26 Oct
2018

Nepal drafting new IP law, Burberry settles Target dispute, and China working to eradicate trademark hoarding: news round-up

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 a video game legend recalling a controversial trademark dispute from the 1990s, ICE highlighting social media as a key platform in the fight against fakes, a poll about the perception of plain packaging, a Brexit update, a legal dust-up reportedly stalling ICANN’s RPM working group, and much more. Coverage this time from Trevor Little (TL), Bridget Diakun (BD) and Tim Lince (TJL).

Market radar:

China works to eradicate trademark hoarding – China’s National Intellectual Property Association (CNIPA) recently released a statement drawing attention to the fact that a number of applicants were filing for marks at the trademark office (TMO) with no intent of use. This stockpiling of registrations is done with the intent to capitalise on other companies which have a genuine business need for these marks, and are being charged a fee to obtain them. Fasn Yali, deputy director of the trademark examination administration division of the TMO, warned: “When the trademark office examines trademark registrations, it will severely crack down on the malicious hoarding of trademarks which clearly disrupt the order of the register and undermines public interest”. In order to do so, the TMO will be ‘adjusting the examination procedures along with adding information prompting functions’. The nature of China’s system does not make this a simple task, as it is not required by applicants to submit evidence that the trademark is used or will ever be used. While this has certainly caused a stir at China’s TMO, it is yet another indication of the office’s commitment to improving its trademark system. (BD)

Plain packaging “received well” in Ireland – New research from this week has asked people in Ireland about their thoughts on the newly-implemented plain packaging measure on tobacco products. The Healthy Ireland Survey 2018 was published earlier this week, and according to the Irish Examiner it found that plain packaging “has been well received” – in all, 71% of the total population is happy with the regime, including 62% of smokers. It appears, then, that while questions mark remain about the effectiveness of such legislation, the wider perception of it is broadly positive. (TJL)

Google Ads trademark rules changes “giving agencies a headache” – According to MediaPost, Google has updated its Ads policy in regards to trademarks – and it is causing headaches for marketers. It is understood that Google now specifically clarifies that the search giant “will not investigate or restrict trademarks as keywords”. According to the article, this change was aimed to make Google’s policy more consistent around the world and, according to one expert, it could cause issues for brands. “At one time I was able to prevent anyone from using my trademarked name in their ad,” said Jonathan Kagan, senior director of search and biddable media at Cogniscient Media. “Now I can only prevent direct competitors. Indirect competitors such as aggregators can now use the trademarks, which has a negative trickle-down impact on the cost per click for my brand terms.” We’ve written extensively about the concerns around trademark keyword use in search advertising – and it appears it’s a problem that won’t be going away any time soon. (TJL)

Billion pound Brexit losses spurn UK call for continued EUIPO representation – The UK’s All-Party Parliamentary Group on Legal and Constitutional Affairs has published its report following an inquiry into the effect of Brexit on legal service, a headline finding being that the financial impact of UK chartered trademark attorneys (CTMAs) losing their right to represent clients at the EUIPO is likely to be between £789 million and £1.7 billion per year. As such, it recommends that the UK government seek to retain mutual market access as far as possible in any future relationship with the EU, with UK lawyers able to continue to serve their clients post-Brexit on a fly-in fly-out basis. It adds: “The government should ensure that any future relationship with the EU includes a mechanism for UK lawyers to practise EU law via the mutual recognition of professional qualifications and law firm structures.” Responding to the report, CITMA President Tania Clark said: “CTMAs are the largest single group responsible for EU trademarks and registered community designs from non-EEA countries, bringing in millions of pounds to the legal sector every year. The APPG’s report also makes important recommendations on mutual recognition of professional qualifications, replicating current legal frameworks and avoiding ‘no deal’. All of which we fully support.” (TL)

