7 Jun
2019

First INTA 2020 reception invite, Tom Brady fumbles trademark application, and Toys “R” Us brand returns: 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 highlights from the USPTO’s anti-counterfeiting conference, a misjudged cannabis trademark, Alibaba’s plan to use blockchain technology for its IP protection system, RedBubble being sued, and much more. Coverage this time from Trevor Little (TL), Bridget Diakun (BD), Jonathan Walfisz (JW) and Tim Lince (TJL).

Market radar:

The INTA 2020 reception merry-go-round is already underway – After a busy INTA Annual Meeting in Boston, the WTR team is now settled back onto UK time and fully dried out after a series of (it has to be said enjoyable) boozy law firm receptions. What better time, then, to start planning our evenings for Singapore next year? INTA delegates are long accustomed to a series of law firm bash invites, usually in quick succession once the early announcers have made their move, a couple of months before the Annual Meeting kicks off. This year, though, WTR has already received its first official invite for next year’s gathering, with law firm Taylor Wessing surely setting a new early announcement record. I won’t reveal the precise time and venue (after all, it’s not my party) but count us in. Only 325 days to go… (TL)

USPTO anti-counterfeiting conference covers multiple bases – Attendees collected at the USPTO headquarters in Washington DC yesterday to discuss how the US federal government is working with brands to combat counterfeits. In her opening remarks, Mary Boney Denison, USPTO commissioner for trademarks, highlighted the severe risk counterfeit goods put to consumers directly – fake medicines and dangerous tech goods – and, indirectly, the funding of criminal and terrorist organisations. Andrei Iancu, director of the USPTO, discussed the importance of the US’s role in targeting a fake goods market worth $500 billion worldwide, equalling 3% of all trade. Notably, 24% of all seized counterfeit and fake goods refer to US trademarks – more than any other nation. In a subsequent one-on-one conversation, Tanya Fickenscher, vice president and deputy general counsel for Major League Baseball, discussed the counterfeit challenges affecting the nation’s pastime. She spoke about tackling the proliferation of counterfeit goods that exist “offline and increasingly online”, with the latter increasingly becoming harder to spot. A recurring topic of the conference: online counterfeiters are no longer touting shoddy imitations of market sellers. Now, online counterfeits are sold through legitimate third-party marketplaces, at prices close to the authentic goods, and using official images of the authentic product. At MLB, Fickenscher oversees “hundreds of thousands of online takedowns and seize tens of thousands of products” globally every year. Another issue is counterfeiters operating through fake domains. Last year, MLB filed “16 lawsuits in Chicago to take down a swathe of domains in one go”. As Fickenscher made clear, combating counterfeiters is a continuous challenge, but one necessitated by businesses wanting to protect their brands and consumers from the harm they can bring. (JW)

The award for best fish-related press release pun goes to… – Yesterday (6 June) was World Anti-Counterfeiting Day, which aims to raise awareness of the problems associated with counterfeit goods, as well as piracy. As to be expected, WTR’s inbox was full of press releases designed to appeal to those seeking a story around the theme. The downside for senders is that their release is likely one of many and may get missed. Shout out, then, to The City of London Police. Hot on the heels of World Anti-Counterfeiting Day is the UK’s National Fish and Chip Day. What better occasion to warn about fishing? I mean phishing. A release issued today, titled ‘Make sure you mullet over before you fall victim to phishing emails on National Fish and Chip Day’, notes that Action Fraud received over a quarter of a million reports of phishing between April 2018 and March 2019, with the most commonly spoofed sectors being telecoms companies, technology brands and government organisations. As such, Commander Karen Baxter, national police coordinator for economic crime at the City of London Police, warned: “Fraudsters often use spoofed phone numbers and email addresses to trick you. If you receive a message claiming to be from a well-known brand or organisation, always check directly with that brand or organisation to see if it is legitimate. If something feels wrong then it is usually right to question it.” As an example of how to jump on a seemingly unrelated occasion to highlight an IP issue, this arguably couldn’t be battered. I mean bettered… (TL)

