22 Jan
2019

Louis Vuitton enforcement lessons, ‘.amazon’ deadline set, and Ivanka Trump trademark storm: 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 the multi-trillion dollar toll of counterfeiting, a huge seizure of fakes in the UK, claims that the ITC should be considered for trademark cases, a Vietnamese restaurant’s 2013 trademark backlash rears its head, and much more. Coverage this time from Trevor Little (TL), Adam Houldsworth (AH) and Tim Lince (TJL).

Market radar:

The $3.1 trillion toll of counterfeit wine Northumbria University Professor of Law Anqi Shen has estimated that the global wine counterfeiting industry ‘will be worth $3.1 trillion by 2022’ and called on more effective anti-counterfeiting measures to be developed to fight fake winemakers in China. In an interview with The Epoch Times, which notes that China now is now the world’s second-biggest wine consumer market, Shen highlighted the need for tighter regulatory controls over the counterfeiting industry and efforts to discourage fake wine producers from illegal conduct, stating: “China’s huge wine market attracts local and global counterfeiters who are aggressively profiting from the making and selling of fake Australian and European wines.” One cited example of how to fight back is Australia's Smart Trademark digital platform, which allows consumers and businesses to check whether a product is official or counterfeit. It is worth noting, however, that the $3 trillion figure appears to be “taking the attributed loss in value from counterfeits for ‘all’ industries as the wine loss”, according to one tweet. Nonetheless, anti-counterfeiting efforts are to be encouraged, although their ultimate success will rest on whether they can encourage buyers to check before buying. Without consumer buy-in, the counterfeiters will continue to capitalise on the goodwill of third-party wine brands. (TL)

Sugar most seized illegal good in Kenya – It has been reported that illicit sugar was seized by Kenya’s Anti-Counterfeiting Agency (ACA) more often than any other illegal product in a recent campaign. Confiscated in May and June of 2018, the sugar had a value equivalent to $52 million, which is several times greater than the value of other categories of other illicit goods, such as alcohol, tobacco and electrical goods. This comes jshortly after the country experienced a national scandal when 400,000 bags of falsely labelled sugar were revealed to unfit for human consumption. (AH)

UK police seize £2.5 million of luxury goods in raids – A large quantity of counterfeit handbags, watches and perfumes has been discovered as the result of two raids conducted by police in Birmingham, UK early this month. The stash, worth £2.5 million and including fake versions of Michael Kors, Chanel, Armani, North Face, GHD and Dior products, was seized from a residential property, a storage unit and four vans, according to Securing Industry. The raids were made as part of National Trading Standards’ and the National Markets Group’s Operation Beorma, which seeks to tackle the supply of unsafe products and counterfeits. (AH)

More Ivanka Trump trademarks sparks ire – According to numerous media reports this week, the Chinese trademark office has granted Ivanka Trump – daughter of US President Donald Trump and a senior advisor in the White House – preliminary approval for five trademarks earlier this month. It follows ongoing IP trade war negotiations between the US and China, with some media articles claiming the approval of the trademarks could be related. “Critics argue that by asking a foreign government for valuable intellectual property rights, White House officials could open themselves to pressure in government negotiations,” claims one report. “There is also concern that the family’s global trademark portfolio would open the way for lucrative business opportunities once Donald Trump leaves office.” There have been prior articles on Chinese trademark approvals from the so-called First Daughter, including past coverage in November, which repeats such claims. However, the Chinese trademark office has repeatedly stated that “all trademark applications are treated equally under the law”. Debate will continue; and expect more articles the next time any Trump-related marks are approved. (TJL)

Legal radar:

