14 Dec
2018

Samsung teams up with fake Supreme, new US Army IP policy, and EUIPO removes TMview contact details: 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 how counterfeiters are targeting marijuana packaging, how the INTA has approved a designs guidelines, how the US government is seeking to confiscate a biker gang’s trademarks, how most IP in Africa is “unregistered”, and much more. Coverage this time from Trevor Little (TL), Adam Houldsworth (AH), Bridget Diakun (BD) and Tim Lince (TJL).

Market radar:

Fakes come in small packages – New research carried out by the EUIPO and the Organisation for Economic Cooperation and Development has revealed that six out of ten customs seizures of fake goods are found in small parcels, with fake goods such as shoes, sunglasses and jewellery most likely to be sent this way. Additionally, over half of all global seizures of counterfeits sent by post contained just one item. Reflecting on the findings, Christian Archambeau, executive director of the EUIPO, stated: “Our report tracks a growing, and worrying, phenomenon in counterfeit trade, in that small parcel shipments sent via post or courier services are harder for customs officials to track and seize [as, normally, information such as ship manifests and the supporting role of customs brokers are absent in small volume trade]. We hope that these findings will be of use to policymakers as they devise methods to combat counterfeiting.” The fact that counterfeiters are increasingly turning to small package delivery to sell products direct to buyers and evade detection is not a surprise. However, the sheer scale of small package routing will be surprising to many – and illustrates the challenge facing brand protection specialists as they seek to tackle illicit trade. (TL

ISU trademark policy continues to ruffle feathers – Earlier this year, Iowa State University tightened its trademark policy, limiting the ability of many student organisations to reference the institution’s name. In October we noted that the battle had been stepped up, with student government members unanimously passing a resolution that called for a temporary halt of the new policy and increase in the number of students on the Trademark Advisory Committee. Techdirt.com now reports on a letter the institution recently sent to students, thanking them for their interest in the trademark guidelines and explaining the process behind the policy. However, in the words of Techdirt’s Timothy Geigner, the letter was “brushing student concerns aside”. Student government speaker Cody Woodruff was also dismissive, stating that “it seems to have made student organisations more angry, it is getting worse not better… This response is more of the same, telling students they are just associated with the university. We aren’t associated with the university, we are the university.” We have written previously about the need for universities to police their marks. Sometimes, however, it can lead to a backlash. (TL)

US government seeks to confiscate biker gang’s trademarks – US federal law enforcement is seeking to bring down the Mongols – thought to be one of the country’s most dangerous biker gangs – by seizing its intellectual property. In a racketeering trial currently underway in California, prosecutors are seeking to confiscate the group’s trademarks by making use of asset forfeiture law. According to the New York Times, prosecutors are claiming that the Mongols logo serves as a “unifying symbol” for the gang, whose seizure would “literally take the jacket right of (their) back”. Previous attempts by US prosecutors to seize the Mongols’ trademarks go back to 2008 (see this WTR report), when it was part of criminal proceedings against 79 Mongols. This attempt was successfully challenged by the group on First Amendment grounds in 2009. And in 2010, Judge Otis Wright ruled that the conviction of a former club president was not grounds for seizing intellectual property that belongs instead to the club itself. Whether or not prosecutors would, if successful in their latest attempt, be able to use the seized rights to prevent individual Mongols from wearing items of clothing is highly questionable, but a seizure could have significant commercial consequences for the club. (AH)

The US Army revises its IP policy – The US Army has approved a new ‘Intellectual Property Management Policy’, which is designed to provides the force with a "deliberate and balanced" strategy to sustain readiness, drive modernisation, and foster private innovation. Secretary of the Army Mark T Esper notes that the army "faces unprecedented challenges from emerging threats, proliferation of technology, and rapid innovation by our adversaries" and has embarked on several modernisation and acquisition reforms. "To help enable these reforms, we are now changing our approach to intellectual property management," he writes. The policy encompasses patents, designs, technical data and technology licensing, with assistant secretary of the army for acquisition, logistics & technology, Bruce D Jette, declaring: “If we don't consider our IP needs upfront, we will no longer be in control of our own destiny." It is not often that army forces publicise their particular IP approach. This announcement therefore evidences how the role of IP has been elevated amongst army leadership. (TL)

