11 Jun
2019

South African police attacked during counterfeit raid, Chile IP office new director, and Airbnb versus Hairbnb: 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 two-millionth trademark application at the EUIPO, a new report finding that UK students are ‘actively disloyal’ to brands, the Vietnam government complaining about fake ‘Made in Vietnam’ labels, a collection of ‘bootleg’ video games released, Lao IP data added to TMview, and much more. Coverage this time from Trevor Little (TL), Bridget Diakun (BD), Jonathan Walfisz (JW)  and Tim Lince (TJL).

Market radar:

Canadian IP firm partners with angels – Canadian IP firm Bereskin & Parr has announced a strategic partnership with Angel Investors Ontario (AIO). AIO is a not-for-profit organization whose members provide capital and mentorship to innovative start-ups province-wide. This new partnership will contribute to its mission to foster success through sharing best-practices and educational tools useful to both angel investors and entrepreneurs, the organisation stating that it firmly believe that intellectual property is often a Start-Up's key asset. Therefore, delivering access to IP education, strategies and experts will be valuable to Ontario's entrepreneurs and Angel investors across the ecosystem. Bhupinder Randhawa, head of the engineering & technology law practice group at Bereskin & Parr, explains: "We focus on building high quality IP assets that can readily be licensed, sold and enforced as opportunities arise, in Canada, the United States and around the world. We are pleased to join forces with AIO and their member angel investor groups. We look forward to supporting Ontario's angel investment community to help them identify and invest in valuable IP assets and strategies." (TL)

Stada purchases six brands from GSK – Stada has paid a price ‘in the high double digit million pound range’ for a Europe-oriented brand portfolio from GSK. Some of the brands included are Eurax, an itch relief cream, and Tixylix cough liquids. They will be incorporated into Stada’s British Thornton & Ross unit, says Stada’s CEO Peter Goldschmidt. The sell-off comes at a time when GSK is cutting down its holding to prepare to merge its consumer business into a joint venture with Pfizer. (BD)

UK students ‘disloyal’ to brands – New research in the United Kingdom has found that university students generally don’t make purchases based on brand affinity. The study, from marketing experts YesMore Agency and student marketing specialists Hype Collective, found that 53% of UK students claim they “don’t care about brands and would always go for the cheapest option”, while 15% said that their biggest purchasing driver was “an interesting brand history, story, packaging or design”. On top of that, just 2% of UK student claim to be “influenced by endorsements or influencers”, while 4% claim to be influenced by “a brand’s social media activity”. The most concerning statistic, though, is on brand loyalty – with two-thirds of UK students not considering themselves to be loyal to any brands at all, with many claiming to be “actively disloyal to brands”. For rights holders, such findings should be a worry; if a new generation of students are ‘actively disloyal’ to brands, it could spark a rise in anti-brand behaviour, including the purchasing of counterfeit goods. (TJL)

Campus campaign promotes IP rights in China – Beijing students are being treated to a campaign aiming to improve visibility and knowledge of the importance of IP rights, including trademark protection. The campaign is courtesy of the National Intellectual Property Administration, reports China.org.cn. (JW)

Airbnb tightens its leash on Scottish company Hairbnb – The international holiday home rental company, Airbnb, has issued a cease-and-desist letter to a Scottish business called Hairbnb. As reported by the National, Hairbnb is a small company boasting boarding facilities for dogs run by ex-RAF police dog handler Allan Ritchie. Ritchie registered his HAIRBNB trademark with the UKIPO last year, with the registration being approved in May after the two-month objection period came to an end without Airbnb lodging a dispute. Whether their cease-and-desist letter sent a year later will be adhered to remains to be seen. (JW)

Vietnam complains of fake ‘Made in Vietnam’ labels – Chinese companies are reportedly using illegal ‘Made in Vietnam’ labels in a bid to avoid tariffs imposed by the Trump administration in the United States. According to Sky News, there are numerous reports from customs officials of Chinese products being relabelled, including textiles, farm products, iron, honey, and steel. “In one case, US customs officials found a shipment of Chinese plywood that had been relabelled to make it appear it originated in Vietnam.” In response, Vietnam’s foreign minister, Pham Binh Minh, has warned that use of these fake labels could have “serious consequences” if action isn’t taken to quell such activity. "It will sabotage Vietnamese brands and products and it will also affect consumers," he said. "We could even get tariff retribution from other countries, and if that happens, it will hurt our economy." The issue of fake labels is one that brand owners have faced for a long time – this time, then, it is a national government that is needing to tackle the problem. (TJL)

South African police attacked during counterfeit raid – Brand owners and police came under attack during investigations into counterfeit goods sales in Johannesburg this week. Arriving at the Madiba building, law enforcement vehicles were attacked with rocks from across a barricade set up by a group the police identify as ‘foreign nationals’. The chief of police, David Tembe, issued a warning on his Twitter account and a video of the attack can be seen here. No law enforcement members were harmed in the attack but the incident serves as a reminder of the danger to those that toil on the anti-counterfeiting front line. (JW)

Legal radar:

Connecticut strip clubs the target of infringement lawsuits – A number of models and actresses have brought trademark infringement lawsuits against half a dozen Connecticut strip clubs. Five cases were filed in April, alleging that the clubs had used photos and names of the plaintiffs in promotional materials without permission. Those involved claim that the advertisements are misleading as they are not affiliated with the clubs, nor have they worked there. While it has not been common for trademark infringement cases to be filed against strip clubs, last November there were 50 suits filed against such venues in about eight states. The models and actresses involved are generally seeking injunctions and damages. However, many are yet to receive any payout as a result of these actions. Model Carmen Electra, for example, was successful in January in getting a permanent injunction from a New York federal judge to prevent some strip clubs from using her image. In this case, damages were not paid because Electra was unable to prove she lost money as a result of the club using her image, nor could she show that the venue profited from it. (BD)

