Every Tuesday and Friday, World Trademark Review presents a round-up of news, developments and insights from across the trademark sphere. In today’s edition, we look at heavy rock group Iron Maiden pursuing a group of counterfeiters, the significant changes at the top of the new gTLD leaderboard, and a call for a “flexible IP regime” in Africa. Coverage this time from Trevor Little (TL), Tim Lince (TJL), Adam Houldsworth (AH) and Timothy Au (TA).

Legal Radar:

Iron Maiden get heavy with counterfeiters – This week the music press has been loud on the issue of counterfeits after heavy metal band Iron Maiden filed a lawsuit against websites selling infringing and unauthorised merchandise. The suit, lodged In The Northern District of Illinois, contends that the defendants – believed to reside in China – are facilitating sales by designing their sites to appear as authorised retailers, offering products that are “likely to cause and is causing confusion, mistake, and deception as to the origin and quality of the counterfeit goods among the general public”. In terms of relief, the band is asking that – in addition to the parties being permanently restrained from using its marks – online marketplaces (on request) be ordered to disable and cease displaying any advertisement form the parties using the Iron Maiden marks. Statutory damages of $2 million for each and every use of the trademarks is also sought. The suit will likely make the defendants run to the hills, but whatever the outcome of the dispute, it is positive to see the issue of counterfeiting get an airing on music industry blogs and publications. (TL)

Mattress wars end in rare sanctions decision – On Rebecca Tushnet’s 43(B)log, there is interesting analysis of a rare sanctions order in a US false advertising case. In Purple Innovation v Honest Reviews, the court granted sanctions based on the defendants’ submission of misleading and false statements to the court in opposing Purple Innovation’s request for a preliminary injunction. The case centres on the sale of mattress and bedding products online. The lawsuit alleged that, despite claims of independence, the operator of the ‘honestmattressreviews.com’ review site was closely affiliated with a rival mattress maker, GhostBed – claiming, then that the reviews are commercial advertising and promotion that “materially misrepresented the nature, characteristics, and qualities” of Purple’s products, while also failing to disclose the close affiliation with its competitor. GhostBed’s counsel denied that a business relationship existed between the two but following a later evidentiary hearing the court concluded that that relationship had been misrepresented. The court subsequently struck GhostBed’s counterclaims, awarded costs to Purple Innovation and stated that “the court will also issue an adverse jury instruction if deemed appropriate when this case goes to trial”. The case is a reminder of the unusually competitive mattress industry that has opened up in the United States in the past few years – Fast Company had an excellent feature article on similar deals between major mattress companies and mattress review websites last year. (TL)

Call for “flexible IP regime” in Africa – The Open Africa Innovation Research (Open AIR) has called for more flexible IP rights as a way to “spur local innovation and entrepreneurship” in Africa. The comments were made during an event in Ghana, with Yaw Adu-Gyamfi, a researcher with Open AIR and CEO of the Centre for Social Innovations, stating: “We have to ensure that there is flexibility and collaboration so that people don’t hide their knowledge or the process of coming up with an innovation, but still continue to have that open sharing. Eight out of 10 artisans do not know about intellectual property rights, [but] when you speak to them about the merits and demerits of such a system, you would find out that you can’t implement strictly IP rights in the informal sector.” Indeed, it’s quite a challenge, and Adu-Gyamfi told GhanaWeb that talks are underway to find a solution – but in the meantime, the organisation wants to combat the “wrong reputation” that Africa is not an innovative continent. Jeremy de Beer, a director of Open AIR, added: “When we do research we would find out that it is a wrongly deserved reputation; it is innovative, there are all kinds of phenomenal innovations happening throughout the continent. The problem, however, is that it is not captured in patterns and scientific publications because the kind of innovations that Africa is producing are different.” (TJL)

Navigating the USPTO’s audit program – An update posted on Lexology by Adams and Reese provides some important tips on how to avoid losing trademark rights to the USPTO’s new audit program, which was established in a bid to tackle fraudulent claims of use and overly broad listings of goods and services by applicants. Amongst the recommendations made by the firm are to delete all unused and/or outdated goods and services from the registration in each Declaration of Use filing, and to include additional evidence of use in Declaration of Use filings to reduce the likelihood of an audit. (TL)

