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 take a look at the 'chocolate crisis' in Belgium due to fake and misleading confectionery products, how brands are embracing robot influencers, an insight into combating malicious imposters and how Chinese customs have stopped another load of World Cup counterfeits. Coverage this time from Trevor Little (TL), Tim Lince (TJL), and Timothy Au (TA).

Legal radar:

Associations voice Brexit concerns – In March we reported on the publication of a draft agreement on the withdrawal of the United Kingdom and Northern Ireland from the European Union, which outlines the broad understanding the negotiating parties have arrived at on key issues – including related to IP. Following meetings with the Commission, user associations – including CITMA and MARQUES – have raised concerns over the provisions related to the handling of pending EUTMs. The draft agreement states that the owner of an EUTM application which is still pending at the end of the transition period shall be entitled to file a corresponding UK application within nine months of the end of the transition period, retaining the filing/priority date of the EU application. However, the associations highlight a number of concerns over this approach. These include an increased cost to business – owners of pending EUTM applications incurring additional filing, examination and (if objections are raised in official actions) prosecution cost – and complexity. Additionally, they argue, it will result in increased delay and uncertainty for both applicants and opponents, as well as opening the door to fraudulent solicitation campaigns targeting those with pending EUTM applications. As an alternative, the associations suggest that pending EUTM applications continue to be examined by the EUIPO and give rise to a corresponding UK registration upon grant. Reflecting on the call, Lee Curtis, chartered trademark attorney at HGF, comments: “I can appreciate some of concerns expressed. However, one of the major advantages of the proposal is that it does provide a clean break from the EUIPO avowing EUTM applications potentially being pending before the EUIPO for years after Brexit. Also a major concern seems to be that pending applications, and by definition oppositions and the like, transferred to the UKIPO would potentially undergo re-examination and the resubmission of evidence. However, could not the UKIPO put in place some ‘special’ provisions to avoid this with regards to transferred matters?” (TL)

Jaden Smith takes on mayo company in trademark suit over the use of ‘Just’ – Just Goods, a bottled water company owned by Jaden Smith, is suing a mayonnaise, cookie dough and salad dressings manufacturer for violating a prior trademark agreement. In a recent development though, as reported by Business Insider, the mayo producer – formerly known as Hampton Creek but now rebranded to ‘Just’ – has hit back with allegations that Just Goods had used “misrepresentations and deceptions” to fabricate products to support its claim to the ‘Just’ name. Just Goods claims Just broke the terms of agreement established back in 2014 over when each company could use the word in question; however, Just claims that Smith’s company hurriedly added a tab on its website labelled ‘innovation’ for selling products other than bottled water to justify its claim to the ‘Just’ label. In a video submitted to the court, the mayo company also claims that these fabricated products, such as for olive oil, were manufactured by different companies with new labels stuck on top. An attorney representing Just Goods stated that this is “common practice as companies develop their businesses”, while calling the allegations a distraction from Just’s “intentional breach” of its 2014 agreement. Jaden Smith is often ridiculed for his often-mystifying Twitter posts, but it appears that, when it comes to legal matters, his company takes a very clear stand. (TA)

Market radar:

AWA acquires domain company – Intellectual property firm AWA has acquired domain name company Dotkeeper. The two organisations have been partners since 2016 and the move allows the creation of  new combined offerings across the fields of trademarks, domain names and digital IP. Dotkeeper will remain as a legal entity and retain its brand, with Magnus Hallin, AWA CEO taking over as chairman of Dotkeeper AB’s board. Hallin reflects: “I am really happy to join forces with Dotkeeper through this acquisition. They are an excellent addition to our offer but also as colleagues. Together we will develop our digital services and our new digital client platform. This will strengthen our client offering in many ways.” (TL)

