4 Sep
2018

Nike in political firestorm, Lego blocks Chinese infringer, and Ghana steps up fight against fakes: news round-up

Every Tuesday and Friday, World Trademark Review presents a round-up of news, developments and insights from across the trademark sphere. In our latest edition, we look at a fashion brand in a dispute with two NFL teams, Uganda issuing a warning against counterfeit and substandard goods, the New York Times shining the spotlight on illicit vendors in Barcelona, Nike facing a brand boycott due to its new Colin Kaepernick ad campaign, a significant victory for The Lego Group in China, and much more. Coverage this time from Trevor Little (TL), Tim Lince (TJL) and Adam Houldsworth (AH)

Legal radar:

Indian trademark infringer ordered to donate to flood disaster fund – Indian pharmaceuticals company Galpha Laboratories has been ordered by the Bombay high court to pay 1.5 million Rupees (or $211,000) to the Kerala disaster fund, it has been reported. The instruction was given after the court found the company guilty of infringing a Glenmark Pharmaceutical registered trademark. Noting that a plethora of other allegations had been made against the firm, Justice Kathawalla described Galpha as a “habitual infringer with a set modus operandi of copying brands of other companies to make profits”. He told the defendant that “drugs are not sweets”, adding “pharmaceuticals companies which provide medicines for health of the consumers have a special duty of care towards them”. Though the court initially ordered the damages to be paid to Glenmark, it directed Galpha to pay the sum to the Kerala Chief Minister Distress Relief Fund (a fund set up to aid people affected by catastrophic flooding in the state) after the plaintiff asked for the money to be paid instead to an NGO. (AH)

Lego blocks Chinese infringer – Gizmodo has reported on a significant victory for The Lego Group in a dispute with Lepin, one of the “most prolific” Chinese manufacturers of cloned Lego sets. Kim Snaith writes that the company recreates Lego’s branding and packaging, selling toy bricks at a lower cost. However, the company has now been instructed to pay Lego 15,000,000 RMB (around £1.7m). in damages and to cease infringement of Lego’s marks. The court has also ordered the Chinese company to delete infringing content on Weixin, QQ. Snaith’s report notes that Lepin's website remains live, adding: “It's unlikely that the court's demands will deter their business model too much. It remains to be seen whether the Chinese company will follow the rules laid out”. Lego has won a significant battle but the war could well go on. (TL)

Ohio State and Oklahoma universities clash over “O” mark – The University of Oklahoma’s “O” trademark registration is being opposed by Ohio State University, which has recently challenged the application at the USPTO’s Trademark Trial and Appeal Board. Ohio State claims that the mark, which Oklahoma has been using commercially since 2011, has also been used on its marching band uniforms since the 19th Century and widely associated with its college football team. It contends that Oklahoma’s use of the trademark will mislead consumers into thinking that there is a connection with itself. Oklahoma is due to respond to the opposition by October 8. (AH)

LA Gear and NFL teams in scrimmage scuffle – The fashion brand LA Gear is locked in a dispute with Los Angeles-based NFL teams the Rams and Chargers after asserting that the latter’s filings for LA RAMS and LA CHARGERS are too similar to its brand name due to the three sharing the ‘LA’ element. ESPN reports that the teams had engaged in settlement talks but the Rams withdrew in favour of a more formal response – arguing that LA Gear can’t own ‘LA’  as it is the abbreviation of the city of Los Angeles. The ESPN coverage quotes Josh Gerben as stating: “The Cleveland Browns probably have a better chance of winning the Super Bowl than LA Gear does of winning this case." But who knows, with new quarterback Baker Mayfield tipped by some pundits as ready for the starting job, perhaps the unlikely could happen in at least on of these cases? Any takers? (TL)

Market radar:

Counterfeit crackdown part of Dubai’s bid to become a luxury fashion capital – According to a recent blog by The Fashion Law, half a billion dollars worth of counterfeit goods were confiscated by Dubai authorities in 2017, with even higher rates of seizure being seen so far this year. The city is waging a war against fake luxury goods as part of its drive to become a world hub of the high-end fashion industry. Knock-off goods are increasingly being sold to tourists and residents through social media channels, and such “a flood of fakes” is seen as a potential threat to the port city’s legitimate luxury products sector. Authorities have every incentive to protect this growing market: vast sums are spent on high-price items by the 80 million-plus shoppers who visit the Dubai Mall annually; 2,000 brands are currently waiting for retail space at the shopping centre. As such, Dubai’s Department of Economic Development is seeking closer partnerships with prestigious brands as part of redoubled efforts to clamp down on fakes. (AH)

Uganda issues counterfeit warning – The Uganda National Bureau of Standards (UNBS) has listed 56 products as being dangerous and warned the Ugandan public against using them. According to local press outlet Daily Monitor, the UNBS – the national body for product standards – listed items including mattresses and light bulbs, along with products from cosmetics brands. However, in an op-ed, the Daily Monitor suggests more could be done to combat fakes. “While we applaud the periodic surveillance by the standards body to ensure consumers are protected from substandard products, and the public sensitised about the dangers of consuming counterfeit goods given the potential health hazards, it important that a sustainable solution is found beyond the routine checks, listing of fake goods, seizing and destroying them,” the author notes. One step, the article notes, is ensuring that all goods are monitored equally – from goods entering the country to those produced locally. (TJL)

