10 Sep
2021

CIPO backlog update; Georgian GI dispute; Puma partners with Nintendo – 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 current backlog of unexamined applications at the Canadian Intellectual Property Office, a new rapid authentication test for whisky, the latest warning about trademark scams, and much more. Coverage this time from Victoria Arnold (VA), Bridget Diakun (BD), Tim Lince (TJL) and Trevor Little (TL). 

Market radar:

Anaqua receives annual ESG award from Astorg – IP technology provider Anaqua has been recognised for its achievements in environmental, social and governance (ESG) matters, receiving the annual ESG award from global private equity firm Astorg, its majority shareholder. Every year, Astorg presents the award to the portfolio company that makes the most significant achievements in this area and demonstrates the highest commitment to Astorg’s ESG programme. “We presented the 2021 ESG Award to Anaqua for its achievements in gender diversity – with women now in 40% of senior executive positions at the company; ethics – for rolling out an ethics programme incorporating a code of conduct policy and training; and sustainability – for being the first software company in Astorg’s portfolio to calculate its carbon emissions for direct and indirect emissions and earning a Silver Medal Status with EcoVadis for ESG performance,” said Astorg’s ESG director, Viviana Occhionorelli. (TL)

Eluceda develops rapid authentication test for whisky – Detection technology provider Eluceda has developed a rapid and portable method of authenticating genuine whisky by detecting the unique electrochemical ‘taste’ of specific product batches. The authentication solution identifies the unique taste of a specific whisky – formed as a result of each drink’s specific chemical make-up – without the need for additives or other on-product security measures, the company states. Samples and consultancy for the feasibility study were provided by the Scotch Whisky Research Institute and tests have successfully identified genuine whiskies from those that have been diluted with water, ethanol or other whiskies, as well as from counterfeits. “Spirits are particularly vulnerable to a variety of issues from counterfeiting to refilling and dilution,” the company adds. “In this environment, the ability to authenticate bottles of whisky quickly and cost-effectively is increasingly important to ensure consumer confidence and brand reputation.” (TL)

Brand radar:

The Very Hungry Caterpillar adds new licensees to its portfolio – Eric Carle’s The Very Hungry Caterpillar has signed four licensing deals with the Great British TeePee Company, Findel Education, DNC and Gullivers Theme Park Resorts, reports License Global. New products are also being launched by existing partners of the World of Eric Carle, which are managed in the United Kingdom by Rocket Licensing through worldwide agent the Joester Loria Group. “It’s incredible to see so many new lines launching from our brilliant partners,” says Louisa Skevington, licensing executive at Rocket Licensing. “Consumers have been turning to heritage and nostalgic brands during these uncertain times, and ‘The Very Hungry Caterpillar’ is a firm favourite across generations over 50 years since it was first published. All of our partners create on-brand, bespoke, beautiful products which appeal to a range of ages and these new lines are no exception.” (BD) 

Rubber Road lands merchandise deal with Hasbro – Rubber Road has closed a new licensing deal with Hasbro to design, manufacture and distribute a range of official merchandise under its design arm, Numskull Designs. According to License Global, the company already produces merchandise for the Minions, Harry Potter, DC Comics, Sonic the Hedgehog, Back to the Future, Stranger Things, Jurassic Park, Star Trek, Ghostbusters, Lord of the Rings and Friends brands, among others. Through its partnership with Hasbro, the Numskull Designs team will introduce products for a number of franchises, including Transformers, Power Rangers, Dungeons & Dragons, Nerf and My Little Pony. “We are thrilled to be teaming up with Hasbro to work with some of the world’s best names in toys,” says Liam Taylor, commercial director at Rubber Road. “With a Transformers movie coming up in 2022 and a resurgence in Dungeons & Dragons, we are excited to be producing some fantastic merchandise that will appeal to fans old and new, big kids and little kids!” (BD)  

PUMA teams up with Nintendo – PUMA has announced a new shoe collection, developed in partnership with Nintendo, inspired by the Animal Crossing: New Horizons franchise. The collaboration will cover adult and children’s footwear, including the Suede, Wild Rider and Future Rider shoe silhouettes. A new clothing range will also be included as part of the launch. (BD) 

Legal radar:

Sakpatenti pursues illegal use of Sulgun GI in Estonia – The Georgian National IP Center (Sakpatenti) is pursuing a legal case over the illegal use of Sulgun, a protected Georgian geographical indication (GI) in Estonian territory. Following the discovery of various items and the initiation of legal action, products marked with the name ‘Suluguni’ have been removed from the shelves of Estonian supermarket chain Selver. A registry representative said: “Sakpatenti is actively involved in the protection of Georgian designations and geographical indications outside Georgia in order to prevent violations of the rights to Georgian designations and denominations and damage to their reputation.” (TJL)

Office radar:

