28 Jan
2020

Japan Patent Office launches Trademark Fist, IP firm coronavirus response, and EUIPO updates Brexit information: 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 Pablo Escobar’s IP being put up for sale, the Singapore registry visiting Turkey, Malta joining DesignClass, the Tajikistan IPO giving its annual trademark update, and much more. Coverage this time from Trevor Little (TL), Bridget Diakun (BD), Jonathan Walfisz (JW) and Tim Lince (TJL).

Market radar:

Pablo Escobar’s IP up for sale – Escobar Inc (a company re-formed by Pablo Escobar’s brother) is auctioning off the late Colombian drug lord’s intellectual property rights for $1.9 million, reports Domain Name Wire. Pablo Escobar’s heirs had won control of the domain name PabloEscobar.com last year, and this asset, along with over 30 trademarks and much more, is being sold through Media Options. The estate was made available on 2 December 2019, and will be sold on a first-come, first-served basis. Media Options suggested that the portfolio could be monetised or commercialised in various areas such as books and movies. Netflix has already capitalised on the late drug kingpin, focusing on his story in its popular series Narcos. It is not uncommon for companies to pick up the intellectual property assets of well-known figures. Authentic Brands Group, for instance, actively acquires recognisable brands and licenses their marks. However, Pablo Escobar is an interesting case considering the violent nature in which he conducted his business, and the acquirer will have to be mindful of this when commercialising his brand. (BD)

Kobe Bryant filed a trademark for daughter’s nickname weeks before death – Legendary basketballer Kobe Bryant had filed a trademark for his daughter’s nickname before his tragic death earlier this week. The father and daughter duo died in a helicopter crash on 26 January. Bryant was 41 and his daughter, Gianna Bryant was 13 years old. The star had filed for the trademark ‘Mambacita’ at the USPTO for use on sportswear such as shirts, jerseys and hats, reports TMZ. The name is a nod to her father’s nickname in the sport, Black Mamba. (JW)

Atari and Woolworths enter new sectors – There have been two interesting examples this week of retro brands that appear to be entering sectors they are not known for. The first was announced on Saturday, when the Daily Mail reported that iconic British retail brand Woolworths – which was once a familiar sign on UK shopping streets until the business collapsed in 2008 – is set to relaunch this year as a car insurance company. The article speaks with entrepreneur Simon Burgess, who has purchased a domain and is seeking registered trademark protection for Woolworths. The reason for the relaunch is because Burgess’ grandfather’s name was Woolworth, so he wanted to setup a business to “take my birthright and create something for my children and grandchildren”. However, to do so, he didn’t want to launch a retail business as it would mean competing with Amazon. “This is something that is iconic and with financial services there is a potential,” Burgess said. “We are ready to move as soon as we get the green light from an insurance partner.” Elsewhere, Polygon has reported that retro video game company Atari is getting into the hotel sector. Atari Interactive, which holds the license for the Atari brand, has confirmed it plans to open eight Atari-theme hotels in the United States, promising they will be video game themed. Whether these two iconic brands will be successful in these new sectors remains to be seen, but it highlights the commercial opportunities that exist for well-known retro brand names. (TJL)

Legal radar:

Rouse announces coronavirus response – International IP law firm Rouse has confirmed some of the measures it has put in place following the ongoing coronavirus outbreak. The firm has staff based in Beijing, Shanghai, Guangzhou, Hong Kong and Shenzhen, and it announced in an email to clients that it is following the lead on government advice on what to do. For now, it is encouraging staff in Hong Kong to work from home wherever possible. In China, the State Council has announced that the Lunar New Year holiday has been extended until February 2, and Rouse is taking some decisive measures for the planned return of staff. “There are extensive travel restrictions in China and businesses generally are being actively encouraged to take whatever measures are possible to reduce the risk of the virus spreading,” the firm explained. “In the short term, among many other measures in our offices, our China based staff will be working from home, will not be travelling outside China and our offices in China will not be open to visitors until further notice.” Outside of the firm, the Chinese government has confirmed that all government offices and departments (including courts, the patent office and the trademark office) will reopen on February 3, and thus all official deadlines (including those related trademarks and patents) are extended until that date. (TJL)

Office radar:

EUIPO updates Brexit information – With the UK set to leave the European Union in the days ahead, the EU Intellectual Property Office (EUIPO) has updated its Brexit guidelines. In a blog post, the EUIPO states that, from an IP perspective, little will change after 1 February 2020 – at least until the end of the year. “The Withdrawal Agreement stipulates that during a transition period that will last until 31 December 2020, EU law remains applicable to and in the UK,” the representative says. “This extends to the EUTM and RCD Regulations and their implementing instruments.” Therefore, all substantive and procedural provisions before the EUIPO will remain the same as before until the transition period ends on 31 December. (TJL)

EUIPO brings back IP Case Law Conference – The next EUIPO IP Case Law Conference will be held later this year, following two previous events in 2016 and 2018. Arranged by the EU Intellectual Property Office’s Boards of Appeal, alongside the EUIPO’s International Cooperation and Legal Affairs Departments and the EUIPO Academy, it will be held in Alicante, Spain from 21-22 May. It will cover a wide range of topics, including the multiple facets of bad faith, the interplay between geographical indications and collective marks, and how IP rights intersect with new technologies (eg, video games, 3D printing, and blockchain). For anyone interested in attending, the EUIPO opened up registrations this week. (TJL)