Call for Ghana to step up fight against fake goods – Professor Douglas Boateng of PanAvest International and Partners has stated that Ghana loses billions to fake and counterfeit goods every year, and called for tighter rules to tackle the problem. As reported by The New Ghana, Boateng was speaking at a seminar organised by WASP, the country’s only HP-accredited Managed Print Provider (the event intended to educate clients on how to identify fake HP products). In addition to bemoaning the impact of counterfeiting on business and consumers, he made a call “for appropriate remedial action to be initiated”. As was noted in our recent A-Z of anti-counterfeiting in Africa series, there is also a role for brand owners to play, with authorities open to receiving training and assistance form rights holders. (TL)

Media watch:

NY Times puts spotlight on Spanish counterfeit sellers – A recent feature-length article in the New York Times has focused on counterfeit-selling street vendors in Barcelona. The article notes that many of these vendors, who are known locally as manderos, are migrants from Africa who have often risked their lives fleeing violence or poverty to arrive in Spain. But the country currently has a high-unemployment rate, so being unable to find a regular job leads many to selling illicit goods on the city’s streets and promenades. But, according to the article, the vendors have found the city to be a good place to sell fake goods: “The street vendors have found Barcelona to be a relatively good base, largely because the city has plenty of tourists willing to buy counterfeit sunglasses and bags.” Of course, some parties – such as local businesses – aren’t as positive, with one local market trader quoted as saying: “It’s just horrible to have this illegal competition. I don’t want to criminalise these Africans, because I know what it’s like to be a migrant and to have to make a new start in life. But the authorities must decide whether everybody should be paying taxes – or instead nobody.” According to the article, estimates suggest there are between a few hundred to nearly 3,000 of these illegal street vendors in Barcelona – indeed, when the INTA Annual Meeting was held in Barcelona last year, we noted the dozens of counterfeit sellers located at the beachside space reserved for that year’s grand finale (the vendors were cleared before the reception). For rights holders, the NYT articles is an interesting insight into the counterfeit trade of a popular tourist hub, and how the problem persists despite all parties, including local authorities, being aware of it. (TJL)

Nike brand heads into political firestorm with Colin Kaepernick campaign – It was announced on Sunday that former NFL quarterback Colin Kaepernick, who sparked controversy by sitting (and then kneeling) during the national anthem in protest of racial injustice in the US, will front a major new Nike advertising campaign. Kaepernick has been seen as the face of a protest movement that has been repeatedly criticised by US President Donald Trump and his supporters. Predictably, then, Nike has faced a backlash since the news was announced. As The Hill notes, “dozens of videos and photos went viral in the hours that followed of social media users burning their Nike products, tearing them up or placing them in the trash in protest of the company's decision”. Indeed, viral tweets include the Nike logo on torn socks and burnt shoes, as well as the logo itself being crudely removed from products. On Fox News, lawyer Kurt Schlichter decried the campaign: “This is scummy, this is lousy, this is rotten, and I’m never buying another Nike product again and I think millions of Americans are going to agree.” More tangibly for Nike, its share price dropped 3% today following calls for a boycott. We’ve written before about the careful risk management and communications strategy required when a brand enters the political circus. Naturally, when enlisting a person who fronted a politically divisive movement, Nike would have been aware of the potential backlash. But is the Nike brand being irreparably damaged by the move? Some experts actually claim the Nike brand could be bolstered by the campaign. For example, NFL player Chris Long wrote on Twitter: “Nike is a huge business. They’ve calculated risk. They may even have reason to believe this will make the brand more popular which means the guy burning his white air monarchs is in the minority. Bitter pill to swallow, I’m sure. Good luck with the protest. Bet they anticipated it.” In the academic field, development economics professor Dina D. Pomeranz suggests that “Nike is reading the signs of the time”, adding that the company is “investing in a brand that reflects and speaks to the values of the generation of the future”. Clearly the ad campaign is splitting opinion down political lines – time will tell whether Nike’s gamble pays off. (TJL)

On the move:

Dorsey & Whitney announces China IP lead - Dorsey & Whitney LLP has today unveiled partner Janet Wong as head of the firm’s Greater China intellectual property group. Wong has over a decade’s experience in handling wide-ranging intellectual property matters in Greater China, and boasts expertise in formulating brand protection strategies, managing trademark portfolios and handling IP-related transactions for both local and multi-national clients. Wong also regularly advises on anti-counterfeiting and other IP enforcement actions, including trademark infringement and copyright piracy actions as well as company name and domain name dispute resolutions proceedings. (TL)

And finally…

Your new look WTR is here – Subscribers and regular visitors heading to the World Trademark Review platform this week will notice that things look a little bit different. As well as a refreshed look, enhanced functionality and a more responsive and faster website, we are pleased to unveil our new logo. Over the past nine months we have made a series of enhancements to the site. In November we stepped up our content output and also provided subscribers with early access to the 2018 rankings tables for the World Trademark Review 1000 – The World’s Leading Trademark Professionals. In February, we then re-engineered the site to create a series of microsites that allow users to quickly navigate to, and bookmark, the content most relevant to their needs. These included nine topic landing pages, eleven industry sector sites and five regional landing pages. This week marks the next stage of WTR’s journey. WTR subscribers get automatic access to all parts of the refreshed WTR platform; while our registered users can continue to see everything that is in front of the paywall.  Should you wish to become a WTR subscriber, click here.  (TL)

Adam Houldsworth

Author | Reporter

ahouldsworth@GlobeBMG.com

Adam Houldsworth