Toys “R” Us brand rises from the ashes – In February 2018, iconic toy retailer Toys “R” Us went into administration after falling sales over a number of years. Following its move into administration, the future of the Toys “R” Us brand portfolio became the subject of speculation after it emerged that the company’s intellectual property was to be sold in order to pay creditors (including the Babies “R” Us brand, the Geoffrey the Giraffe logo and a range of domain names including ‘lodges-r-us.com’, ‘recipes-r-us.com’ and ‘cigars-r-us.com’) – a move claimed would result in “one of the most valuable brands ever sold by a failed company”. However, a year later, a new company emerged with “new leadership and a new vision to deliver the magic of its iconic brands around the world” – and pledged to revive the brand rather than sell it off. This week, that promise came to fruition thanks to a licensing deal struck between US owning corporation Tru Kids and Australian company Hobby Warehouse. According to Pedestrian.tv, the move “will largely take the form of an online store for the time being, which will begin shipping products Australia-wide from June 12”. The move is a demonstration of the sheer power of trademarks – that despite a business model struggling, an iconic trademark can still be used in a different, profitable way. (TJL)

Beware the misjudged cannabis trademark – This week a selection of Allen & Overy’s lawyers gathered to discuss the blooming cannabis market and the opportunities presenting themselves as it edges towards the EU. The market is currently worth $150 billion worldwide and is estimated to grow to $272 billion by 2028. Select EU member states are evolving their laws relating to the growing market individually; for example, the UK and Germany have legalised medicinal use of cannabis in the last two years. At the brief, Eveline van Keymeulen, counsel and cannabis sector lead, discussed the growing market of well-being products that will inevitably grow in the EU market as it has done in the Canadian one. David Por, partner at the France office, considering the impact on brand strategy, said “There is nothing to stop a brand registering with the UKIPO.” Unlike in the USA where cannabis product trademarks can only be registered on a state level, the EU does not restrict the registration of trademarks for products that are not currently legal to sell. Despite this, Por says “there is not a huge incentive to invest.” His colleague and London partner Jim Ford explained “it’s still early days” and that brands may want to proceed with caution before registering cannabis trademarks in the EU. A misjudged trademark could still bring in unwanted associations with their current brand due to the persistent taboo surrounding cannabis. (JW)

New Age adds health-oriented brands to its portfolio – New Age, an organic and natural beverages company, has signed an agreement with Brands Within Reach to acquire the licensing and distribution rights to Nestea, Volvi, Illy Ready to Drink Coffee, and Evian, among others. (BD)

EUIPO reports losses of almost €60 billion to counterfeits – The 2019 report from the European Union Intellectual Property Office (EUIPO) was published this Thursday. It detailed that counterfeits were costing EU businesses up to €60 billion annually, or 7.4% of sales. As written about in the Irish Times, the clothing, footwear and accessories sector – the largest in sales – estimates over €28 billion, or 9.7% of sales lost yearly. Currently, the EU is seizing €12 billion of counterfeit goods, a fraction of the total estimated counterfeit EU imports (6.8%). The main offenders are Hong Kong, China, Turkey, the UAE, and India. (JW)

Alibaba to integrate blockchain into IP system – Chinese online marketplace giant Alibaba has confirmed it will integrate blockchain technology into its IP protection system from this September. According to Sohu, Alibaba’s director of intellectual property protection Ali Xizhi has announced that the company “is in the process of upgrading the filing of intellectual property rights by utilising blockchain”, adding that the system will “allow electronic deposits from international brands to directly link to the Internet Court through the blockchain-based ‘Ali Intellectual Property Protection Platform’, providing a basis for litigation rights protection”. The move is the latest in a long line of businesses and government agencies using blockchain to further shore up its security defenses (indeed, earlier today we wrote about a move from IP Australia to create ‘smart trademarks’ using blockchain technology). The innovative move is a sign, then, that Alibaba is continuously upgrading its brand protection capability. (TJL)

Legal radar:

Unilever and FDA team up to warn consumers over counterfeits The Food and Drug Administration (FDA) of the Philippines has issued a public warning against the purchase and use of Pond’s Pure White Mineral Clay Mask D-Toxx Treatment. The organisation, in coordination with Unilever Philippines, verified that the product is counterfeit and therefore has not gone through the required safety assessment and the verification process of the FDA. In addition to this instance, the FDA advises the public to be vigilant against cosmetic products that might not be duly notified with it. To assist in this effort, it has established an embedded search feature on its website, which allows consumers to check that they are purchasing legitimate, safe products. This collaboration between rights owners and the authorities serves as a reminder of how, together, they can better protect public safety and fight back against the dangers created by fake goods. (TL)

RedBubble sued over trademark infringement – Brandy Melville has filed a suit in California against RedBubble for alleged infringement of the company’s trademarks, counterfeiting, false designation of origin and unfair competition. The retailer alleges that it became aware of RedBubble selling products which used its trademark back in May 2018. Brandy Melville is seeking injunctive relief as well as ‘compensatory damages of three times its actual damages or three times RedBubble’s profits, whichever is greater, together with its attorney’s fees’. (BD)