Singapore IPO visits Turkey IPO – The Turkish IP Office (Turkpatent) has received a delegation from the Singaporean IP Office (IPOS) to discuss cooperation between the two registries. Those who attended the meeting included IPOS president Daren Tang and Singapore Ambassador to Ankara, Jonathan Tow. (TJL)

JPO launches trademark fist – The Japan Patent Office (JPO) has launched an ambitious awareness campaign aimed at local businesses struggling with counterfeit goods. The campaign, entitled “Trademark Fist: Mystery to Protect Business”, is based around the president of a company “mastering the trademark fist” (by obtaining registered trademark protection) to help “confront a counterfeit goods manufacturer”. The primary component of the campaign is an elaborate video featuring a businessman who fights people in a factory with his ‘trademark fist’ (featuring some impressive-looking special effects). It includes a dedicated ‘trademark fist’ website that explains the basics of the trademark system, and how to use such rights to enforce against fake goods. The campaign is primarily aimed at Japanese SMEs, which accounts for roughly 99.7% of companies in Japan (totalling over 3 million). However, the JPO notes that only 30,000 SMEs filed a trademark application in 2018, suggesting few understand the need for protected trademark rights. (TJL)

Spanish IPO promotes worst discounts in the world – The Spanish Intellectual Property Office (OEPM) has launched a new counterfeiting awareness campaign. Entitled “By saying no to fakes, we all win”, the campaign includes a micro-site explaining the risks of counterfeit goods and why consumers should buy originals. (TJL)

Tajikistan IPO gives annual update – The Tajikistan IP Office (NCPI) has published its annual update on IP activity in the Central Asian country. During 2019, 606 national trademark applications were received at the NCPI, with 306 from domestic applicants and 268 from foreign ones. On top of that, the registry received 2,309 trademark applications via the Madrid System. Across the year, 2,396 international applications passed through the examination process, with 1,488 reaching full registration and 578 being refused (with others reaching registration with changes). (TJL)

Five biggest IPOs meet to discuss joint Task Force – The five largest intellectual property offices – the European Patent Office (EPO), the JPO, the Korean Intellectual Property Office (KIPO), the China National Intellectual Property Administration (CNIPA) and the USPTO – held an inaugural meeting for their joint Task Force on new Emerging Technologies and Artificial Intelligence. The group of offices, dubbed the IP5, launched the task force at their annual meeting in Incheon, South Korea last June. It will explore the legal, technical and policy aspects of new technologies and AI, their impact on the patent system and on operations at all five offices. (JW)

Malta joins DesignClass – The Intellectual Property Office of Malta (IPRD) has announced it is now part of the EUIPO’s DesignClass tool. The move is part of the EUIPO’s European Cooperation Projects and will allow users to navigate the harmonised database of product indications before applying for registered design protection. The terms in the database can be searched in 27 languages, including Maltese. (TJL)

On the move:

Clark Wilson elevates Athar Malik to partner – Clark Wilson promoted five of its lawyers to partnership as of 1 January 2020. Athar K Malik, an IP lawyer and registered trademark agent in Canada,was one of these attorneys. Malik advises clients on all their trademark concerns. He prosecutes applications, handles trademark oppositions and cancellations in Canada, as well as coordinating international trademark issues. Malik is no one-trick pony and also provides guidance and counselling on general IP and copyright matters. His background in litigation also comes in handy, as he is able to guide clients to avoid potential issues. (BD)

Harrity & Harrity announces partner promotions – Harrity & Harrity has elevated Neil Kardos, Eli Mazour, and Elaine Spector to partner status, effective 1 January 2020. Kardos, a former primary patent examiner at the USPTO, focuses his practice on patent prosecution. Mazour has been with Harrity for about a decade and heads up the firm’s patent prosecution team. Spector has extensive experience in various fields of IP including patent drafting and prosecution, trademark prosecution and enforcement, and is also a skilled litigator. (BD)

Axinn expands to the west with three new hires – IP litigators Jeannine Sano, Eric Krause and Pan Lee, have joined Axinn’s San Francisco office. Sano, who was previously a partner at White & Case, handles complex IP cases across technology fields. Krause, who joined from Fenwick & West, focuses his practice on patent and trade secret cases, particularly within IoT, video streaming, display, mobile apps, smart home devices, WiFi, and semiconductor manufacture tools. Lee has been appointed to as Counsel, and will be formally joining the firm on 10 February. (BD)

And finally...

WTR returns to Chicago in March for Managing Trademark Assets and Brand Protection Online – With the incredibly successful London events still fresh in the mind, WTR brings Managing Trademark Assets USA and Brand Protection Online USA to the windy city. The back-to-back events on 3 and 4 March 2020 will provide an opportunity for attendees to learn best practice and insight from leading in-house counsel from the world’s biggest brands as they discuss their approaches to critical areas, as well as share their own insights with peers and colleagues. The sell-out events’ return to Chicago is not one to be missed. To sign up to attend Managing Trademark Assets USA, click here, and to sign up to attend Brand Protection Online USA, click here. (JW)

Jonathan Walfisz

Author | Reporter

[email protected]

Jonathan Walfisz