31 May
2019

KIPO launches all-women anti-counterfeiting group, Make Canada Great Again suit, and cannabis brands: news digest

Every Tuesday and Friday, WTR presents a round-up of news, developments and insights from across the trademark sphere. In our latest news digest, we look at an anti-monopoly committee in Uzbekistan clamping down on Coca-Cola copy, rock band Iron Maiden launching a lawsuit against Duke Nukem video game maker 3d Realms, the BBC drawing ire for perceived slogan nabbing, and much more. Coverage this time from Trevor Little (TL), Bridget Diakun (BD), Jonathan Walfisz (JW)  and Tim Lince (TJL).

Legal radar:

Tsinghua University enters into legal spat with kindergartens – One of China’s most prestigious education establishments, Beijing-located Tsinghua University, has filed trademark complaints against  multiple kindergartens, reports China Daily. With over 400 different businesses registered as “Tsinghua Kindergarten” without any official association to the university, the establishment has been involved in several separate cases concurrently. On 8 May, multiple different cases were heard. One defendant in Shicheng county, Jiangxi province claimed that “Tsinghua” is a word historically traceable to the Eastern Jin Dynasty (317-420) and that Tsinghua in Jianxi and a Tsinghua avenue in Shicheng county 1,000 km from Beijing. Another defendant in Ganzhou argued the university’s trademark was for the traditional Chinese characters for Tsinghua, while their kindergarten was found before the registering of the simplified characters. This isn’t the first time the university has got litigious. In 2017, they were awarded RMB 500,000 ($72,320) in damages from a technology company in Guangdong. (JW)

Anti-monopoly committee in Uzbekistan clamps down on Coca-Cola copy – Frutto Cola has been ordered to change their branding after Uzbekistan’s anti-monopoly committee found it was infringing upon Coca-Cola’s well-known trademarks. As reported in Eurasianet, this signals a paradigm shift for the country in protecting the IP of foreign brands. The anti-monopoly committee was set up in January 2019 by Uzbekistan’s president Shavkat Mirziyoyev. It comes after a complicated history with respecting foreign IP, ranging from the humorous ‘King Burger’ restaurants to the potentially deadly passing off of Indian and Ukrainian pharmaceuticals by Uzbek counterfeiters. (JW)

Charges are laid a year after the investigation into Canada’s notorious Pacific Mall – An investigation into Pacific Mall, located in Markham in Canada, was undertaken by police in April 2018 after numerous complaints of the sale of counterfeit goods. For locals this will come as no surprise, the shopping centre is notorious for selling ‘shady’ products. The raid was conducted in June 2018, with officers seizing thousands of counterfeits, including a number of luxury brands. Charges have now been brought against eight people for ‘knowingly or recklessly making false representation to the public and selling or distributing goods in association with a trademark’. (BD)

Beautyblender sues distributor over appearance of products in Costco and T.J. Maxx – Beautyblender, which sells a popular makeup sponge, has sued its German distributor New Flag, citing that it had wrongly supplied its products to a third-distributor. According to The Fashion Law, Beautyblender was monitoring its market when it found that products with the ‘beautyblender’ mark were being sold in the US at Costcos and TJ Maxx stores. These retailers were supplied with merchandise from White Diamond Cosmetics Ltd, which is based in New Jersey and not an authorised Beautyblender retailer. A search by barcode found that the products had originally been supplied to New Flag, which is an authorised retailer but is limited to Germany, Austria, Switzerland, Czech Republic and Slovakia. Since the makeup sponges in TJ Maxx and Costco are not the ones authorised to be sold in the US, Beautyblender has deemed these to be illegal grey market goods. Thus Beautyblender has initiated a lawsuit against New Flag for ‘breach of contract and breach of the covenant of good faith and fair dealing in connection with its distribution agreements with TJ Maxx and Costco, as well as claims of contributory trademark infringement and unfair competition’. The company is further seeking monetary damages and injunctive relief, as well as require the impounding and destruction of any of the grey market goods distributed by New Flag. (BD)

Iron Maiden accuses video game creators of trademark infringement – Iron Maiden recently made headlines for filing a lawsuit against 3D Realms, a popular video game developer which produced a game called ‘Ion Maiden’. The band argues that it is not just the name of the game which is strikingly similar, but it also has to do with the main character as well as the overall appearance of the product. Iron Maiden has produced its own video games, and it alleges that Ion Maiden copies a number of attributes from these. The case has been filed in California, with the band seeking an injunction as well as damages. (BD)

Make Canada Great Again trademark dispute kicks off – Hudson’s Bay Company is being taken to court in Canada for alleged trademark infringement of a political slogan. The case – which can be read in full here – has been brought by Rebel Media, a Canadian far-right political and social commentary media company, which alleges that Hudson’s Bay has sold, among other things, hats carrying the slogan “Make Canada Great Again”. According to a local media report, Rebel Media claims that it has used the trademark “continuously and extensively” in Canada “since at least as early as February 15 2015” – and the trademark application for the slogan was registered in Canada on March 5 2019. Rebel seeks unspecified damages for trademark infringement, with a claim exceeding $50,000. According to one expert, Graham Reynolds from the University of British Columbia’s Peter Allard School of Law, the case could be an interesting one because of its clear link to Donald Trump: “I think that the fact that the slogan is tied to the slogan that’s used in the US would make it a notable case, but in some ways it seems like a standard trademark-infringement lawsuit.”

