17 Aug
2018

$500 million counterfeit bust, David Beckham leaked logo typo, and another creative cease and desist: news round-up

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 the brands loved by millennials but avoided by today’s teenagers, rising trademark applications in Cambodia, Saudi Arabia’s IP authority launching an official website, how thousands are boycotting brands on Twitter, In-N-Out’s pun-filled cease and desist letter, and much more. Coverage this time from Trevor Little (TL), Tim Lince (TJL), Adam Houldsworth (AH) and Timothy Au (TA).

Market radar:

Trademark applications increase in Cambodia – Trademark applications to Cambodia’s Ministry of Commerce increased 16% year-on-year in the first half of 2018; registrations also crept up 2% compared to the same period in 2017. According to the ministry’s director of intellectual property, Op Rady, 1,871 trademarks were granted in the first six months of the year, 1,168 of the successful applications made by foreign brand owners, the Khmer Times has reported. Overall, 2,670 filings were received, 1,608 of which were made by overseas applicants. The Cambodian government has been seeking to develop and improve the country’s IP ecosystem in recent years, partly in order to attract greater foreign investment – a major driver of Cambodia’s impressive economic growth. Indeed, senior government IP official Ainsley Jong, speaking to World Trademark Review in late-2017, urged international brand owners to engage with and help shape the country’s IP system by participating in the early stages of its development. While the latest filing increase is modest, the country’s trademark system does seem to be taking steps in right direction. (AH)

Saudi Arabian IP authority establishes online presenceArab News has reported that the Saudi Authority for Intellectual Property has launched an official website and opened up accounts on social networking sites in a bid to raise awareness and knowledge about intellectual property. The move comes as part of the country’s long-term economic reform plan, Saudi Vision 2030, which includes an emphasis on the importance of IP. CEO Dr. Abdula Aiz Al-Swailem stated the authority’s new online presence will act as a reference point for information for individuals, private entities and the government, with the website providing a selection of IP information to support IP enforcement and registration in line with best international practices. (TA)

Thousands boycott brands on Twitter – In an article on AdWeek, it is reported that tens of thousands of Twitter users are blocking “hundreds of accounts associated with major brands” in an effort to pressure the social media platform to permanently ban far-right figure Alex Jones. According to the article, more than 70,000 Twitter users have blocked the accounts of nearly 500 major companies, with those affected including Capital One, Cisco, IBM, McDonald’s, Microsoft, Nike, Pepsi, Red Bull, Starbucks, Uber, Visa and Wells Fargo. The reason, according to the article, is to target brands that have advertised on Twitter – and follows InfoWars founder Alex Jones being banned on platforms including Apple, Facebook, Spotify and YouTube. In a statement, Twitter claims that Alex Jones has not violated any of the company’s policies. For brand owners, it’s a reminder of how companies can be inadvertently roped into protests in the digital age. (TJL)

Counterfeiters charged following $500 million mega-bust – Knock-off versions of luxury handbags and accessories worth $500 million have been confiscated at ports in New York and New Jersey in one of the biggest US counterfeit seizures in recent times. In total, 33 men and women are thought to have been involved in the counterfeit operation responsible for the imports; most have been arrested and charged. Seized by the Department of Homeland Security, the haul included imitation Louis Vuitton, Michael Kors, and Burberry goods. According to Special Agent-in-Charge Angel Melendez, the bust “exposed the global nature of intellectual property crimes... Counterfeit goods manufactured and smuggled from China with a suggested value of close to half a billion dollars, were intended to make its way into US markets and into the hands of unsuspecting consumers.” He said the six-year investigation that led to the arrests would serve as a “crystal clear message that counterfeiting and intellectual property rights violations is anything but a victimless croome as it harms businesses, consumers and governments.” (AH)

The brands loved by millennials are avoided by kids, claims research – An article on Business Insider has looked at brands that, according to research from Piper Jaffray’s Taking Stock With Teens survey, are loved by millennials but are often being avoided by the younger ‘Gen Z’ generation. For example, Facebook is often regarded as a favourite brand of millennials but, according to the research, “Snapchat and Instagram are becoming the preferred social networks for teens”. Another is Puma, which reached peak-popularity for teenagers in the early 2000s but teens now “like Vans and Adidas”. Also in the fashion sector, Abercrombie & Fitch used to be a “ubiquitous teen retailer” but the research claims that teenagers today may be turned off by “Abercrombie’s corporate leadership” as they “tend to shop at places that are socially responsible”. The research is an interesting look at the perception of brands across different age groups and is, perhaps, a warning to some that they need to adapt to gain the attention of today’s youth. (TJL)

Legal radar:

In-N-Out succeeds with pun-filled cease and desist – It has been reported that US burger chain In-N-Out has tasted success with its latest cease and desist letter, which was sent the day after San Francisco brewery Seven Stills announced the release of a new beer to be named In-N-Stout. Littered with brewery and distillery puns, the letter stated that the fast food chain “felt obligated to hop into action” and wanted to “distil our rights by crafting an amicable approach… rather than barrel through this”. In-N-Out has been widely applauded for its approach, which was posted on social media, and Seven Stills co-owner Tim Obert stated the company would be honouring the request and repackaging its beers, having “expected to receive the cease and desist”. Since 2012, when Jack Daniel’s sent off what was dubbed the “world’s most police cease and desist letter”, many brands have opted for a softer and often more creative enforcement approach having seen the potential fruit such a move can reap, especially in the age of social media. However, we have previously warned that this should not be the default option and, importantly, messages need to be in line with a brand’s values and identity – lest a cease and desist letter ends up being viewed as a cynical attempt at making headlines. (TA)

