8 Jan
2019

Sweden allows hologram marks, plain packaging design gets thumbs up, and Dyson fakes seized: 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 US Supreme Court confirming that it will rule on scandalous trademarks, a retailer called Pooey Puitton going up against Louis Vuitton, a new cooperation agreement between three major IP offices in Asia, IP Australia joining TMclass, and much more. Coverage this time from Trevor Little (TL), Adam Houldsworth (AH), Bridget Diakun (BD) and Tim Lince (TJL).

Market radar:

Chinese authorities hoover up Dyson fakes – The South China Morning Post has reported on an anti-counterfeiting operation from the Shanghai Public Security Bureau, which saw 400 counterfeit Dyson hairdryers, 1,500 half-finished products and 200,000 components seized in a joint action carried out by officers from Shanghai, Guangdong and Fujian in the middle of December. In addition, 36 people were arrested – with the company behind the illicit operation estimated to have made more than 10 million yuan ($1.5 million) through the sale of fakes. The authorities noted that the Shanghai police had investigated 500 cases involving intellectual property right infringement throughout 2018. This latest action illustrates the lucrative nature of counterfeiting, and further highlights the continued importance of such actions. (TL)

Lancet warns of fake malaria medicine dangers – Renowned medical journal The Lancet has published a case study highlighting the perils associated with counterfeit malaria treatments, it has been reported. The study concerns the case of 28-year-old woman who caught malaria while travelling in Equatorial Guinea. Eventually recovering quickly after being treated with authentic treatments Artesunate, she had previously become life-threateningly ill having attempting to treat the condition with what transpired to be fake malaria drugs. The drugs were confirmed to be fake by the London School of Hygiene and Tropical Medicine, although they were sold in packaging which appeared genuine at first glance. The Lancet article, however, draws attention to some important tell-tale signs that the medicine was fake, including a small number of spelling mistakes on the packaging. The prestigious journal has previously claimed that more than one-third of all antimalarial drugs sold worldwide are counterfeit; but, as this case study reminds us, it may be difficult to tell which ones. (AH)

Canadian praise marijuana plain packaging – In an unusual twist, Canadian citizens have been complimentary over the proposed design of plain packaging for newly-legalised marijuana products. Of course, such packaging is designed to be as unappetising as possible, with the design for tobacco goods often in a dull green colour (often described as “the world’s ugliest colour”). But in Canada, the proposed design for marijuana packaging is in a more appealing dark grey. In a new poll, according to iPolitics, Canadian have described it as “understated, sleek and cool”, with respondents aged between 18-24 finding the proposed wrapping “particularly appealing”. Positively from a health perspective, though, “most felt the plain packaging would not entice the children and young people”. In a separate article in The Province, it was argued that placing newly-legalised marijuana products in standardised packaging is robbing Canada of an opportunity to lead in cannabis brands. “If Canadian regulations continue to restrict consumer goods companies from differentiating themselves from their competitors, if they continue down the path of plain packaging and their stranglehold on consumer information, Canada will not be the country that innovated value-added cannabis products,” the article states. “It will not be able to compete with cannabis consumer brands in the legalized American states, who have the freedom to create a positive consumer experience with their products through branding them in new and attractive ways.” With all cannabis brands unable to differentiate themselves in their packaging design, it certainly seems like Canadian cannabis brands will be held back when it comes to developing unique, standout offerings in this fledgling industry. (TJL)

Global brands use trademark litigation to stake out their claim in India – The past year has seen multinational corporations invest more to fight local businesses in India which mimic their famous names and images, reports Indian newspaper The Economic Times. Companies are able to utilise their trademark protections as a means to establish a hold in the market as the country becomes increasingly serious about strengthening IP laws. Managing partner at SS Rana and Co, Vikrant Rana, argues that the fight to defend trademarks is becoming fierce. He says, “This is a result of the uproar against an increase in counterfeiting, misuse of trademark on several ecommerce portals and the constantly changing face of issues related to trademark infringement”. Starbucks is one such global giant which took local business Sardarbuksh to court for its similar name. The Delhi High Court ruled in favour of Starbucks on August 1, but this will likely be appealed. It is expected that India will continue to reform its IP system, making it a safer place to operate as businesses are able to rely on and leverage their legal protections. (BD)