Office radar:

KIPO launches women-led counterfeiting task-force – The Korean Intellectual Property Office (KIPO) has announced the launch of a new ‘Home Monitoring Group’ tasked with identifying and reporting counterfeit goods online. The task-force was set up by the KIPO to “prevent the distribution of online counterfeit goods” in Korea, and involved the registry selecting 110 home monitoring staff to search for fake goods from their home. Uniquely, the KIPO revealed that the home monitoring team is “composed of all women”, explaining: “This is to increase the rate of detection of counterfeit goods by utilising the know-how of women who are familiar with brand names and online shopping, and to help women return to economic activity after cutting off their career due to childbirth and childcare.” To that end, then, the team consists of “91.8% women in their 30s and 40s, whose career was cut off due to childbirth and child-raising”, with an employee from the taskforce commenting: “I worked in the late 20s, but in my early 30s I had to give up my job due to childbirth and childcare. I am working as a home monitoring team at this opportunity, and I knew that counterfeit products were being distributed online, but I did not know much about them until now, and I realised that distribution of counterfeit goods is a serious problem.” (for some cultural context, discrimination against working mothers is a significant issue in South Korea) As well as announcing the launch of the taskforce, KIPO also revealed data from its first month – and the results are impressive. In all, the group reported 18,105 cases of counterfeit goods being sold on online marketplaces – made up primarily of bags (5,624) and shoes (4,609). Brands involved in the group’s takedowns include Gucci (2,548), Louis Vuitton (1,759), Chanel (1,759), Nike (927) and Valencia (861). The registry’s aim is to remove at least 100,000 counterfeit goods from online marketplaces by the end of the year – and, with over 18,000 reported in its first month, it appears the work of the Home Monitoring Group could make that target easily achievable. (TJL)

Market radar:

Cannabis brand acquisition announced as company eyes market expansion – Organic Flower Investments Group has announced that it has entered into a definitive agreement to acquire all of the issued and outstanding shares of Trichome Cannabrands, an Ontario-based branding and licensing company with a diversified portfolio of cannabis product and service trademarks registered in Canada. The release announcing the move notes that, following legalization, Trichome has engaged in “an aggressive cross-Canada branding strategy for the newly bourgeoning cannabis industry” and has been able to capitalise on a series of un-registered trademarks for exclusive use within the cannabis industry. Trichome also now has a portfolio of 57 registered trademarks in Canada for a diversified range of cannabis products and services, including medicinal and recreational cannabis, CBD‐infused performance products, vape products, cosmetics, edibles and beverages. Joel Dumaresq, CEO of Organic Flower stated: "Trichome Cannabrands has developed an impressive stable of high-value trademarks with immediate brand recognition in various communities. The number of registered marks and the robust coverage of the registration with the Registrar of Trademarks in Canada, allows Organic Flower to immediately utilize these marks across its diversified holdings and enhance its marketing and distribution efforts in Canada and other international jurisdictions.” As the cannabis market expands and becomes more competitive, brand use will become increasingly valuable and this deal provides a significant boost for Dumaresq’s company. (TL)

Media watch:

BBC draws Twitter ire for perceived slogan nabbing – British athlete Dina Asher-Smith is captured, frozen in her stride and embracing victory, on a billboard by BBC Sport promoting the London Anniversary Games. Behind her is the motivational slogan “Slay in your lane”. All in all, an excellent, tonally-precise piece of marketing. Except the BBC are now being accused of plagiarism by Yomi Adegoke, co-author of the book “Slay In Your Lane”, an inspirational life guide for black British women. The title was registered as a trademark in July under a huge number of terms in classes 25 and 35, including advertising. The accusation has gained publicity through Adegoke’s Twitter, on which she called the broadcasters out for “arrogantly assuming” that the slogan wouldn’t have a registered trademark. The BBC has responded that they “sought legal advice before going ahead”. Although Adegoke has not claimed whether she will seek legal action, the publicity of her accusations should make brands take note. (JW)

Domain radar:

A reminder of the power of ‘.brands’ – Over on Domain Incite. Kevin Murphy has published an unofficial list of the top ten most-used ‘.brands’. The list includes ‘.abbott’ (pharmaceutical company Abbott Laboratories using the TLD to host 57 sites), hypermarket retail chain e.Leclerc’s ‘.leclerc’ (which utilises an innovative redirect function in search) and ‘.BMW’ (the auto giant used for template-driven dealer sites bd call to action domains). At a time when the decision by first round ‘.brand’ applicants to not proceed with their TLDS often grabs headlines, the piece is a reminder that a number of companies are using their TLDs in innovative ways. (TL)

Coachella loses fight over “Chella” domain – The National Arbitration Forum (NAF) has ruled against Coachella in its challenge against the domain name registration of “chellastore.com”. The US music festival argued that the domain infringed upon the well-known CHELLA mark associated with the festival and contended that the domain had been registered in bad faith. The single member NAF panel found that the respondent was not acting in bad faith as their childhood nickname was “Chelle”. Furthermore, Coachella’s argument that the CHELLA mark was well-known was ruled against on the grounds that all the evidence presented were in relation to their COACHELLA mark. (JW)

On the move:

Carlton Fields hires industry heavyweight – Carlton Fields has announced that Clark W Lackert has joined the firm’s New York office as a shareholder and member of the firm’s intellectual property practice group. Lackert focuses his practice on trademark, copyright, domain name, licensing, and anti-counterfeiting matters, both in the US and internationally. He has more than two decades of experience in all aspects of trademark and copyright laws, including conflict and litigation cases, acquisitions and divestitures involving due diligence for intellectual property assets, licensing and franchising, enforcement actions, and global portfolio management. (TL)

Kilburn & Strode bolsters trademark team  Kilburn & Strode has welcomed Monika van Zijl to the firm as a trademark attorney based in its Hilversum (Amsterdam) office. She brings over a decade of experience managing trademark portfolios across multiple sectors, such as theme parks, baby essentials, sports clothing, animal feed, convenience stores, petrol stations, and more. (TL)

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)