ICE highlights social media as a key platform in anti-counterfeiting – According to a news release by the US Immigration and Enforcement (ICE) agency, social media is being seen as a crucial tool in protecting intellectual property and halting the movement of counterfeit goods. It was topic of discussion at an event hosted by the government agency, with attendees including US Customs and Border Protection, FBI, and the Arlington County Police Department. Homeland Security Investigations deputy executive associate director Alysa D Erichs argued that: “Both government and the private sector can better use social media platforms to inform and educate consumers, and assist in the fight against IP crimes.” (BD)

Legal radar:

Nepal drafting new IP law – According to local media, Nepal’s minister for industry, commerce and supplies, Matrika Yadav, has confirmed that the Nepalese government is currently drafting a new law in relation to the protection and promotion of intellectual property rights. The announcement was made in Geneva during the minister’s visit to the World Intellectual Property Organisation (WIPO). At that meeting, Yadav admitted that the protection of IP is “a challenging task” in Nepal, but that the government “was committed to it as the constitution also recognises it as a fundamental right”. The news is a positive for rights holders, as the new law promises to include stronger and more reliable enforcement protection in Nepal. (TJL)

ICC and REACT to develop landlord liability programme – The International Chamber of Commerce has signed a Memorandum of Understanding with anti-counterfeiting network React to develop a global Landlords Liability Programme. The vision is for a programme to monitor and deter the sale in counterfeits, and raise awareness among landlords – of both public and private marketplaces of the related damages in their respective markets. BASCAP and React will work together with the assistance of participating brand owners to identify notorious marketplaces worldwide, cooperate with the landlords of these marketplaces to facilitate the removal of counterfeits) either voluntarily or, on failure to cooperate, through legal action) and initiate a dialogue with landlords to prevent the future availability of counterfeits. Paola Piccoli, head of brand enforcement EMEA/APAC, Maus Freres and chair of the BASCAP Landlords Working Group commented: “These measures are aimed at implementing clear policies to effectively deny commercial premises to counterfeiters and negatively impact their ability to continue operations. Consistent and enduring application of these practices in markets is the best defence for disrupting trade in counterfeit goods.” (TL)

Burberry puts an end to another knockoff controversy – Luxury brand Burberry has reportedly settled a trademark dispute with Target, which it had sued for ‘repeated, willful, and egregious misappropriation of Burberry’s famous and iconic luxury check trademarks’. This is one of a number of similar cases where the well-known designer pursued major merchants, like J.C. Penny and TJX Cos, who were also accused of selling close imitation products, or counterfeits of the famous plaid. (BD)

Media watch:

Gaming legend voices annoyance at trademark dispute from 1990s – In a feature-length documentary released this week about the story of video game studio Sensible Software, company founder Jon Hare spoke bluntly about a trademark dispute from the 1990s. Back in 1993, just before the release of anti-war game Cannon Fodder, the UK’s Royal British Legion complained about its planned use of a poppy on its front cover. At the time, the Legion – as well as various British politicians – raged against the company in the media, calling the move “offensive to millions” and “monstrous”. Ultimately, the two parties resolved the issue, but in the documentary Hare described the situation as “annoying”, primarily because he felt that no-one at the Royal Legion or in the press had actually played the game. “[The Daily Star newspaper] claimed the game is doing a disservice to the people who died in the war and the Chelsea pensioners, and how terrible these youngers are for making this frivolous computer game, and [how we had] no respect for the dignity of the people that died in the war. Really, the most irritating part was: had they looked at our game?” he asked, explaining that the dispute settled after the company agreed to remove the poppy from the box-art, pay £500 to the Legion, apologise and insert a disclaimer in the game itself. Hare expanded: “So [we added] a message at the start of the game saying ‘this is not endorsed by the Royal British Legion’, and they actually insisted we put that at the front of the game, that’s from them. In fact, it was brilliant, as it really serves to add to the game. Myself and [co-founder] Chris effectively paid £250 each for poppies, and I have to say, since that day I’ve never bought a poppy – I used to always buy a poppy, paying with a pound coin, but I feel like I bought 250 poppies up front, and it was in 1993 so I’m still in credit with them. But most of all, it’s disappointing they didn’t bother to check our product and understand that we were respectful. But those were the days when video games were ‘the devil’.” It’s an interesting anecdote, and a demonstration of how trademark disputes – especially when they garner negative press coverage or if one party feels it was unfair – are well-remembered even decades after they occur. As for Canon Fodder, it ended up being critically and commercially successful. Indeed, a third game in the series was released in 2012 and it led to one British newspaper acknowledging that the press in 1993 fundamentally misunderstood the original game: “Part of the point of the original (one completely missed by complaining tabloids at the time) was that it was actually making a relatively profound statement on the futility of war.” It appears, then, that Hare’s frustration is justified in this regard – although even if the Royal Legion understood the anti-war message of the game, we doubt whether the charity would have done things any differently. (TJL)

