12 Nov
2021

Amazon and Weber lawsuit team-up; Tiffany and Supreme collaboration; anti-counterfeiting supporting sustainability – news digest

Every Tuesday and Friday, WTR presents a round-up of news, developments and insights from across the trademark sphere. In our latest round-up, we look at the South African IP office warning of email issues, covid scams creating continued challenges for health organisations, a major new e-commerce platform launching in Kenya, and much more. Coverage this time from Victoria Arnold (VA), Bridget Diakun (BD), Tim Lince (TJL) and Trevor Little (TL).

Market radar:

New e-commerce platform launches in Kenya – A new digital trade corridor for Kenya has been launched at DUBUY.com with backing from global logistics provider DP World. The latest expansion of DUBUY.com – which launched in Rwanda earlier this year – will unlock access to global markets for Kenyan businesses, with fulfilment through DP World’s worldwide ports and logistics network, the company states. The move into the Kenyan market supports the country’s Vision 2030 project to expand the country’s economy. Speaking at the launch, David Osiany, deputy minister of the Ministry of Industrialisation, Trade and Enterprise Development Kenya, said: “Kenya is among the top countries for economic growth prospects in Africa, with some of the most exciting B2B opportunities on the continent here… This partnership will increase our country’s trading connectivity and build an easy-access market for Kenyan entrepreneurs to secure long-term, sustainable business growth. With our local expertise and DP World’s global footprint, we’ve got a prosperous future ahead of us.” (TL)

Covid scams remain a challenge for health organisations – Last year, WTR revealed the struggle that health organisations such as UNICEF and the UK National Health Service (NHS) faced in tackling false information during the pandemic. At the time, NHS struck an agreement with Google to provide “easy access to verified NHS guidance when someone searches for coronavirus”, ensuring that the spread of misinformation on search engines was minimised for common search terms. On top of that, the organisations worked with Twitter and Facebook to direct users to the NHS website when searching for covid-related terms. However, over 12 months later, scammers continue to target the NHS, requiring a quick and canny response from the organisation’s brand protection team. A new text message has been sent to thousands of people around the United Kingdom claiming that they are eligible for a ‘covid pass’. The message includes a domain through which to apply and claims that failure to do so could lead to a £10,000 fine. The domain in the text message looks like an official NHS domain, so the hope is that a domain takedown approach could be successful. However, the term ‘nhs’ appears in the subdomain, so this could prove challenging. The scam is the latest reminder of the ongoing challenges that health organisations face as the pandemic continues. (TJL)

How anti-counterfeiting supports sustainability – Tackling counterfeit goods is an effective way to support sustainability, OpSex Security’s Alessandra Vercelloni has revealed in a guest post for Business Reporter. She notes that the unsustainability of counterfeiting is “often overlooked”, but that “production tends to take place in unregulated environments, in which workers are exploited and child labor is commonplace”, while “manufacturers creating fake goods often use pollution-creating and dangerous machinery and materials”. On top of that is the fact that the destruction of fake goods by law enforcement through incineration causes “even more air pollution”. While sustainability and climate change are arguably minor reasons for a brand to tackle fake goods, they could be one element to consider when drawing up strategies and justifying budgets. (TJL)

Brand radar:

Tiffany and Supreme collaborate on new collection – Tiffany & Co has partnered with streetwear brand Supreme to launch a seven-piece collection. The line will include a white t-shirt with the Supreme logo in Tiffany’s well-known robin egg blue colour, as well as a pearl necklace and silver pendant. The collaboration is a bid by the jeweller to appeal to younger consumers. Luxury powerhouse LVMH is no doubt a driving force behind the relationship. It acquired Tiffany in January and is working to refresh the brand’s image, having employed a similar strategy with Louis Vuitton several years ago. The collaboration between Louis Vuitton and Supreme sold well and gave the French brand a boost. LVMH has also launched a “Not Your Mother’s Tiffany” campaign, bringing on celebrities to partake in the marketing programme. While the revamped strategy has been generally well received, Bloomberg notes that it has not gone down well with some consumers, who have said that Tiffany is alienating a key market segment. (BD)