Canada awaits new trademark law – Canada is now nearing the end of a lengthy process of introducing changes to its trademark law, which are described by some as the “most significant in 50 years – both procedurally and substantively”. The new law, expected to come into force in 2019, will simplify applications by removing the need to identify a date of first use, expand the definition of a trademark to cover any sign or combination of signs, and will make it possible to divide applications. Before the amendments come into effect, a new set of regulations must be decided on by the Canadian government (a step in this direction was taken recently with the publication of the final draft of the new regulations), and the IT systems at Canada’s trademark office must be updated to ensure the proper functioning of the new laws. (AH)

Clarity needed on whether IP bankruptcy protections extend to trademark licensees – Attempts to broaden carve-outs which protect IP licensees when their licensors go bankrupt have ground to a halt, argues Mark Salzberg of Squire Patton Boggs in a recent article. Currently, under the US Bankruptcy code, when a licensor goes bankrupt, an IP licensee can choose to consider their contract terminated or to keep its rights to the IP in question under the terms of the existing contract. But trademark licenses are not explicitly included in the definitions of IP licenses under the relevant regulations. Whether such protections nevertheless extend to trademark licensees has long been the subject of dispute, but now Court of Appeal decision in Mission Prod. Holdings v Tempnology has stated that for trademark licensees to be included in this carve-out would require an act of Congress. Salzberg argues that there is still a lack of clarity surrounding the issues, calling for either legislative change or a Supreme Court ruling on the matter. (AH)

Market Radar:

Samsung trademark ignites smart glasses speculation – As often happens with the filing of new trademarks, Samsung’s application for a new logo has sparked fresh rumours that the Korean tech giant may yet be moving into the smart glasses market. Samsung has a significant number of patents in relation to eyewear technologies and features, and it has been rumoured for years that the company would soon be producing its own line of smart glasses. According to Sammobile, the new trademark filing’s description reveals that it may be used for “Smart glasses”, “Computerised vision-assisted eyewear consisting of a camera/computer/display for capturing/processing/displaying an image”, and “computer hardware for analysing and configuring vision-assisting eyewear” among many other uses. The news comes just as Samsung is set to unveil its Galaxy S9 smartphone at Mobile World Congress next week. The wearable tech revolution hasn’t yet impacted trademark practice as has previously been predicted – but don’t write it off yet. (TA)

Myanmar designers step up the fight against fashion IP theft – A group of fashion designers in Myanmar have clubbed together in the struggle against IP theft, forming the Fashion Designers Entrepreneur Association at the start of this month. With the country yet to implement its own trademark law, local fashion designers are concerned about the prospect of having their products copied at home and abroad. The new association, which is officially recognised by the country’s Federation of Chambers of Commerce and Industry, seeks to help its members to protect their brands and designs more effectively in foreign jurisdictions as well as in Myanmar itself. (AH)

Domain name radar:

All change atop the new gTLDs leaderboard – We previously reported on the drop in that the number of domains registered in new gTLDS. In large part this is due to the non-renewal of free and low cost registrations. For some time now, ‘.xyz’ has topped the registrations leaderboard but a recent fall in registration numbers means that a new name now sits atop the pile – ‘.loan’ – according to ntldstats.com. With a 10.5% share of overall domains, it shows that financial-themed new gTLDs are doing part curly well in the new gTLDs space. In fact, on January 23, Donuts announced that ‘home.loans’ – a rival string to ‘.loan’ – had been acquired for $500,000, believed at the time to be the largest sale to date for a premium new domain name. (TL)

ICANN CEO to facilitate negotiations between Amazon and ACTO states As reported by Domain Incite, ICANN’s CEO has been asked to step in to facilitate negotiations between Amazon and member states of the Amazon Cooperation Treaty Organization (ACTO) regarding the marketplace giant’s bid for the ‘.amazon’ gTLD. Controversy surrounds Amazon’s bid for the top-level domain as several governments, most notably Brazil and Peru, believe the “Amazon” River – or Amazonas, as it is referred to locally – should be a protected geographic term. Amazon has previously called for a prompt end to the long-running dispute and promised it will protect key domains, including “rainforest.amazon”, but as it stands the ‘.amazon’ application is still classified on ICANN’s website as “Will Not Proceed”. (TA)