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

Biannual European Cooperation visits get underway – The EUIPO and 29 national and regional EU IP offices are engaging in the second round of the biannual European Cooperation technical visits, which are scheduled to run until 1 October in a virtual format. The office states: “Technical visits are a key component of the collaborative work carried out between the EUIPO and the national and regional EU IP offices, which, in turn, benefit users and help build a stronger IP system in the EU. During the meetings… [the parties] will discuss the European Cooperation Projects’ progress and next steps and the roadmap for future initiatives in support of small and medium-sized enterprises.” The next round of technical visits is due to take place in February 2022. (TL)

CIPO backlog exceeds 175,000 unexamined applications – The backlog of unexamined applications at the Canadian Intellectual Property Office (CIPO) has exceeded 175,000 this week, reaching 175,073 on 6 September, reports Blake R Wiggs at Canadian Trademark Intelligence. That is a net increase of more than 13,200 since the end of April (26 April 2021), a period in which activity would have been expected to quieten down for the summer. The CIPO website, which has begun to publish the dates of applications currently at examination, states that applications not using the pre-approved list of goods and services date back to December 2018. However, filing dates for the 175,000-plus applications awaiting examination seem to extend back as far as April 2018. Ongoing delays in examination at CIPO are causing huge headaches for applicants, practitioners and examiners alike. In May CIPO issued two new practice notices to address the delays, with additional measures in the pipeline to reduce first examination time to 18 months by March 2025. The latest data suggests that the backlog is going to get worse before it can get better. (VA)

Poland IP office warns of scam emails – The Poland Patent Office (UPRP) has issued a warning around new cases of a fraud campaign, which seeks to extort money from clients of the registry. The office claims that emails were sent from an address purporting to be part of the Polish government (‘[email protected]’) requesting payment for the registration of a trademark, with a deadline of a day after the email was sent. The email request includes a bank account number that is not associated with the UPRP. The office has informed users that it never sends decisions or letters via email, and has explained the actions that it istaking to protect users. “The procedure of blocking bank accounts with the numbers indicated in false emails was initiated,” a representative said. “The office is also in constant contact with law enforcement agencies. However, we kindly ask you to be extremely vigilant.” (TJL)

Domain Radar:

ICANN board prepares for weekend workshop – The ICANN board kicks off its September workshop tomorrow. Board chair Maarten Botterman has previewed the proceedings on the ICANN blog. The agenda includes a discussion about an operational design phase to examine the community's policy and planning work around launching the next application round of gTLDs, as well as an exploration of issues raised in the most recent Governmental Advisory Committee (GAC) Communiqué. On Sunday the board will finish up the drafting process for its fiscal year 2022 operational priorities. On Monday there will be a briefing from the teams working on Phase One of the Review of All Rights Protection Mechanisms in All gTLDs Policy Development Process. (TL)

Law firm radar: 

Rouse appoints new global head of consultancy division – Global IP services business Rouse has announced the appointment of Thomas Randes to global head of Rouse Consultancy. Randes, who is based in Stockholm, joined the agency in 2019 when it acquired Swedish innovation law firm IPQ, which he founded in 2004. Randes will be supported by regional consultancy heads Tim Smith, who is moving into the UK role, and Linda Chang, who is based in China, as well as teams in Europe, the Middle East and Southeast Asia. Jeremy Newman, the previous global and UK head of the consultancy, is taking on the role of Rouse’s chief commercial officer, but will remain as a principal in the consultancy team. “I am delighted to welcome Thomas to his new role,” said Newman. “He has years of consultancy experience from his work with IPQ and will use it to take Rouse Consultancy to greater heights. We have been working together over the last couple of months to hand the role over and I know I leave the team, clients and service in good hands.” Randes further commented: “To enable organisations to create profitable IP has been my primary focus for more than 10 years. I am therefore looking forward to working with the global consultancy team to identify ways to take our services to more of Rouse’s clients and beyond.” (BD)

New IP law firm established in Finland – Former Kolster lawyers Jani Kaulo and Maria Puronvarsi (née Ojala) have founded a new boutique IP law firm in Finland, KAULO & PARTNERS. Managing partner Kaulo established the Helsinki-based firm with the goal of providing the highest quality trademark and legal services to domestic and international clients at competitive prices. Maria Puronvarsi has joined as partner, with two Kolster paralegals also moving to the new outfit. (TL)

And finally... 

WTR events to take place in Europe and the United States WTR is hosting a series of one-day events in London, San Francisco, Chicago and New York this December. WTR Live: The Future of Trademark Management and Brand Protection will facilitate discussion, benchmarking and the sharing of best practice around key topic areas and challenges facing brand leaders. Crucially, it will offer a glimpse into what industry leaders expect the future of trademark practice to look like. Registration is free to in-house brand professionals. Spaces are limited and should we be unable to host the event, registration fees will be fully refundable. While on site, we will be adopting the All Secure Standard to ensure that all attendees can continue to do business effectively and network with their peers safely. For full details, and to reserve a place, see the official event page

Victoria Arnold

Author | News Reporter

[email protected]

Victoria Arnold

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