1 Nov
2019

Plain packaging fireworks, Facebook fishing for phishers, and Irish Whiskey in Taiwan: 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 Mauritius considering introducing the exhaustion of trademark rights, 6,000 counterfeit products seized in China, the African Regional IP Office holding an IP crime event, Conor McGregor’s latest trademark fight, and much more. Coverage this time from Trevor Little (TL), Bridget Diakun (BD), Jonathan Walfisz (JW)  and Tim Lince (TJL).

Market radar:

Agencies assemble – Eight brand protection and cybersecurity agencies (Brandit, globaleyez, GCS-Risk, Group-IB, LdotR, Onsist Pointer Brand Protection and REACT) have joined forces with Scamadviser, an initiative of the Ecommerce Foundation, in a bid to more speedily fight online counterfeiting. The Scamadviser.com website, used by more than 2.5 million consumers a month, allows consumers to check whether a website is legit or a possible scam, phishing site or online store selling fake products. With the newly announced collaborations, the participating brand protection agencies will provide details of infringing domain names directly to Scamadviser. Jorij Abraham, general manager of the Ecommerce Foundation, sees the move as a step towards the goal of establishing Scamadviser as the global blacklist for anything being a scam: “We continuously improve Scamadviser’s algorithm to identify online scams. With the domain names provided by brands and brand protection agencies, we can not only warn consumers about the websites provided but also identify other shady websites that have comparable markers.” (TL)

6,000 counterfeit products seized in south China – Local media has confirmed that customs officials from Dongguan City, Guangdong Province in southern China have seized over 6,100 fake products. It is understood that the counterfeit goods were intercepted at an e-commerce export channel, with items found brands including Louis Vuitton, Nike and Rolex. (TJL)

Raise a glass to Irish Whiskey… in Taiwan – The Irish whiskey has reportedly been granted a certification trademark in Taiwan, in both English and Chinese. The Spirits Business notes that the move is aimed at providing consumers in Taiwan – where its market share has grown by 44% over the last three years – more confidence in the quality and authenticity of Irish whiskey. Miriam Mooney, legal advisor of Drinks Ireland and the Irish Whiskey Association, told the outlet: “The registration of Irish whiskey as a certification trademark in Taiwan is another successful milestone in Drinks Ireland [and the] Irish Whiskey Association’s global protection strategy.” (TL)

Sony files trademarks for PS6, PS7, PS8, PS9 and PS10 – Always keeping an eye on the future, Sony has filed trademarks for the next five supposed consoles in their PlayStation (PS) line. The company now has registrations for PS6 through to PS10 at the Japanese Patent Office (JPO). Predicted to release the PlayStation 5 in 2020, it is the fifth iteration of the popular gaming console released with the numerical approach. Given that it’s been seven years since the release of the current PlayStation 4, it is likely Sony will have to renew their PS10 trademark for quite some time before it’s actually in use. (JW)

Call for plain packaging on fireworks – Next Tuesday is Guy Fawkes Night in the UK, an annual commemoration observed on 5 November to remember when Guy Fawkes, a member of the Gunpowder Plot, was arrested while guarding explosives placed beneath the House of Lords, the upper house of the UK parliament. The night is marked with fireworks across the country, with communities gathering around bonfires with effigies on top. Days before the event, the British Society for Surgery of the Hand (BSSH), the British Association of Plastic, Reconstructive and Aesthetic Surgeons (BAPRAS) and the British Burns Association (BBA) have publicly called for fireworks to be sold in plain packaging. “[We] believe mandatory graphic warning images and plain packaging for fireworks will help warn of potential injuries at the point of use and discourage misuse,” the three groups said in a joint statement. (TJL)

Legal radar:

Jenner too late with ‘Rise and Shine’ trademark application – Cathy Beggan, a New Jersey businesswoman, is claiming that Kylie Jenner’s use of the phrase ‘Rise and Shine’ on clothing items infringes on her rights, noting that she already has registered trademark for ‘Rise-N-Shine’, which is the name of her company which sells nutritional supplements, vitamins, cosmetics and clothing. Beggan hopes to settle the matter outside of court, proposing that Jenner sing a ‘jingle’ for the company. In exchange she will consider “licensing the phrase to her for use with certain non-competing products, in exchange for a reasonable licensing fee”. Jenner has filed a number of applications for ‘Rise and Shine’ as well as ‘Riiise and Shiiine’. The article did not state whether or not Beggan will oppose these applications. (BD)