Sony Pictures inks new licensing deals for Ghostbusters: Afterlife – Sony Pictures Consumer Products has announced the expansion of the Ghostbusters franchise with new licensing partnerships in the run up to the release of Ghostbusters: Afterlife. The company has secured deals for merchandise and interactive experiences across all categories, including apparel, publishing, toys and collectibles, home goods, seasonal, gaming and interactive games. The Ghostbusters licensing line-up is the brand’s biggest consumer products programme of all time, says License Global. “A cult classic and cultural phenomenon, the Ghostbusters brand has withstood the test of time reaching a myriad of fans, generation after generation around the globe,” says Jamie Stevens, executive vice president of worldwide consumer products at Sony Pictures Entertainment. “We are excited to continue celebrating the famed franchise with the ‘Ghostbusters: Afterlife’ release. Our partners have been fantastic at bringing the beloved brand characters and themes to life through movie-themed products and interactive experiences we sure fans will never forget.” (BD)

Hershey to acquire two pretzel makers – Hershey Co has agreed to acquire two pretzel makers in separate deals worth about $1.2 billion, reports Reuters. The purchase of Dot’s Pretzels and Pretzels Inc will help to boost the company’s snacking portfolio. This business area has been of interest to Hershey for a number of years and the company has used acquisitions to get its foot in the door. In 2018 it bought SkinnyPop popcorn maker Amplify Snack Brands for $1.6 billion. (BD)

Legal radar:

Amazon and Weber team up on lawsuit against counterfeiters – Amazon.com has teamed up with a subsidiary of Weber Inc to file a lawsuit against 12 defendants for allegedly selling products that illegally bear the WEBER registered trademark in Amazon’s store. The e-commerce giant claims that the defendants attempted to offer counterfeit versions of the global grill maker’s grill covers, violating Amazon’s policies, infringing Weber’s registered trademarks and ultimately breaking the law. The lawsuit, which was filed in the US District Court for the Western District of Washington (Case: 2:21-cv-01512), claims that the defendants conspired to deceive customers about the authenticity and origin of their products and create a false affiliation with Weber. Amazon closed the defendants’ selling accounts and refunded the affected customers. “If counterfeiters attempt to sell in our store, they don’t just break the law and violate the rights of companies like Weber, they mislead consumers,” said Kebharu Smith, director of Amazon’s Counterfeit Crimes Unit. “In the rare instances when counterfeiters are able to bypass our enforcement tools and teams, we will find them and hold them fully accountable.” (TL)

Victoria’s Secret rebrand backfires amid fitness company infringement claims – Health and fitness company iFIT is suing Victoria’s Secret for alleged infringement of its SWEAT marks in relation to exercise apparel and related services. iFIT is seeking injunctive relief prohibiting Victoria’s Secret from using the mark and damages. It states that Victoria’s Secret used the SWEAT mark to sell and promote fitness products on its website, social media account and other marketing channels. It also states that the company “purposefully” employed a model who looked like SWEAT app founder Kayla Itsines in order to mislead consumers. “Defendant’s use of this Ms. Itsines look-alike is likely to further encourage the likelihood of confusion caused by Defendant’s use of the Defendant’s SWEAT Marks, and on information and belief demonstrates Defendant’s intent to trade on the reputation of Plaintiff’s brand,” the complaint states. The dispute comes at a time when Victoria’s Secret stock is on the up. The company undertook a monumental rebrand in June in an effort to reposition itself as a global “advocate” for female empowerment. By August it had reported a significant improvement in sales and net income compared to the previous year and an impressive 45-point rise in brand value, according to WTR’s Brand Elite project. However, the dispute with iFIT highlights the dangers of big brands being perceived to enter new markets recklessly. (VA)

Office radar:

(For the latest coronavirus-related updates from national IP offices, please read our dedicated article, which is being continuously updated.)