Domain radar:

Fears that legal dust-up is stalling RPM working group efforts – Over on Domain Incite, Kevin Murphy reports that domain investor George Kirikos has called in lawyers after an argument over the rules of etiquette on an ICANN working group mailing list. Kirikos has been engaged in a back and forth with other members of the mailing list of the Rights Protection Mechanisms working group, and alleges that there is a “campaign of intimidation” against him by those that do not agree with his opinions. Murphy notes that ICANN has assigned its general counsel to the case, the dispute being the first time that a member has called in legal counsel over a mailing list argument (that particular list often facilitates lively and robust discussions). As well as being notable in that respect, a more worrying aspect of the dispute, argues Murphy, is that “the sum of this appears to be that the dispute has had a chilling effect on the RPM working group’s ability to get anything done, consuming much of its co-chairs’ time. Kirikos lawyering up seems to have compounded this effect.” The RPM discussion was always going to be an important and emotive topic, and its work is too important to be sidetracked by such a dispute but the reality is that, according to ICANN CEO Goran Marby, the group’s work has “more or less stalled for the last several months”. (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 World Trademark Review. Over the past week we:

  • Presented exclusive insight from Pure Storage Inc’s in-house team on how to establish a productive and mutually beneficial relationship between the legal and marketing functions.
  • Sat down with Gilead’s Gretchen Stroud to get the inside track on the latest strategies for fighting counterfeits in the pharmaceutical industry.
  • Assessed a new academic paper which found that researchers and policymakers should make more use of trademark portfolio data – even using such information instead of patent data in some instances.
  • Reflected on the flurry of media reports related to law firm workloads and pressure, and looked at how the trademark industry must work together to recognise, mitigate and support those affected by workplace stress.
  • Brought together two organisations with different perspectives on geographical indications to go head to head on the best route forward for this unique form of protection.
  • Announced the launch of two new events, Brand Protection Online: Strategies for Ethical Enforcement and Managing Trademark Assets USA, which will take place in Chicago in March 2019.
  • Spoke to a senior representative from IP Australia, who revealed that the office is “exploring emerging technology solutions such as APIs” to ensure it is at the cutting edge of innovation in the years ahead.
  • Reported on the USPTO’s warning of attempts to corrupt the US trademark register in an effort to game third-party brand registries, with one legal expert telling us that the USPTO must urgently review its system security.
  • Looked at the ICANN meeting in Barcelona, where efforts to develop permanent policy on the treatment of WHOIS data in light of the GDPR were high on the agenda, with battle lines being drawn and debate becoming increasingly combative

And finally…

Get the inside track on cost-effectively managing trademark portfolios WTR is pleased to announce that Managing Trademark Assets Europe will be heading to London on 28 January 2019. 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. Delegate places cost just £795 but registrants using the code ONLINEEB before 7 December can save £200 on this rate. Click here to register. (TL)

Adam Houldsworth

Reporter

ahouldsworth@GlobeBMG.com