfeit-proof marker for many polymer-based implants such lens implants.” (TJL)

IP workshop held in Kashmir – Wednesday saw the end of a three-day workshop on intellectual property in Kashmir, aimed at creating an awareness of IP rights and the role they can play in fostering innovation. Organised by the Jammu and Kashmir Entrepreneurship Development Institute, the event included technical sessions on how to register IP rights, on the government initiatives designed to help innovators, and the ways in which intellectual property can be used as a part of a business strategy. (AH)

Trademarks for defunct NFL franchises debated – A user on Reddit has pointed out a number of trademarks related to various defunct NFL franchises, including marks for the Akron Pros, Buffalo All-Americans, Cleveland Tigers, Detroit Heralds, Galloping Ghosts, Hammond Pros, Muncie Flyers, Racine Cardinals, Rochester Jeffersons, and the Rock Island Independents. The applications were filed by an entity called Pocket Maps Worldwide Ltd. Evidence suggests that the National Football League opposed most of the marks, but a significant majority have reached registration nonetheless. On the Reddit thread, many users were positive towards the marks, suggesting they tap into a potentially lucrative market. “I really think this is a brilliant idea,” said one user, adding: “This company will make a fortune making authentic historic jerseys, posters, hats and other merchandise for die hard football fans.” When approached by World Trademark Review, the owner of the marks spoke more about the endeavour. “Pocket Maps Worldwide Ltd owns the trademark registration to 10 of the NFL's 14 charter teams, including the oldest team -- the last outfit dating back to the 19th century. In addition, the league's original name is also in the portfolio: American Professional Football Association,” he explained. “Yes, I negotiated a maze of opposition, sans barrister. As for NFL resistance, a more serious engagement came from another major sports league, unrelated to American football.” He said that products related to the defunct NFL franchises can be found at his website ‘ProFootball100.com’, and even added that such a venture is not unique for him: “My original creative work has been utilised by such disparate entities as the NBA (National Basketball Association) and a genre-defining English rock band”. We’ve written extensively before about so-called ‘zombie brands’, whereby abandoned marks are resurrected by third parties. It appears, then, that such activity has become particularly prevalent in the sports industry in recent years. (TJL)

“Expertly trained” customs officers discover fake Cartier bracelets – A US Customs and Border Protection (CBP) Port Director has ascribed a recent seizure of luxury Cartier Love Bracelets to the attentiveness and training of his team. A shipment of 31 fake Cartier Rose and Yellow Gold Bracelets and 17 Cartier White Gold Bracelets, with a recommended retail price of over $2 million, was seized recently at the Port of Philadelphia. CBP Officers made the find having noticed the poor quality of the packaging and substandard workmanship of the bracelets. The seizure was then made following cooperation with Cartier, which confirmed the items were not genuine. Port Director Joseph Martella commented: “For these CBP officers, keeping their ‘eyes on the prize’ didn’t mean finding real gold, but instead finding fool’s gold,” said Joseph Martella, CBP Port Director for the Area Port of Philadelphia... Our expertly trained CBP officers stopped dozens of illicit consumer products from entering the US yet again.” According to Securing Industry, watches and jewellery accounted for as much of 38% of the total value of goods intercepted by the CBP in 2016, and were the second most intercepted product category after apparel and accessories. (AH)

Legal radar:

Jay Z and Beyonce merchandiser takes 200 alleged counterfeiters to task – The company that designs and sells the official merchandise for Jay Z and Beyonce’s tours is stepping up its fight against the sale of fake versions of its products. Three Ten Merchandising Services is taking 200 individuals to court as part of its response to a perceived torrent of counterfeit sales relating to the music stars’ ongoing tour, which started in June. Such activities, it is claimed in a complaint to the Massachusetts federal court this Tuesday, injures both Jay Z and Beyonce as well as itself, and risks leading consumers to unwittingly purchase unauthorised goods. Three Ten called on the court to grant a permanent injunction barring the defendants from manufacturing, distributing, selling, or advertising products bearing Jay Z and Beyonce’s trademarks, names and likenesses. It further asked for law enforcement authorities and its own approved agents to be instructed to seize infringing merchandise being sold near concert venues. The court granted these requests. According to the Fashion Law Blog, these actions can be seen part of a trend in which merchandise makers are increasingly taking on the responsibility of enforcing musicians’ IP rights in connection with authorised tour products. (AH)

Trademark fight revs up between Steve McQueen’s family and Ferrari – It has been reported that the descendants of actor Steve McQueen have filed a trademark suit against Ferrari for its sale and marketing of its limited edition car ‘The McQueen’. Filed this week, the complaint states that the luxury sports car company had unfairly profited from the actor’s legacy without the family’s permission and authorisation; as such, they are seeking an injunction against marketing for ‘The McQueen’, the destruction of all promotional materials bearing the actor’s likeness, $2 million for each violation of the registered trademark and punitive damages . The actor’s son, Chadwick McQueen, had reportedly visited the Ferrari factory back in 2011 to discuss working with Ferrari on the limited edition vehicle, but was surprised to learn in 2017 that Ferrari had proceeded to market and sell the car without the family’s approval. When the family complained, Ferrari renamed the car ‘The Actor’ but continued to utilise McQueen’s likeness on both its website and marketing materials, according to the suit. Ferrari has so far declined to comment on the case. (TA)

Media watch:

USPTO launches anti-counterfeiting video competition – During last weekend’s National Trademark Exposition, the USPTO announced the launch of a video contest to raise awareness around counterfeiting. The ‘Consumers Combat Counterfeits’ competition asks entrants to submit creative videos that will improve awareness around the negative impact that counterfeit products have and the need to combat this threat. Open to all US citizens aged 10 and above with entries being accepted from now until the end of October, the winners will be invited to an awards ceremony at the USPTO’s Virginia-headquarters. Additionally, the winning entries will be used as part of a wider public awareness campaign. (TA)

Domain name radar:

New WHOIS working group members revealed – Kevin Murphy of Domain Incite reports that 29 of the 33 open seats of the Expedited Policy Development Process (EPDP) working group have now been filled. The group is responsible for coming up with a permanent replacement for ICANN’s Temporay Specification for WHOIS post-GDPR – which will be no small feat – in just a few months. Murphy notes that the group size of 33 people is actually relatively small compared to the previous hundred-plus WHOIS working groups, which has been a deliberate move in order to help the EPDP keep to the tight deadlines. He also points out that the group leans heavily towards North America, with 17 North American members, compared to seven from Europe, two from Africa and one from each of Australia, Japan and Argentina. (TA)

Friday catch-up:

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

  • Published our latest exclusive data report, this time taking a deep-dive into trademark trends in the aerospace industry;
  • Reported on the UK’s Conservative Party being accused of selling “knock-off” goods from the popular reality TV show Love Island;
  • Looked at how practitioners have raised concerns over the USPTO’s proposed move to implement end-to-end electronic filings;
  • Had an exclusive interview with Sergio Barragan from PepsiCo, who reveals his approach to managing the company’s extensive Latin American brand portfolio;
  • Revealed how trademarks related to tragic events are still an issue that, unfortunately, brands need to be aware of;
  • Shared an in-depth case law analysis into Indian jurisprudence, and how those in the country struggle to interpret it in online disputes;
  • Studied the recent Tempnology decision, and how it has raised more uncertainty than it has clarity for trademark licensees and licensor;
  • And published a detailed analysis into parallel imports in East Africa, and how it remains a grey area for IP rights.

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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