Media watch:

Tom Brady may have just fumbled his application – New England quarterback Tom Brady generated media headlines – not all positive – when it was revealed that he had applied for the TOM TERRIFIC mark. The application was to cover for merchandise using the phrase, and related to a phrase that had been use in relation to his on-field exploits. However, hell hath no fury like a sports fan and the Twitter backlash was immediate – New York Mets fans countering that the title pre-dated Brady and was associated with (but never registered by) former New York Mets Hall of Fame pitcher Tom Seaver. This week Brady attempted to dispel concern over the applications, explaining: “I was actually trying to do something because I didn’t like the nickname and I wanted to make sure no one used it because some people wanted to use it. So I was trying to keep people from using it, and then it got spun around into something different than what it was.” But wait – that sounds like an admission of no intent to use. Whether this application proceeds to registration remains to be seen, but Brady is clearly more effective on the field throwing the pigskin than opining on trademarks. (TL)

Domain radar:

India’s largest domain registry bankrupt and blocked from selling gTLDs – Net4 India has been ordered by the courts to pay $28 million, or almost two billion rupees, back in bank loans, reports Domain Incite. India’s largest ICANN-accredited registrar, Net4 boasted over 100,000 gTLD domains, the vast majority in ‘.com’. It was reported to have taken out loans from the State Bank of India over the period 2002-2012. After defaulting on the loans in 2014, the debts were acquired by Edelweiss Asset Reconstruction, who’s subsequent lawsuit was decided upon this March. In response, ICANN has suspended Net4’s ability to sell domain registrations or accept incoming transfers. If Net4 don’t demonstrate compliance with ICANN by 28 August, itmay start termination procedures. (JW)

On the move:

Dickinson Wright unveils new members – Dickinson Wright has announced that Scott McBain and Paul Rodriguez have joined the firm’s Troy office as members. McBain concentrates his practice on domestic and international IP procurement and counselling, transactions, as well as strategies for the protection and enforcement of IP assets. Rodriguez has extensive experience in many areas of intellectual property law, with a focus on patent and trademark matters. (TL)

Greenberg Traurig moves to boost its southeast IP practice – Alan N Sutin, the senior chair of the global IP practice at Greenberg Traurig, has moved to the Miami office to help expand the practice in the southeastern region. Sutin had worked in the firm’s New York office for 25 years. (BD)

Ulmer partner appointed to diversity committee Ulmer & Berne has revealed that partner Rachael L Rodman has been appointed as a member of the Intellectual Property Owners Association (IPO) Diversity & Inclusion (D&I) Committee, which is dedicated to establishing organizational focus around and executing programs based on diversity and inclusion. The committee recommends new policies to the IPO board; promotes diversity in IPO’s programs; ensures other IPO committees incorporate D&I into their activities and recommendations; creates educational materials to promote D&I efforts in the IP profession; and oversees the creation and maintenance of resources groups. (TL)

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:

  • Spoke to a law firm practitioner about the pros and cons of moving from a big law environment to a boutique;
  • Explored the interplay of parody and trademark law in Canada, following a Quebec court’s ruling in a high-profile case centred on a satirical news site;
  • Presented the key aspects of Finland’s new Trademarks Act, asking leading experts about what international rights holders should be aware of;
  • Considered the implications of an Institute for Public Policy Research, which recommended that plain packaging be extended to confectionery, crisps and high-sugar drinks in the UK;
  • Analysed recent changes in China’s IP enforcement landscape, which have resulted in the newly formed Food and Drugs Crime Investigation Bureau taking on responsibility for IP crime investigations;
  • Assessed a report from The International Chamber of Commerce Business Action to Stop Counterfeiting and Piracy, which contained a series of recommendations on how Vietnam can better protect intellectual property;
  • Explored how Natura’s keen understanding of its consumer base, combined with previous acquisitions, has it poised to take on international expansion;
  • Reported on US President Donald Trump’s intention to impose a series of escalating tariffs on all goods imported from Mexico. The move is one for rights holders to follow closely as it could have a significant impact on trademark practice.

And finally…

WTR launches new-look magazine – The latest issue of WTR magazine is live online, and subscribers will note a major number of changes to the magazine and new types of content, all designed to maximise the value of their subscription. For more information on all the changes, you can view our blog here. (TJL)

Jonathan Walfisz

Author | Reporter

[email protected]

Jonathan Walfisz