28 Jun
2019

Cannabis counterfeits; the campus consequence of Brunetti; and Anheuser-Busch eyes esports market: news digest 

In our latest news round-up, we look at how Alibaba is seeking increased brand engagement, Anheuser Busch making a play for esports industry, a USPTO call for comments, Albania’s accession to the Geneva Act and much more. Coverage this time from Bridget Diakun (BD), Tim Lince (TJL) and Trevor Little (TL).

Market radar: 

Gibson calls for help to identify fakes – In a post on MusicRadar, guitar giant Gibson has called on players to report counterfeit guitars. The article reports on the company’s new counterfeit URL submission form, where it encourages guitarists to “blow the whistle on any models that may bear a resemblance to the company’s designs”. The article states that it is unaware of any other guitar manufacturer who has a similar open form for reporting infringements. According to a post on Reddit about this page, users were broadly positive as some had noticed a rise in fake Gibson guitars. “In case anyone is unaware; there are a lot of fake Gibson’s being shipped from China (mostly) that bear the Gibson logo on the headstock as well as a serious number that actually corresponds with the Gibson model,” one user claims. “They are actually pretty quality guitars for the astonishingly low price (usually $275 or so – a couple of years ago they went for under $200!). I’ve read a rumor that the orchestrators may be ex-Epiphone employees. They are referred to as ‘Chibsons’ and can be found on DHGate.” For Gibson, this is clearly a major issue – so much so that it is drafting in the guitar community to help identify fakes on the market. (TJL)

Alibaba targets increased brand engagement with platform launch – Alibaba’s Tmall Global marketplace has launched an English-language website to streamline the onboarding process for international brands that want to sell on the platform. Alizila reports that the portal will educate brands about Tmall Global and allow them to apply to open a flagship store on the site,Yi Qian, deputy general manager of Tmall Global, stating: “Tmall Global’s mission is to connect high-quality international brands across the globe with Chinese consumers. We believe the launch of this English-language website will expedite the process for brands and merchants to introduce their products to Chinese consumers.” Tmall Global is China’s largest cross-border platform, and currently hosts more than 20,000 brands in over 4,000 categories from 77 countries and regions. The move to launch an English-version site will bring many more international brands into the Alibaba ecosystem. (TL)

New industry, same old problem – Canada’s move to legalise cannabis was a momentous one, effectively giving rise to a newly legitimised industry. However, with opportunity comes risk. This week, The Growth Op reports that, with legal cannabis products in the province of Saskatchewan featuring distinct symbols and imagery to help consumers identify products that come from a licensed source, the icons are now appearing on fake cannabis packaging labels. Media Outlet CBC spoke to the Saskatchewan Liquor and Gaming Authority (SLGA), which is responsible for the distribution of cannabis in the region, and was told: “SLGA is aware of the illegal cannabis with packaging designed to look like official Health Canada approved product. Whenever SLGA becomes aware of information like this, we share it with Health Canada and the police." The reports serves as reminder that, where business opportunities abound, infringers are quick to follow. (TL)

Beam boosts brand – Beverage company Beam Suntory has announced a new senior position at the company: ‘President of Brands’. In a release, it explains that the role will be taken on by Carlsberg executive Jessica Spence, who joins in this new capacity in October. The company notes: “In this new role, Spence will have P&L responsibility for Beam Suntory’s largest global brands, and will work closely with the region presidents to lead the company’s global premiumization agenda. In addition to end-to-end global brand strategy, development and performance, Spence will lead global innovation and product R&D; emerging marketing technologies, tools and platforms; and integrated marketing communications and design.”  Beam Suntory, whose brands include Jim Beam and Maker’s Mark, has always taken a proactive approach to the management of its IP and the elevation of ‘brand’ can only be a positive for those in the company tasked with protecting these key assets. (TL)

Anheuser-Busch makes a play for esports industry – Anheuser-Busch has filed a trademark for “the official beer of esports” at the USPTO. As we reported recently, the esports industry has grown exponentially over a short period of time, and a number of market players are trying to cash in on this opportunity. ESPN and Turner Broadcasting have signed contracts with a number of organisations to compete with the live-streaming platform Twitch, and the beverage giant is also now looking to increase its visibility with the community. “The official beer of esports” is not Anheuser-Busch’s only trademark, also filing for “the official beer of gaming” and “the official beer of gamers”. (BD)

Legal radar:

USPTO updates TBMP, seeks views on standard protective order – The USPTO has published the June 2019 update of the Trademark Trial and Appeal Board Manual of Procedure (TBMP) on the Trademark Trial and Appeal Board webpage under "Policies and procedures." The revision describes current practice and procedure under the applicable authority and relevant case law reported between 2 March 2018, and 1 March 2019. In other news from the office, time is running out  for practitioners to let the TTAB know what they think about a specific provision of its standard protective order (SPO). Under the current SPO, in-house counsel are not allowed to access materials designated “Confidential – For Attorneys’ Eyes Only (trade secret/ commercially sensitive)” unless an appropriate showing has been made and approved by the TTAB. The office is now seeking views on whether to retain or modify that provision – the deadline for suggestions, to be provided via IdeaScale, is 30 June. (TL)

Office radar:

Albania accedes to Geneva Act – Albania has become the latest country to join the Geneva Act of WIPO’s Lisbon Agreement on Appellations of Origin and Geographical Indications. The act allows producers of products linked to origin easier access to international protection of their geographic origins. Including Albania, three countries have acceded to the Geneva Act. The other two countries which have submitted their instruments are Cambodia and Côte d'Ivoire. (BD)

Media watch: 

The campus consequence of Brunetti – Over on The College Fix, Ethan Berman has considered the potential impact of the Supreme Court ruling in Iancu v Brunetti, arguing that the fight against restrictive college speech codes might just have received new ammunition. Berman spoke to a law professor and a civil-liberties group, who separately told him that the ruling is a boon for lawsuits against campus speech codes, bias response teams and other college policies that punish the content of speech. One claimed that the ruling – in combination with President Trump’s executive order on campus free speech – could have “the same revolutionary impact that Title IX complaints have had on allegations of sexual assault.” While the trademark community considers the potential impact of the decision, the article serves as a reminder that the ramifications could be felt outside the IP world. (TL)

Domain radar: 

The GAC seeks to keep ‘Amazon’ battle alive – Following this week’s ICANN meeting in Marrakech, the Government Advisory Committee has issued its official communiqué. It asks  the ICANN Board to explain in writing whether and why it considers that its decision to proceed with the ‘.amazon’ TLD applications, based on a proposal that the eight Amazon countries considered did not address their concerns, complies with GAC Advice. As we reported earlier this week, the applications have been put back on hold after the Colombian government lodged a request for ICANN to reconsider its decision to proceed with the application. As it stands, the tech giant’s seven-year bid for the TLD is set to go for some time yet. (TL)

On the move: 

Haynes and Boone adds to its litigation bench – IP litigators Ralph Gabric and Laura Beth Miller have joined Haynes and Boone’s Chicago office, according to a press release on the firm’s website. Both have been appointed to partner. (BD)

Fox Rothschild welcomes new IP partner – Fox Rothschild has announced the appointment of Patricia M Flanagan as partner in its IP team and fashion law practice group. Flanagan works across the spectrum of trademark matters and is based in the firm’s West Palm Beach office. (BD)

Former Shell lawyer joins Keystone Law – Jon Moorhouse has joined Keystone Law’s IP team as a senior lawyer having worked in-house at Shell for over a decade. (BD)

Friday catch-up:

Every Friday in our news round-up we will provide a quick rundown of the latest news, analysis and intelligence posted on WTR. Over the past week we:

  • Analysed the lawsuit lodged by Amazon, in collaboration with Denver-based company Nite Ize, against counterfeit product importers and sellers operating in the United States, Canada and China. The filing  offered some behind-the-scenes insight into Amazon’s efforts to tackle fake goods on its platforms.
  • Sat down with Jack Chang, the Lifetime Achievement recipient at 2019 WTR Industry Awards to gain insight into his varied career. From establishing the China Anti-counterfeiting Coalition and the Quality Brands Protection Committee to being personally thanked by Vice Premier Madam Wu Yi for his work, Chang has significantly altered the trademark landscape in China.
  • Published guest analysis of the General Court of the European Union’s ruling to uphold the decision of the EUIPO to invalidate the registration for adidas’ three-stripe figurative mark.
  • Assessed a major new study which discovered nearly 50,000 potentially copycat apps on the Google Play store, with 2,000 deemed high-risk. The academic behind the research told WTR that trademark protection is of limited help to combat such a widespread issue.
  • Spoke to Daniel Zohny, IP head at FIFA, about the intense workload taken on by his team during the 2018 World Cup and how they are preparing for future tournaments.
  • Considered what the future holds for Amazon’s bid for the ‘.amazon’ TLD after the Colombian government lodged a request for ICANN to reconsider its decision to proceed with the application.
  • Reported on the US Supreme Court’s decision in Iancu v Brunetti, in which the court held that the Lanham Act’s prohibition on the registration of “immoral [or] scandalous” trademarks violates the First Amendment.
  • Reached out to a number of leading trademark experts to explore the possible implications of the Iancu v Brunetti decision for applicants, the USPTO and the trademark ecosystem.
  • Presented the key takeaways from a UK Intellectual Property Office feasibility study of the options for a post-Brexit IP exhaustion regime.
  • Posted a guest blog exploring use of survey evidence and presenting takeaways with respect to survey methodology in §1071(b) Appeals.
  • Took a deep data dive into the meat alternatives market exploring filing trends and considering how traditional food manufacturers are reacting to the sector’s rising stars. 

And finally…

Get the inside track on brand protection online –  WTR is pleased to announce that, following a sold-out debut in Chicago, its Brand Protection Online event is heading to London on 14 October. A unique forum for brand professionals to discuss solutions to the challenges that arise when protecting trademarks online and share insight on how to prioritise enforcement efforts, the event programme will cover:

  • Developing a state-of-the-art online brand protection strategy
  •  Fighting infringement on e-commerce sites
  • Brand protection strategies for social networks and apps
  • Managing the changing domain name landscape
  • Data privacy and GDPR: working within the rules

Delegate places at the event cost £495 (excluding VAT) but – until 6 September – a saving of £100 is available when using the following code: BPO100. To register for Brand Protection Online Europe, click here.

 

Jonathan Walfisz

Author | Reporter

[email protected]

Jonathan Walfisz