Midget dispute races on – Are ‘Midgets’ generic? Apparently so, according to a USPTO decision this month, discussed on the TTABlog. The open-wheel racing series, the National Midget Series, is a competition where small racing cars with high power-to-weight ratios, owing to their 400 horsepower engines, race around dirt tracks. The term MIDGET describing such racing cars was determined to be generic. However, the applicant, USAC, sought to register a mark for the entire three word title NATIONAL MIDGET SERIES. The Board found that each term separately would be considered descriptive, although not generic for the services. Despite this, the Board considered the combination of the terms to be both descriptive and generic when pertaining to a country-wide racing series of such ‘midget’ cars. The USAC’s use of the phrase since 1956 did not dispel the genericness of the title, especially given the opposer has sanctioned NATIONAL MIDGET SERIES events since 2004, even running events alongside the USAC. Therefore, the attempt at a Morehouse defense based on prior registration was not enough to prove distinctiveness. (JW)

Office radar:

The EUIPO register hits the two million marks milestone – Czech company Crefoport s.r.o. has become the applicant of the two millionth EU trademark application at the EUIPO. The milestone was announced this week, and comes 25 years after the office was founded as a decentralised agency of the EU in Alicante. It took until 2011 for the register to hit one million marks but the pace of applications has increased in the time since. In 2018 alone, the EUIPO received 152,488 applications, a 4.16% increase when compared with 2017. The executive director of the EUIPO, Christian Archambeau, stated: “The figure of two million applications is a testament to the dynamism of EU businesses, both large and small, which represent approximately 70% of all applications at the EUIPO. So it is with great pleasure that I congratulate Crefoport for having chosen the EU trademark, along with thousands of other European businesses.” (TL)

Lao IP added to TMview and DesignView – Also in EUIPO news, data from the Lao Intellectual Property Office (Lao DIP) has this week been added to the registry’s TMview and DesignView search tools. According to the office, the Lao DIP has added more than 46,000 trademark applications to TMview, bringing its total to 53.3 million marks in its database. On the designs side, the Lao DIP added 491 applications, bringing the total to 14.5 million designs. (TJL)

Once in a lifetime opportunity with the USPTO – The US Trademark Public Advisory Committee (TPAC) is seeking nominations for their upcoming vacancies at the USPTO. The Patent Public Advisory Committee is also on the lookout for the next standout stars in IP for a three-year term for one of each committees’ nine voting members. Nominations must be submitted electronically before 12 July 2019. (JW)

Bresky appointed director of Chilean IP Office – The President of Chile, Sebastián Piñera, has appointed Loreto Bresky as the new director of the country’s National Institute of Industrial Property (INAPI). Prior to this appointment, between 2008 and 2018, Bretsky worked at law firm Alessandri Abogados as a member. "INAPI has been highlighted as one of the most important intellectual property agencies in the world and our objective is to consolidate that leadership and continue with the implementation of the standards of the leading international agencies and, therefore, President Piñera considered that Loreto Bresky is the right person to lead that process," commented Chile’s minister of economy, development and tourism, José Ramón Valente. To that end, she will assume the role from June 24. It follows previous director Maximiliano Santa-Cruz leaving his role last October – a month before his departure, he was exclusively interviewed by WTR, in which he explained why the role of IP offices “must evolve to meet the challenges of the modern world”. (TJL)

Media watch:

‘Bootleg’ game collection released – The world’s biggest video game event, the 2019 Electronic Entertainment Expo (E3), is taking place this week in Las Vegas, with the biggest game developers using the conference to promote upcoming releases. One of the annual highlights for attendees (and those viewing from home) is the often-zany press conferences from Developer Digital, and this year proved no different. One of its more off-the-wall announcements was the release of ‘Devolver Bootleg’, a collection of popular Devolver video games that have been repurposed as “fake versions”. For example, the collection of mini-games – available now for $3.95 – includes a ‘bootleg’ version of Devolver’s popular game Enter the Gungeon (called ‘Enter the Gun Dungeon’), as well as ‘fake’ versions of Hotline Miami (‘Hotline Milwaukee’), Downwell (‘Shootybooys’) and Absolver (‘Super Absolver Mini: Turbo Fighting Championship’). Of course, the release is a send-up of the well-known issue of bootleg video games, wherein developers create games using another company’s copyrights or trademarks –  a problem most famously faced by Nintendo. A curious element of Devolver Bootleg is that the response to its release has been positive, with users on Reddit claiming it is “very clever” and “hilarious”. However, the actual ‘bootleg versions’ of the games are being viewed negatively, with one user claiming they are “absolute trash” and another saying the games are “unfun” and “crude abstracted demakes of the originals”. Of course, that final comment could be applied to all bootleg and counterfeit goods, so maybe that’s Devolver’s point? (TJL)

On the move:

ICE introduces new director of the IPR Center – Steve Francis has become the assistant director of the global trade investigations division and the director of the national intellectual property rights coordination center. He has over twenty years of experience, and in this new role he will focus on collaborating with other agencies in order to fight the trafficking of illicit and counterfeit goods. (BD)

And finally…

WTR launches new-look magazine – The latest issue of WTR magazine is live online, and subscribers will note a major number of changes to the magazine and new types of content, all designed to maximise the value of their subscription. For more information on all the changes, you can view our blog here. (TJL)

Jonathan Walfisz

Author | Reporter

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Jonathan Walfisz