EU Blockathon winners announced – On World Trademark Review, we have written extensively about the potential impact of blockchain. One initiative launched by the European Union Intellectual Property Office (EUIPO) and the European Commission is the EU Blockathon, which is aimed at harnessing the potential of the technology to protect supply chains against counterfeits. Over the past weekend, eleven teams of coders participated in the event, working over a 48 hour period to co-create a series of anti-counterfeiting blockchain solutions for consumers, enforcement authorities, logistic operators and businesses. The EU Blockathon 2018 was divided into three categories. The Consumer Challenge was won by Team Fides, which developed a ‘Goodchain’ solution to help customers engage with brand owners to boost social causes, while helping them to identify counterfeit products. The same team won the Customs Challenge, while the Logistics Challenge was won by Team Cryptomice’s “virtual twin” solution. The latter product, which cannot be cloned or falsified, is linked to a physical product (registered on the blockchain) and is used for authentication. Work will now begin to see how the solutions can be further developed to contribute to the fight against counterfeiting. (TL)

Chinese customs seize another load of World Cup counterfeits – We reported last week on China’s crackdown on fake products related to the 2018 FIFA World Cup in Russia. Xinhua now reports that a fresh batch of counterfeits have been seized by customs in Ningbo, including 1,800 uniforms adorned with the FIFA logo and almost 15,000 pairs of sneakers of Adidas and Nike, both of which are commercial sponsors of FIFA. Additionally, customs in Yiwu City have seized 288 fake match balls that were printed with patterns resembling the design of the official ball. Chinese customs have reached out to FIFA for verification that the goods seized were counterfeits and Hangzhou customs has announced that it will impose fines on exporters. (TA)

Media watch:

Brands embrace CGI influencers – An article on CNN over the weekend looked at a group of “fake virtual influencers” on Instagram. It focused on Miquela, who has over one million followers on Instagram – and revealed in April that she is “not a human being” and confessed to being a robot. Specifically, Miquela is a CGI model created by a Los Angeles-based company, and while some users had suspected it, many were surprised. It follows similar CGI Instagram models, including Bermuda, Blawko and Shudu. One particularly interesting aspect of the article is of how brands are embracing such CGI/robot influencers. For example, Miquela has “worn” clothes from companies like Proenza Schouler, Coach and Balenciaga in Instagram posts, and even partnered with Prada on a campaign for Milan Fashion Week. The article says that, for brands, these robot influencers could be more appealing as they can be more predictable than human influencers when working together. “It can be less risky than partnering with a person because there is more control over the image,” the article states. “There won't be issues in a CGI's past that could get the brand in trouble, such as criminal history or use of profanity. It's also a way for companies to show they're creative and on the cutting edge of technology.” We’ve written before about the challenges brands face when working with influencers. While most of those legal hurdles still need to be overcome when working with CGI influencers (eg, disclosing sponsored posts), perhaps the added control could be one to consider – or is this all getting a bit Blade Runner? (TJL)

Fighting the imposters – Over on Adweek, James Foster, CEO and co-founder of ZeroFOX, has looked at strategies for protecting your brand from malicious imposters. The challenge of fake social media accounts is a depressingly familiar one for trademark counsel and, in a bid to counter the risk, Foster suggests that marketing teams need to understand the risk landscape - either by working with a vendor to compile a report or documenting their social presence and any known risks. He adds: “After building a task force base, expand to deal with whatever challenges pose the biggest threats. With the right people in the room, this team can start building out policies around social media usage, threats, account security, workflows and more.” Of course, one challenge for counsel is to get marketing colleagues to engage in such policing. But it was ever thus… (TL)