South African IP office warns of email issues – The South African Intellectual Property Commission (CIPC) has warned that it is currently experiencing “challenges” with emails sent to office users. The agency states that some service providers are blocking emails from the CIPC “as they view it as junk mail”. For that reason, it suggests that any users expecting emails from the CIPC check their junk folder regularly. The registry is “attending to this challenge as a matter of urgency” and hopes to resolve it soon. (TJL)

Law firm radar:

Arnold & Porter makes IP hire – Aaron Bowling has joined Arnold & Porter as counsel within the firm’s IP practice. Bowling handles patent and trademark litigation cases across a range of industries. He has litigated cases at the US federal district court, federal appellate court, the Patent Trial and Appeal Board and the International Trade Commission. Bowling will be based in the firm’s Chicago office. (BD)

Finnegan to launch Munich office – Finnegan, Henderson, Farabow, Garrett & Dunner is launching a Munich office under the guidance of a patent litigator from Baker McKenzie. Jochen Herr will lead a team of three attorneys and three legal professionals from the new location. Another partner and two senior associates will also join the group, but Finnegan has declined to name these individuals at this time. Herr has over 17 years’ experience in patent litigation. “His reputation as a skilled litigator and his addition enables us to significantly expand our ability to provide clients with quality advice and patent litigation and support in Germany and Europe more widely,” Finnegan managing partner Anand Sharma said in a statement. The Munich office is due to become operational in January 2022 and will be the firm’s second European location after London. (BD)

CMS IP team continues growthCMS has announced the appointment of Paolo Andreottola to its IP practice in London. Andreottola has broad expertise across various areas of IP law and specialises in brand protection and trademark enforcement, including brand clearance, trademark filing, trademark disputes and settlement agreements. His appointment follows the arrival of IP disputes specialist Ben Hitchens in September. “Paolo is a fantastic hire for the practice and represents an important part of our growth strategy,” said Sarah Wright, head of intellectual property at CMS UK. “His exceptional brand protection and trademark enforcement practice, covering the UK, Europe and worldwide, will boost the team’s ability to attract and handle work in these areas.” (TL)

Locke Lord elects 12 new partnersLocke Lord has promoted 12 lawyers representing the firm’s Austin, Boston, Chicago, Dallas, Houston, New York, Providence and West Palm Beach offices to partnership level, effective 1 January ‎‎2022. This includes IP practice partner H Straat Tenney, who is based in New York and counsels clients on an array of IP matters, including US and international trademark strategy and portfolio management, trademark enforcement and anti-counterfeiting actions. In the Chicago office, Wasim Bleibel – who counsels pharmaceutical, biotechnology, beverage, and digital and media technology clients ‎on IP litigation, portfolio strategy, brand enforcement and regulatory compliance – and Nina Vachhani – who concentrates her practice on IP litigation and regulatory matters, with a primary emphasis on large-scale pharmaceutical patent actions under the Hatch-Waxman Act – have also been promoted. (TL)

And finally...

WTR’s latest Special Report explores how to manage the brand balance sheet – The ability to measure and record brand value is crucial for a host of business reasons: to gain a 360-degree insight into an enterprise’s worth; to measure a company’s health or product offerings; to calculate licensing royalties; to determine potential reputational hits and damages in dispute scenarios; to underpin M&A decision making. The list goes on. WTR’s latest Special Report takes a deep dive into brand valuation, the reporting of intangibles and strategic best practice for brand leaders. As well as tracking recent developments in the industry and presenting a guide to the fundamentals of valuation practice, we focus in on key trends, the companies that own the most valuable brands and their financial performance. In addition, we present a rundown of the most valuable brand acquisitions since 2000. WTR subscribers can access “Managing the brand balance sheet” here.

Bridget Diakun

Data reporter | World Trademark Review

[email protected]

Tim Lince

Author | Special Projects Editor

[email protected]

Tim Lince

Trevor Little

Author | Editor

[email protected]

Trevor Little

Victoria Arnold

Author | News Reporter

[email protected]

Victoria Arnold