Counterfeiters target Marijuana packaging – As medical and recreational uses of cannabis are increasingly legalised in states across the US, marijuana brands are not exempt from the problems of imitation long encountered by pharmaceuticals and other products. According to Healthcare Packaging, Californian cannabis vape manufacturers Mammoth Distribution (which produces the Heavy Hitters vape cartridge brand) has become aware of counterfeit versions of its product being sold in the state. Another brand, CannaCraft is said to have started using serial numbers on its packaging to tackle similar problems of late. Such reports indicate that issues with counterfeits of products in plain packaging is an increasing problem, and strategies to combat it – such as barcodes – will be needed in the future. (AH)

RCMP forensic lab misses all performance targets – The RCMP forensic lab, which oversees the National Anti-Counterfeiting Bureau investigations, has failed to meet any of its response targets for 2017-18. The Canadian national police handles National Anti-Counterfeiting Bureau investigations on the federal, provincial and municipal levels. It only met 32% of its targets for anti-counterfeiting in the last fiscal year. In fact, only a third of the anti-counterfeiting bureau requests were completed on time because of a lack of fully-trained people. These statistics may not be welcome news for Canadian trademark practitioners, who have been working to improve the country’s notorious reputation for fake goods and have it removed from the US watch list. (BD)

Legal radar:

INTA approves designs guidelines – The INTA Board of Directors has approved a resolution adopting general guidelines on a range of issues related to the examination of applications for industrial designs. The guidelines are intended to serve as a reference document for offices and are meant to “reflect various international systems in an effort to harmonize design law practice”. In a press release announcing the development, association president Tish Berard stated: “These new guidelines will allow INTA to comment on the administration of designs by industrial property offices and to assist offices to set up and implement their practices and procedures. INTA has been focusing on design rights themselves, independent of their impact on trademark law and practice. The examination guidelines are instrumental for the association to continue advocating for the protection of this intellectual property right.” The guidelines can be found here. (TL)

Samsung announces collaboration with fake Supreme – There was an embarrassing moment for Samsung this week when it announced a collaboration with fashion brand Supreme – but found out that the partnership had not been struck with the authentic brand. At the Chinese launch of the Galaxy A8 in Beijing, Samsung’s marketing chief invited several supposed Supreme representatives on to the stage for a discussion, only for it to emerge later that the Korean company had partnered with a company notorious for imitating the Supreme brand. The original Supreme is not planning to expand into China and has not partnered with Samsung. On Monday it announced: “Supreme is not working with Samsung, opening a flagship location in Beijing or participating in a Mercedes-Benz runway show. These claims are blatantly false and propagated by a counterfeit organisation.” Subsequently Samsung has clarified that "the brand we are collaborating with is Supreme Italia, not Supreme US. Supreme US doesn't have the authorization to sell and market in China. Whereas the Italian brand got the (Asia-Pacific) (except Japan) product retail and marketing authorization". Since 2015, International Brand Firm, which owns Supreme Italia, has been registering the Supreme name and logos in a number of countries around the world, and has been successful in at least 54 jurisdictions. It was afforded the opportunity to do this by the fact that the original Supreme , founded in New York, has focused on the US and a small number of key markets. It has taken Supreme Italia to court in a number of jurisdictions, leading to a dispute over whether Supreme Italia’s tactics are illegal or whether the imitator is a “legal fake”. (AH)

Most African IP is “unregistered” – According to an article in Rwanda’s The New Times, most intellectual property is “unregistered” claims figures from the African Regional Intellectual Property Organisation (ARIPO). In comments from John Kabare, IP operations executive at ARIPO, Africa has registered just 0.5% of more than 3 millions patents worldwide – with trademarks low too. “And this is not because Africans don’t innovate. It is because they don’t file patent applications,” he said. (TJL)

Office radar:

Liberia to launch online filing system – The Liberian IP Office is set to launch the first web portal for the online filing of IP registrations for all art-related works in the country. The Liberian Observer quotes that the director general Atty P Adelyn Cooper, who explained that the offering would enable online application filing and tracking, the validation of trademark data and an online search of trademarks, adding: “The move to transit from paper to online registration comes with lots of benefits which include enhancing and fast-tracking the IP registration process and an online database that will handle the publication of IP titles for the public.” The official launch is scheduled for today (Friday 14 December). (TL)

EUIPO removes contact details from TMview – In a new post from the EU Intellectual Property Office (EUIPO), the office revealed changes to some of its search platforms in line with the GDPR. Specifically, from December 11, phone numbers, fax numbers and email addresses provided by users as contact information via eSearch Plus, TMview and DesignView are no longer automatically available and searchable. Such a change could, in theory, make enforcement more difficult – but the office adds that users can opt-in to having these details displayed within those databases in the settings menu of the EUIPO’s website. (TJL)

On the move:

Patterson Belknap announces promotions – Patterson Belknap Webb & Tyler has announced six new partners and two counsel at the firm, effective 1 January 2019. Promoted to counsel is brand protection specialist Thomas P Kurland, who practices in the firm’s litigation department. Kurland’s primary areas of practice include products liability, brand protection, and commercial tort. In addition, he advises clients on internal investigations and risk management and anti-counterfeiting strategies. (TL)

Reed Smith boosts Corporate Group in New York – A press release by Reed Smith announced the appointment of Peter Emmi to the position of partner in the New York global corporate group. Prior to a career in law, Emmi was the lead negotiator in IBM’s IP and licensing group, handling licenses and agreements. Co-chair of the Global Corporate Group, Matthew Petersen, said of the hire, “the firm is committed to expanding our capabilities in IP/IT transactions”. Considering Emmi’s experience in negotiations on behalf of IBM and over 15 years experience as an engineer, it is likely he will help Reed Smith to realise these ambitions. (BD)

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:

  • Turned our attention to IP insurance and risk management, which has been grabbing headlines in recent weeks. While much of the coverage has focused on patent-related offerings, we argued that brands will be a future battlefield for brokers seeking new customer bases;
  • In an exclusive interview, Allison McDade shared her approach to tackling imitation convenience stores in Asia and explained the challenges stemming from the company’s expansion;
  • While trademark law offers remedies, there need to be material differences between grey-market and authorised goods – which is not always the case. We write aboutv some of the key challenges and solutions;
  • In an exclusive post, we look at how creating a new legislative reality and increasing quality have been core focuses for the Latvian Patent Office.
  • Published analysis of recent jurisprudential trends which show that courts are more and more willing to afford protection to fictional brands – although there are several nuances to be aware of;
  • Assessed the European Commission’s Counterfeit and Piracy Watch List, which identifies both online and physical marketplaces that are reported to engage in or facilitate counterfeiting and piracy;
  • Spoke to an INTA representative in advance of the association’s 2018 Middle East and Africa Conference in Dubai, being told that an annual meeting in the region is “a natural step”
  • Presented an exclusive update from the IP Office of Singapore, which outlined how it is utilising technology to assist innovators and rights holders;
  • Interviewed Jay Dubiner, general counsel of Authentic Brands Group, who provided strategic insight into brand management of an IP portfolio that includes Marilyn Monroe, Elvis Presley and Shaquille O'Neal.

 

And finally…

Obtain high-level trademark management and brand protection insights – WTR is hosting two events, on consecutive days, in Chicago in March 2019. The Brand Protection Online: Strategies for Ethical Enforcement and Managing Trademark Assets USA events will deliver high-level insight and practical takeaways for those tasked with managing, protecting and monetising brands. On 5 March 2019, Brand Protection Online event will take a deep dive into practical strategies for fighting infringement on ecommerce sites, navigating the changing domain landscape and managing reputation online. Taking place at the same venue the next day, the fourth annual Managing Trademark Assets USA will again focus on the cost-effective management of international portfolios, and comes at a time when it is more important than ever for brand owners to ensure they are integrating innovative and disruptive strategies into their trademark operations. To register for Brand Protection Online (or both events) click here. To register for Managing Trademark Assets USA (or both events) click here. (TL)

Adam Houldsworth

Life sciences reporter

[email protected]