Chocolate wars – A feature-length article in The Independent looks at the ongoing “Belgian chocolate crisis”, and takes a deep-dive into how foreign ownership and counterfeit confectionary is affecting the chocolate industry in Belgium. Particularly interesting is that chocolatiers in Belgium have written a so-called ‘chocolate code’ which states that “the complete process of mixing, refining and conching must be done in Belgium to be considered Belgian chocolate” – though it notes there’s no actual legal requirement to follow it, and that EU geographical indications don’t cover the entire world. “You just can’t say something is made in Belgium when it isn’t,” said one expert. “When chocolate manufacturers outside of the country put ‘Belgian style’ on their packaging, this has nothing to do with Belgium, it doesn’t exist. It’s like saying something is ‘grandmother style’, when all our grandmothers all cook differently.” For example, the articles adds, the Belgian chocolate label means drastically different things depending on where you are located: “For Belgian’s top chocolatiers, it means handcrafted chocolate using years of expertise and the finest ingredients, made entirely in Belgium. For high street bakery Greggs, on the other hand, it means a £1 Belgian chocolate dessert pot, a chocolate mousse containing palm oil, with 5% chocolate sourced from Belgium.” There are clearly challenges ahead for the industry – and with the United States becoming increasingly tough against geographical indications, there’s little sign things will get easier for Belgian chocolatiers.

Parody Trump Hotel gets commentators wondering trademark approach – Articles overnight looked at a parody website for President Donald Trump’s hotel brand. Located at ‘trumphotels.org’, the website contains images from detention centers, including those with both migrant children and adults. It also contains a “Thoughts From Our Manager” section, which highlights quotes from President Trump on immigration. The creator of the site (as yet unknown) appears to have taken measures to avoid possible legal challenges from Trump’s legal representatives. Most tellingly, the site has a lengthy disclaimer, including this section on intellectual property: “This site has no relationship to any commercial establishment or resort, it does not offer any similar products or services such as those provided by any commercial establishments or resorts, and it is in no way intended to deceive or create confusion with or to suggest sponsorship or endorsement by any other business or trademark holder. The use of any intellectual property, including trademarks or names of public figures, is protected under fair use, as TrumpHotels.org serves to comment on social and political issues and problems regarding the federal immigration policies of President Donald J. Trump, as well as other statements and actions made by Mr. Trump, through the use of ridicule and criticism.” This sparked debate on whether the website could be taken down, with users on Reddit suggesting it could be similar to Chick-Fil-A’s failed effort to close a parody website, though others stated the use of the TRUMP trademark could see it challenged. “If the owner is named Trump it might have a shot, but if they are not and are simply using the name because they want to, you can't do that,” one user claimed, with another adding: “This website is specifically being used for non-commercial purposes and to criticise a politician. Trademark law means s*** against a clear and obvious application of the first amendment.” While most users agree it is doubtful the website should be taken down, we’re sure Trump’s legal team will be considering their options nonetheless. (TJL)

On the move:

Cameron IP acquires office to prepare for expansion – British intellectual property law firm Cameron IP has relocated to a new premises in Glasgow, Scotland, as it forges ahead with expansion plans. An article in ScottishLegal spoke with founder Stewart Cameron, who says: “We have invested heavily in our systems and procedures over the last couple of years and that investment is now bearing fruit. The acquisition of our new office heralds the next phase in our aspirations for growth and gives us a dynamic platform to grow our team and meet increasing demand across an extremely buoyant and entrepreneurial market place.” (TJL)

Holland & Hart strengthens life sciences practice with partner addition – Holland & Hart announced that its Salt Lake City office is to be boosted with the addition of patent and trademark partner Loren Hulse, who specialises in the creation, management and protection of both domestic and foreign IP portfolios. Hulse has particular expertise in the chemical and life sciences spaces, having previously served as in-house IP counsel for NPS Pharmaceuticals and as patent counsel Ceramatec, Inc. (TA)

And finally…

USPTO top filers revealed – Yesterday on World Trademark Review we published some selected statistics from our annual USPTO focus, revealing the top trademark applicants for 2017. While the list includes such major brands as Mattel, Samsung, Johnson & Johnson, Target and Wal-Mart, topping the ranking is a single individual. Our analysis took a look at the story behind his filings. The piece was released in the run-up to our extended data-led focus, which is now available to subscribers and takes a deep-dive into the operations of, and filing trends at, the USPTO in 2017.

Adam Houldsworth

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