Facebook turns to trademark law to tackle phishers – Facebook has filed legal action against OnlineNIC and ID Shield for hosting a series of websites – inducing the likes of ‘hackingfacebook.net’, ‘iiinstagram.com’ and ‘www-facebook-login-net’ – it alleges offer hacking tools targeting the company and engaged in phishing. As reported by CNET, the lawsuit alleges trademark infringement and cybersquatting, a spokesperson telling the outlet: "People count on us to protect the integrity of our apps and services. We don't tolerate people creating web addresses that pretend to be associated with our family of apps. Today's lawsuit shows we will take action against those behind this abuse." (TL)

Office radar:

14th EU trademark court seminar planned – The EU Intellectual Property Office (EUIPO) has announced that the latest EU Trademark Court Seminar will take place on 21 and 22 November 2019 at the registry’s Europa Auditorium. The event is organised by Alicante Bar Association together with the Industrial and Intellectual Property Section, in cooperation with Alicante’s Association of Public Prosecutors, the EUIPO, and the General Council of the Judiciary. (TJL)

ARIPO holds IP crime event – The African Regional IP Office (ARIPO) held a conference last week under the theme of ‘Fighting IP Crime through Innovation & Cooperation’. The event was held in Cape Town and was opened by South Africa police minister, Bheki Cele. Topics at the conference included: cross agency cooperation; transnational enforcement; innovative solutions for free trade zones; understanding cryptocurrencies; and strategies to address ‘bad actors’ in the online environment. (TJL)

Irish IPO warns of misleading invoices – The Irish Patent Office has issued a warning over misleading trademark invoices. According to the office, there is “an ever increasing number” of solicitation campaigns targeting IP applicants and registrants. Indeed, it’s an issue that WTR has reported on for a number of years and the problem has seemingly not been sufficiently tackled. (TJL)

Mauritius consider exhaustion of trademark rights – The government of Mauritius has announced it wants to “gradually move towards the international exhaustion of trademarks”. It confirmed it wants to transition to such a system through an incremental process “that will require a change in the ecosystem” of IP in the country. It appears, then, that there could be big changes for the IP regime in the East African island nation. (TJL)

Ethiopia IPO signs agreement with innovation center – The Ethiopian Intellectual Property Office (EIPO) has announced it has signed a memorandum of understanding with the IBA Ethiopia Center for Innovation. The purpose of the agreement is to facilitate “adequate legal protection for intellectual property” by the organisation, and “promoting creative ideas of young innovators so as to provide them with opportunities to transform their creativities into profitable business ventures”. (TJL)

Belarus IP office launches YouTube channel – The Belarus National Center of Intellectual Property has announced the launch of a YouTube channel. Videos so far include a report from a recent regional seminar, ‘Intellectual Property Policy for Universities and Research Institutions’ and a video entitled ‘Morning professions’ with the head of the registration of rights center for collective management of property rights Tatyana Zedri. (TJL)

Sint Maarten IPO conducts Unreal workshop – The IP Office of Sint Maarten has conducted a workshop as part of the INTA’s Unreal Campaign consumer awareness initiative. Registry director Vincentia Rosen-Sandiford, together with deputy director Aarti Jusia-Ramdihal, gave the Unreal presentation to 26 students at a local school on the topic of counterfeit products and their social-economic influence. (TJL)

Syria notifies WIPO will not present requests for international registrations – According to a World Intellectual Property Organisation (WIPO) press release, the Syrian Arab Republic will not present requests for the division of an international registration nor requests for the merger of international registrations resulting from division. The reasoning given is that Syria’s law is not compatible with Rule 27 of the common regulations of the Madrid Protocol. Syria previously denunciated the Madrid Agreement in 2012. (JW)

Media watch:

Conor McGregor’s fight card is a full one – It feels like a while since we last wrote about a trademark dispute involving Ultimate Fighting Championship (UFC) icon Conor McGregor. Over to Ireland, then, where media outlets have focused on comments from his lawyers, hitting back at a Dutch company seeking to oppose his effort to register his name as an EU Trademark, based on its McGREGOR mark for clothing. The UFC star’s lawyers, FR Kelly, state that when that mark is compared to CONOR McGREGOR, the differences are such that consumers would not be confused – adding: “The mere fact that respective trademarks share an element in common is not sufficient to hold a likelihood of confusion. There is no case law to support such a position.” The wait goes on for a final decision from the EUIPO – expect this fight to be concluded some time after McGregor’s return to the octagon, slated for January. (TL)

Trademark infringement? Go straight to the principal’s office – The Hong Kong protests have grabbed headlines around the world and this week local media coverage provided a curious IP angle. Local media reports that, when a sixth form pupil was found distributing keychains with ‘Fighting for freedom’ messaging, alongside the school’s logo, she was threatened with IP infringement proceedings by the principal. The principal also seized the keyrings. It is unclear whether that is the end of the matter, the principal reportedly refusing to meet with the school’s alumni association. (TL)

Domain Radar:

How are the early adopter gTLDs faring? – Raymond Hackney over on The Domains went digging to find out how well some of the earliest adopters of the new gTLDs were doing. After he found a post on Key-Systems from 2015 which listed 87 sites that dropped their .com for a gTLD, Hackney went through the list to see how those sites have kept their new domain names. First thing noticed was that there were only 51 unique names in the supposed list of 87. Of those remaining, just 24 are still using the new gTLD with two more using another gTLD. The rest have gone either back to an original domain, a new older style domain, or gone altogether. (JW)

On the move:

USPTO unveils new attaché – The USPTO has revealed that its new IP attaché for central Eurasia, Dorian Mazurkevich, was sworn in this week by the International Trade Administration’s deputy assistant secretary Dale Tasharski. The office’s IP attaché programme works to improve IP systems internationally, advocating to improve IP policies, laws, and regulations abroad for the benefit of US businesses and stakeholders. (TL)

Latham & Watkins announces annual promotions Latham & Watkins has announced that 33 associates have been elevated to partner and 26 associates have been elected to of counsel, as of 1 January 2020. Robert J Ellison, Michael J Reiss and Inge A Osman have each been promoted within the litigation and trial department. They practice out of the Century City, Los Angeles and Washington, DC offices, respectively. Ellison handles IP disputes including trade secrets, trademark and copyright, among other legal matters. Reiss’ practice covers a range of complex litigation including IP disputes. Osman focuses her practice on patent litigation. (BD)  

US firms announce combination – US firms Lathrop Gage and Gray Plant Mooty have announced that their stakeholders have approved a combination of the two firms. The combination, creating Lathrop GPM LLP, becomes effective on 1 January 2020, with a press release stating that the move will allow Lathrop Gage’s clients to gain access to Gray Plant Mooty’s franchise team, while Mooty’s clients will benefit from Lathrop’s experience in life sciences, intellectual property and insurance recovery. Lathrop GPM will boast nearly 400 attorneys in 14 offices across the US, including Boston, Washington, DC, Los Angeles, Dallas, Denver, Chicago and St. Louis. (TL)

Joel Glazer joins Young Conaway’s IP litigation practice – Young Conaway has appointed Joel Glazer to associate within the IP litigation group. He represents clients before the federal court in patent law matters. He has experience in a number of industries such as pharmaceuticals, consumer electronics and telecommunications. (BD)

And finally...

Managing Trademark Assets returns to London Following the success of this year’s event, WTR’s  Managing Trademark Assets Europe will be returning to London on 28 January 2020. The event provides an opportunity for attendees to hear 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. For the upcoming event we are also increasing the interactive nature of the programme, introducing informal, small-group discussions on dispute resolution scenarios - allowing participants to workshop possible responses with their peers and colleagues. Among the other areas to be explored are budget management, dispute negotiation tactics, best practices around diversity and team building, and how to fight counterfeits on a finite budget. The current registration rate for the event is £395 (excluding VAT). To sign up to attend Managing Trademark Assets Europe, click here. (TL)

Jonathan Walfisz

Author | Reporter

[email protected]

Jonathan Walfisz