Enforcement lessons from Louis Vuitton – Over on Lexology, Victoria E Ellis and Peter Law of Knobbe Martens have considered how Louis Vuitton's brand protection strategy might increase the opportunities for brand owners to combat infringement. In their article, they consider the company's recent filing of a complaint in the US, against a number of entities and individuals, alleging counterfeiting, trademark infringement, false designation of origin, and trademark dilution. The claim, note the authors, is interesting because Louis Vuitton’s trademark registration strategy allows it to assert three counts of trademark infringement, three counts of trademark counterfeiting, and three counts of trademark dilution for each infringing article of clothing. They write: "Because it has separately registered individual elements of a complex design, it asserted one count for each category. Louis Vuitton also asserted a federal false designation cause of action and several state and common law causes of action, using the separate mark groups for most of these as well." They conclude: "Louis Vuitton’s strategy of separately registering the individual elements of a pattern, could entitle Louis Vuitton to greater monetary damages if the defendants are found to infringe all the asserted marks. This brand protection strategy also gives Louis Vuitton an additional opportunity to assert its trademarks against potential infringers that make slight alterations to portions of the toile monogram design mark. For brand owners, this case highlights the potential advantage of registering individual elements of a pattern or design." (TL)

Federal circuit vacates TTAB refusal to trademark GUILD MORTGAGE COMPANY – The US Court of Appeals for the Federal Circuit recently overturned and remanded a decision by the USPTO’s Trademark Trial and Appeal Board to refuse to register a trademark applied for by Guild Mortgage Company. The California-based mortgage company had sought to protect its own name and a related logo in international class 36, but was denied on the grounds that the mark was likely to be confused with GUILD INVESTMENT MANAGEMENT, registered by a fellow California company of that name. The marks, nature of services and trade channels were sufficiently similar to cause confusion, the examiner concluded. However, the CAFC found that the board failed to consider all of the relevant evidence and directed to point 8 of the DuPont standard, which is used for assessing likelihood of confusion under US trademark law. Point 8 - which requires that the board consider “the length of time during and conditions under which there has been concurrent use without evidence of actual confusion” - is 1 of 13 points that must be considered when they are of record. The board, it was decided, erred by failing to consider Guild’s arguments and evidence that it had co-existed without confusion with the other company for 40 years. (AH)

The ITC: not just for patents Jones Day's Elizabeth McKenzie has authored an article urging rights holder to not think only of patent cases when considering filing actions at the International Trade Commission (ITC) under section 337 of the Tariff Act of 1930. While the majority of such cases are indeed focused on patents, she notes that the ITC can be a powerful forum in which to enforce trademark or trade dress rights. As an example she points to BIC Corporation's recent complaint centred on the illicit importation into the United States, sale for importation, or sale after importation of six respondents’ pocket lighters because they allegedly look too much like BIC’s pocket lighters. In that filing, BIC requested that the ITC issue a general or limited exclusion order and cease and desist orders to protect its brand interests. While she notes that the investigation into the matter has not yet been concluded, McKenzie concludes: "The ITC can provide a powerful tool for protecting intellectual property by barring the entry of infringing goods into the country. It is thus important to remember that this remedy is available not only to patent holders, but copyright and trademark holders as well." (TL)

IPEC decides first case outside London – APT (the Association for Psychological Therapies) Training and Consulting has succeeded in its claim of trademark infringement and passing off against Birmingham and Solihull Mental Health Foundation Trust in the first case heard by the UK's Intellectual Property Enterprise Court (IPEC) outside of London. APT, represented by Howes Percival, brought the case for breach of trademark over the use of the name ‘RAID', which the company has used to provide training for mental health treatment (‘RAID' standing for ‘Reinforce Appropriate (behaviour), Implode Disruptive (behaviour)'). RAID was registered as a trademark in 1991 and, in 2009, Birmingham and Solihull Mental Health Foundation Trust adopted the term as an acronym for its specialist mental health service, ‘Rapid Assessment Interface and Discharge'. The case serves as a reminder that IPEC provides a useful forum for trademark disputes in the UK. (TL)

Media watch:

Cigar wars ignited – Cigar blog Half Wheel  has reported on the battle between Maker’s Mark and Spalding Group, the parent of Ted’s Cigars. In the latest development in a dispute stretching back to 1996, Maker’s Mark fired filed a lawsuit in the US alleging trademark infringement and dilution - with Ted's filing a lengthy counterclaim on the very same day. The dispute centres on a licensing agreement between the two parties, which lasted 20 years before expiring in 2016. That agreement allowed Ted’s to produce and sell Maker’s Mark cigars seasoned with the company’s bourbon. Maker's Mark allege that a bourbon cigar sold by Ted's after the agreement expired is intended to confuse consumers into thinking it is the same as the previously-licensed cigar. Ted has fired back, its counterclaim challenging Marker’s Mark's claim to rights in the use of irregular dripping wax in the cigar industry. Both parties have requested a jury trial in this high-stakes battle. Only one party will be lighting up in celebration after its conclusion. (TL)

Vietnamese restaurant attracts criticism years after trademark backlash – A Vietnamese restaurant brand in the UK called Pho caused controversy in 2013 following its decision to seek registered trademark protection for the word PHO. For example, after the restaurant asked another eating establishment to change its name, media articles dubbed it the “Vietnamese pho war” and asked “can you trademark a soup?”. At the time, following a backlash, the restaurant publicly apologised on social media, admitting that its trademark enforcement had been “too heavy handed”.  Fast forward half-a-decade, and the controversy over that trademark enforcement continues to linger. Earlier this week, NextShark criticised the restaurant’s new menu: “Despite advertising themselves to be an authentic Vietnamese street food chain, the new menu clearly strays far from the traditional Vietnamese recipes which many believe makes this another case of cultural appropriation.” The angle of the article clearly links the new menu items with the previous trademark furore, with the article concluding: “Years after this incident, people are questioning whether the chain has fully learned their lesson on respecting Vietnamese cuisine and culture after discovering what they were selling as a part of their new menu.” Indeed, the comments of the article show continued anger over the trademark enforcement in 2013. It’s a demonstration, perhaps, that trademark-related backlashes – especially if they relate to social issues – can mean a brand remains under the spotlight for a long time. (TJL)

IP associate gives AMA on Reddit – An unnamed IP associate posted an ‘ask me anything’ (AMA) thread on Reddit earlier this week, giving users on the ’law school’ subreddit an opportunity to ask them questions. The answers, perhaps due to the anonymity of Reddit, offered unique insight for law student users to consider. For example, one user asked if the IP associate encountered imposter syndrome, in which the answer was ‘yes’, expanding: “Honestly, each time I'm asked to do something and I know what to do I feel like less of an imposter, but I still experience it.” On the trademark side, the IP associate – who works on both litigation and transactional work – claims that “trademark [work] doesn't pay much”, adding: “Rates are extremely competitive between firms, and a lot of associates do some trademark and a lot of something else to earn their keep.” A couple of years ago, we recommended that trademark attorneys consider Reddit ‘AMA’ threads as a way to educate a wider audience about the trademark world. This week’s example shows that there’s certainly an appetite for such information. (TJL)

Domain radar:

End in sight for '.amazon' gTLD battle – Over on Domain Incite, Kevin Murphy reports that ICANN's board of directors has voted to impose a March deadline on talks over the future of the '.amazon' gTLD. As we have reported previously, Amazon.com's application for the string has been left in limbo due to opposition from South American government's, which regard the term as having geographical and cultural significance. ICANN has now announced that, if a breakthrough is not made by the next ICANN meeting, which takes place in Japan on 9-14 March, the ICANN board will "make a decision" on the fate of the application. One way or the other, Amazon's wait for clarity over its bid to own the 'amazon' TLD is almost over. (TL)

And finally…

Limited places still available for strategic trademark management event in London – Next week, on 28 January 2018, WTR’s is hosting Managing Trademark Assets Europe. The event will present cutting-edge strategies for the creation, protection and monetisation of strong brands, with attendees hearing senior in-house counsel across a range of industries discuss how best to manage risk, ensure continued brand protection coverage and communicate the value of brands to the business in a bid to secure multi-stakeholder support. Click here to reserve your place. (TL)

Adam Houldsworth

Life sciences reporter

[email protected]