Granting of trademark applications for foreign applicants resumes in Venezuela – An update from law firm Hoet Pelaez Castillo & Duque has confirmed that in Venezuela, the granting of trademark applications on behalf of foreign applicants has finally resumed. Furthermore, it appears the national IP office in Venezuela is cracking down on some trademark squatting, with information that it has “applied a procedure” during the trademark examination process that has resulted in marks for ADIDAS, PUMA and REEBOK, among others, to be refused as they were filed by applicants other than the widely-known original owner. (TJL)

Everyone can buy houses – Earlier this week, Express Homebuyers USA, one of the largest companies in the US house-buying industry, prevailed in the latest round of its battle to have the marks (owned by Jeremy Brandt’s company WBH Marketing Inc) WE BUY HOUSES AND WEBUYHOUSES.COM declared generic. In a Memorandum Opinion, Judge T S Ellis III, of the Eastern District of Virginia, stated that “allowing one member [of the real estate industry] to have exclusive use of the phrase ‘we buy houses’ would be the equivalent of allowing a professional football team to trademark ‘we play football’ or a fast-food chain to trademark ‘we sell burgers.’” The court therefore concluded that the marks should be canceled. Judge Ellis also dismissed WBH Marketing’s claim that Express Homebuyers infringed on the trademarks. Express Homebuyers’ CEO Brad Chandler characterized the ruling as “a big win for the home-buying industry as a whole”. A notable decision in its own right, an interesting dimension is that the campaign to cancel the marks was funded by a GoFundMe campaign, which raised over $135,000. While such an approach may not become commonplace, it does illustrate the benefits that can result when tapping into a concerned community. (TL)

Media watch:

Canada under fire over IP rights protection – In an op-ed in The Washington Examiner, Phil Kerpen is president of American Commitment, has directed his ire at Canada for quietly becoming “an egregious abuser of Americans' rights”. Reflecting on Canada’s inclusion on the most recent USTR Priority Watch List, he writes: “Canada is not letting our customs officials stop pirated and counterfeit goods that flow through Canada into the United States. Nor are the Canadians enforcing the laws themselves — they conducted exactly zero criminal prosecutions for counterfeiting in 2017. Thus they have been serving as an enabler to Chinese companies and other high-volume counterfeiters.” The piece therefore urges that IP become a top priority in the NAFTA negotiations, contending: “A NAFTA that only includes the weak language on intellectual property that President Barack Obama negotiated in the failed Trans-Pacific Partnership agreement is simply not good enough.” We have written previously about the stalling of NAFTA negotiations over the treatment and protection of IP, and this latest salvo aims to ensure that negotiations do not gloss over US concerns in a bid to reach a final agreement. Expect to hear more about IP and NAFTA in the coming months. (TL)

David Beckham leaked logo typo – There were numerous news articles this week on a trademark application that could be related to football star David Beckham’s quest to bring a Major League Soccer team to Miami. The application, for a sleek black and pink logo, was filed by a Delaware-based company called MIPH, the same firm that was used to lodge applications for potential names for the team earlier in 2018. The logo has generally been met with praise, with the Miami New Times saying “David Beckham finally did something right” in its design and that the colour scheme is “a criminally underused combination in sports teams that's also reminiscent of an art deco hotel lobby on Ocean Drive”. But one interesting quirk of the discovery is that social media users appeared to spot a typo in the trademark. The logo includes the text “Internacional Club De Fútbol”, but as the previous article notes, “it's odd the logo uses Spanish vocabulary in English word order – let's hope Beckham has a second version with a more sensible ‘Club de Fútbol Internacional’ order”. Could the order of the wording be intentional or is it a mistake? If the logo is revised following fan feedback, it could reveal an unexpected advantage of a trademark application spoiling the unveiling of a new brand or logo. (TJL)

Chinese trademark squatting on the rise again – Following decreases in the rate of trademark squatting in recent years, the phenomenon may now be on the increase again, according to China Law Blog, which reports a steep rise in the number of complaints it has received about the problem in the past year. One reason for this, it suggests, is that many Chinese factories are struggling financially, and in a bid to boost profits are seeking to register trademarks for prestigious international brands under the country’s first-to-file system. Another reason is that such manufacturers have learnt how to circumvent China’s rules preventing factories from registering IP rights for the brands whose goods they are producing. Manufacturers, the blog comments, are now routinely using friends, family members and associates to secure brand rights. So, despite improvements in many aspects of the Chinese IP landscape, now is no time for brand to become complacent about filing trademarks in the country. (AH)

On the move:

A-CAPP Center announces new director – Michigan State University’s Center for Anti-Counterfeiting and Product Protection (A-CAPP) has announced that Dr Jeff Rojek will take up the role of director on 1 January 2019. Rojek’s most recent position is as director of Center for Law and Human Behavior at the University of Texas at El Paso. In his new role he will focus on working with the Center’s advisory board and other constituents, collaborating with scholars, industry, and government partners to grow and expand the A-CAPP Center's active research agenda, as well as its educational programming. He takes over from Dr Jeremy Wilson, who led the Center for ten years and will be transferring back into academic life. Kari Kammel, currently the assistant director of education and outreach, will serve as interim director of the A-CAPP Center until 31 December. (TL)

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

Author | Life sciences reporter

[email protected]

Adam Houldsworth