5 Feb
2019

Amazon acknowledges counterfeits, Turning Point name dispute, and Monster mashed: news digest 

Every Tuesday and Friday, WTR presents a round-up of news, developments and insights from across the trademark sphere. In our latest edition, we look at WIPO general director Francis Gurry visiting the Spanish IP Office, Philippines recording a significant rise in counterfeit seizures, Cadbury giving up on attempts to protect a shade of purple, and much more. Coverage this time from Trevor Little (TL), Adam Houldsworth (AH), Bridget Diakun (BD) and Tim Lince (TJL).

Market radar:

NBA and police prepare for counterfeits leading up to All-Star weekend – Next weekend All-Star activities will be underway in North Carolina, which means police and administration will be on the lookout for counterfeit merchandise. NBA VP, Michael Potenza, who is also the IP counsel for the league, says that surrounding areas will be watched to prevent the selling of fake goods. Potenza argues that the spread of counterfeits ruins the fans experience, and calls on people to pay close attention when buying products, ensuring that there is the NBA tag. Overall he says that common sense is key, stating: “If a deal is too good to be true or seems that way it probably is.” Warnings have also been made regarding the circulation of fake tickets. While this is less common than counterfeit merchandise, it is still a concern to authorities. (BD)

Amazon has acknowledged counterfeits for the first time in its annual report – Amazon has listed counterfeits as a risk factor in its latest annual report, the first time it has done so. The e-commerce giant has suffered a backlash over the past few years for what rightsholder decry as a lack of effort to address the issue of fakes on its platform. Although the company has implemented measures to mitigate the problem, some brands argue that more substantial steps need to be taken to eradicate the issue. Many remain concerned with the growing number of third-party sellers, who are most often the culprits for knock-offs. The mention of counterfeits in the annual report may indicate Amazon’s awareness of the seriousness of the issue, and how it damages the reputation of the company as a whole. It could also be a reaction to the American Apparel & Footwear Association (AAFA) 2018 recommendation for the platform to be listed as a notorious market. (BD)

Charity responds to launch of conservative lobbying group with same name – A new political lobbying group called Turning Point UK launched this week, an outpost of a controversial organisation established in the United States which aims to “challenge the idea that young people are inherently left-leaning”. The launch has spurred hundreds of news articles and thousands of social media responses, including support from numerous UK politicians. However, for one organisation, the launch has caused quite a headache. UK addiction and mental health charity Turning Point, which was inadvertently inundated with social media posts following the launch of the lobbying group, has stated on Twitter that it has “no connection” with the political group and that “many people are concerned about the confusion”. Indeed, in a statement to media, the charity also confirmed it was “reviewing all options in order to protect is name and limit confusion”. (TJL)

Legal radar:

Monster energy fails in appeal against Monsta Pizza ruling – Energy drink brand Monster Energy has suffered an adverse decision at the UK Court of Appeal in its trademark dispute with Monsta Pizza, a pop-up pizza parlour from Buckinghamshire. The global brand filed in its efforts to oppose the Wendover-based shop’s UK trademark application, which was granted in August 2018 after a dispute lasting more than a year. At that point, one of Monsta Pizza’s owners, Chris Dominey, said the battle had been “long and frustrating”, labelling Monster Energy a “bully”. Undeterred, Monster Energy appealed the decision, only to have its case rejected “in its entirety” by the Court of Appeals earlier today. Dominey told local press that the company had gone into debt to fund its legal efforts. (AH)

Cadbury gives up on attempt to protect the colour purple – Confectionary company Cadbury, now owned by Mondelez, has given up on its legal battle to restore its trademark for the shade of purple it uses on its wrappers, following an adverse decision at the end of last year. Cadbury’s had registered the mark at the UKIPO in 2012, but faced an opposition from Nestle that succeeded on appeal in 2013. In that instance, the Court of Appeal reasoned that the description of the mark as being the whole visible surface, “or...the predominant colour applied to the whole visible surface” allowed for “a multitude of different visual forms which were not graphically represented in the registration or described with certainty or precision. Cadbury itself appealed, arguing that its mark constituted a series of two marks, rather than one. Having had this argument rejected by the registrar and the High Court, the company pursued its case at the Court of Appeal. That court sided with Nestle again in a December 2018 ruling. And it seems that Cadbury has now decided to call it a day. (AH)

Office radar:

Gurry visits Spanish IPO – In a blog from the Spanish Patent and Trademark Office (OEPM), the registry described a visit last Friday from Francis Gurry, the general director of the World Intellectual Property Organisation (WIPO). At the visit, the two parties spoke primarily about three subjects: a national anti-counterfeiting plan, technology information services, and new trademark laws. According to the IPO: “During the meeting, the good cooperation relationship between the two organisations was revealed. WIPO expressed its support for the OEPM, praised the long history of collaboration between the two, and showed its intention to give visibility to the National Anti-Counterfeiting Plan.” (TJL)

Philippines IPO announces huge increase in seized fakes – The National Committee on Intellectual Property Rights (NCIPR) in the Philippines, of which the country’s IP office is a vice-chair, has confirmed it seized P23.6 billion ($451 million) worth of pirated and counterfeit goods in 2018, an increase of 188% from 2017. “In terms of enforcement, 2018 has proven to be a banner year with the NCIPR, capturing record levels of counterfeit goods,” commented IPOPHL director general Josephine R. Santiago. “Consistent with the trend we’ve seen all year, fake cigarettes and alcohol led this record haul – the formula for which we believe is the firm determination and vigilance of brand owners to pursue these counterfeiters.” For rights holders, the data is positive news, but looking ahead, Santiago is pledging even more: “As illegal traders are apparently shifting to heavily-taxed goods, we need more than ever the indispensable cooperation of brand owners. But enforcement efforts should not end with seizures, but follow through to convictions of perpetrators. Bringing them to justice, coupled with the public's active rejection of counterfeits, will complete the formula to sustain this crusade in 2019.” (TJL)

UKIPO seeks additions to its user panel – The UK Intellectual Property Office (UKIPO) has penned a blog post encouraging users of its services to become part of its research panel. According to the post, the UKIPO currently has 620 people on its research panel, which it uses to “better understand” its tools and improvements it can offer to users. It is therefore seeking anyone that has used a UKIPO service to join its ranks. (TJL)

Domain radar:

‘.Amazon’ talks offer made – Last month we noted that ICANN's board of directors had voted to impose a March deadline on talks over the future of the '.amazon' gTLD – the move an effort to break the deadlock over the string (which had been left in limbo due to opposition from South American governments, which regard the term as having geographical and cultural significance). This week, reports Domain Incite’s Kevin Murphy, talks look set to resume after the Amazon Cooperation Treaty Organization invited ICANN CEO Goran Marby to meet ACTO members in Brasilia. The move comes after ICANN announced that, if a breakthrough is not made by the next ICANN meeting, its board would decide on the future of the application. That announcement has seemingly opened the door for increased discussions over the string. In just over a month we should learn the fate of the string. (TL)

On the move:

IP firm adds two new hires – IP law firm Powell Gilbert has announced the hire of two solicitors, Peter FitzPatrick and Hannah Smith-Willis. FitzPatrick joins from Herbert Smith Freehills, where he was an associate specialising in IP litigation and cyber security. Smith-Willis is an IP solicitor specialising in contentious patent work and joins from Fieldfisher. (TL)

McCarthy Denning drives expansion through IP team – Dawn Osborne and David Sant have joined McCarthy Denning’s IP group as partners, according to a press release. Osborne has experience in trademarks, copyright, designs and internet law and is often involved in litigation, advice and mediation. Sant is primarily an IP litigator. (BD)

Dinsmore welcomes trademark partner as part of new contingent – Dinsmore & Shohl LLP has announced that Lisa Parker Gates, formerly of Baker McKenzie, is to join its Chicago office as a partner. She specialises in trademark portfolio management and is experienced operating before the TTAB. Parker Gates is one of nine new partners to join the firms across five offices. (AH)

Preti Flaherty strengthens IP bench with new attorney – Preti Flaherty has hired attorney Harley I Lewin to its IP group. Lewin’s practice covers trademarks, copyrights and related property. He will be working from the firm’s Portland and Boston offices. (BD)

And finally…

Obtain high-level trademark management and brand protection insights – WTR is hosting two events, on consecutive days, in Chicago in March. The Brand Protection Online: Strategies for Ethical Enforcement and Managing Trademark Assets USA events will deliver high-level insight and practical takeaways for those tasked with managing, protecting and monetising brands. On 5 March 2019, Brand Protection Online event will take a deep dive into practical strategies for fighting infringement on ecommerce sites, navigating the changing domain landscape and managing reputation online. Taking place at the same venue the next day, the fourth annual Managing Trademark Assets USA will again focus on the cost-effective management of international portfolios, and comes at a time when it is more important than ever for brand owners to ensure they are integrating innovative and disruptive strategies into their trademark operations. To register for Brand Protection Online (or both events) click here. To register for Managing Trademark Assets USA (or both events) click here. (TL)

Adam Houldsworth

Life sciences reporter

[email protected]