Media Watch:

USPTO’s love song to intellectual property – The USPTO celebrated Valentine’s Day this week with the release of a music video featuring a barbershop quartet performing a patent and trademark-dedicated love song (with lyrics written by the office’s own public affairs specialist, Matthew Palumbo). The video was just one part of the USPTO’s #IPlove social media campaign for Valentine’s Day, which follows on from last year’s #PatentLove and #TrademarkLove drives. The USPTO weren’t the only IP office to get in on the love fest – the UKIPO posted a Valentine’s themed blog this week warning about ‘last minute’ gifts that could end up being dangerous counterfeits (TA)

Brand lessons from a struggling Australian retailer – Retail group Myer has, along with rival David Jones, ruled the department store scene in Australia since the 1800s. But in recent years, it has struggled – and this week it fired its chief executive amidst a falling share price. The reason for recent turbulence at the company, according to Australian trade magazine Marketing, is that its brand “has tried to be all things to all customers”. As the authors (academics Sean Sands and Michael Beverland) explained, Myer traditionally aimed their brand towards one demographic, but that has changed. “Historically, Myer (like many department stores in the western world, including Macy’s in the US, Marks and Spencer in the UK, and many others), was a middle class brand, located at a desirable address, and stood for the pinnacle of accessible quality on the high street,” they write. “As such, the stores also represented a source of aspiration for working-class consumers, something to treat oneself to, to shop for special occasions, and to peruse when you wanted to signal a sense of achievement. However, with greater market fragmentation, a wider range of needs to appeal to, and the emergence of large numbers of well positioned local (and global) brands, Myer has struggled for identity and business. Myer’s lack of clarity in the brand’s unique selling point means it’s being attacked at the top and bottom end of the market.” The article delves into the need for all brands, especially those in the retail space, to not lose sight of what made them popular in the first place. “Much of the problem stems from looking outward too much – looking for something to entice consumers, speak to the latest trends, adopt the latest technology, or respond to the latest competitive threat. While there is nothing wrong with any of these strategies, they must be framed through the lens of the brand. What is lacking is Myer’s heritage, and the need for this to be carefully reframed and updated for the present day.” For practitioners, the issues mentioned in the column are worth considering, particularly during times of brand changes or rebrands. (TJL)

Gleissner activity described as “biggest scam in IP history” – A respected Turkish IP attorney has been scathing in her assessment on the activity of entrepreneur and notorious trademark filer Michael Gleissner. We’ve written extensively about the vast domain name and trademark portfolio of German-born Gleissner in the past 18 months, including creating a searchable database of the over 4,400 trademarks and 5,500 domains known to be related to him. Most recently we looked at a recent case at the UKIPO, wherein it was revealed that Gleissner had been involved in 5% of all live contested trademark cases in the UK in 2017. Reacting to that same case on IP Navigator, Ofu Ventura founder Ozlem Futman compared Gleissner to the title character in the book The Talented Mr Ripley and Leonardo DiCaprio’s character in the movie Catch Me If You Can. After analysing the case and the hearing officer’s decision, Futman concludes by making her frustration at Gleissner’s ongoing actions clear. “By blocking the legal system and exploiting it, Gleissner seems to have achieved some goals to date, but let's see how this will end up, because as you see, everyone is awaken to it now,” she says. “We are faced with the biggest scam in IP history so far.” There is some evidence that the legal pursuits of Gleissner are slowing down, but mystery still surrounds it and the trouble it has caused countless brands around the world continues. (TJL)

And finally…

Have your say on the state of the industryWorld Trademark Review is currently inviting industry practitioners to participate in the Global Trademark Benchmarking Survey, which measures the pulse of the industry, tracks industry trends and identifies how practice is evolving to counter new threats and embrace fresh opportunities. Participation in the survey is free of charge and designed to give counsel – both in-house and in private practice – the opportunity to have their say on the state of the trademark industry. The survey form for in-house/corporate counsel is available here. The survey form for law firm practitioners is available here. (TL)

Adam Houldsworth

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