David v Goliath narrative cited in Toy-R-Us trademark dispute – UK media outlet The Manchester Evening News has reported on a cease and desist letter received by a local nursery chain sent by toy company Toys-R-Us. The letter expresses concern with childcare provider KidzRus’ trademark application for the name, pointing to its own rights in the ‘Kids-R-Us’ mark. In response, Nicola Fleury told the outlet: “Our own brand is known, the logo is known. People who go on Google to look for outstanding nurseries, KidzRus would come up. We'd have to start from the beginning and we're not able to do so”, adding that the this was a “David and Goliath situation”. The piece notes that the toy company no longer operates in the UK, but in reality this may make it even more protective of the name. In October we reported that the hedge funds which own the business have decided to hold onto the trademarks and seek to rebuild the company, rather than auction off its assets. As such, it is likely to be increasingly vigilant against any perceived threats to its brand at a time when it is seeking to add value. (TL)

Legal radar:

Supreme Court to rule on scandalous trademarks – The US Supreme Court has agreed to review Iancu v Brunetti. In February 2018, after the Federal Circuit’s reversed the TTAB's finding that FUCT was unregistrable under Section 2(a) of the Lanham Act, the USPTO filed a petition for a rehearing en banc in In re: Brunetti, a decision it contended “invalidates a century-old provision of federal trademark law that renders trademarks containing ‘scandalous’ and ‘immoral’ matter ineligible for the benefits of federal registration”. The Supreme Court will now have its say on the matter, a ruling that should be closely monitored by the trademark community. (TL)

Pooey Puitton retailer seeking declaration of non-infringement - MGA Entertainment, the company behind a toy branded as ‘Pooey Puitton’, has asked a federal court in California to issue a declaratory judgment that its product does not infringe Louis Vuitton’s trademark rights, it has been reported. This comes after the famous French fashion house is said to have complained that the toy is infringing and diluting its trademarks, including its Toile Monogram pattern (although there is no sign that it launched legal action against MGA). The Los Angeles-based entertainment group argues that the “poop-shaped (carrying case) made out of hardened plastic” could not be mistaken by any reasonable consumer for a handbag intended to be used by adults.The product is a “sufficiently obvious and blatant” parody, it claims, “designed to mock, criticize and make fun of wealth and celebrity”. (AH)

Office radar:

IP Australia joins TMclass – The European Union Intellectual Property Office (EUIPO) has announced that IP Australia has joined its TMclass tool. The tool, which allows users to search and translate goods and services to and from any of 44 available languages, now has 73 participating national and regional IP offices. (TJL)

Korea-China-Japan pledge closer trademark cooperation – Three major IP offices in Asia have pledged closer cooperation when it comes to matters related to trademarks. The intellectual property offices of China, Japan and Korea signed the cooperation agreement last month, with the KIPO stating in the announcement: “Such an agreement is becoming more and more important as the protection of trademarks is becoming more important due to the increase in trade in the region.” The commissioners of the three registries have agreed to “cooperate in the field of IP litigation such as invalidation trials, as international IP disputes are increasing” – so it will be interesting what new developments occur following this pledge. (TJL)

India launches new e-filing system for designs – The Indian Intellectual Property Office has announced a new “comprehensive e-filing system for designs”, which launched last week. According to the office, the system allows applicants to “file all requisite forms along with respective fee through the e-filing system”. The new system can be accessed here. (TJL)

Sweden allows hologram and audio trademarks for first time – Beginning on January 1, the Swedish IP Office (PRV) now allows applicants to register “audio, moving images and holograms” as trademarks – a function that was previously only possible for EU brands. According to the office, the change of law is “a great opportunity to be able to extend brand protection to more types of media and technology”. (TJL)

New director at IMPI – The Mexican Intellectual Property Office (IMPI) has appointed Juan Lozano Tovar as its new general director, replacing Miguel Ángel Margáin. Tovar took over last month, and arrives at the office with a wealth of experience. As the IMPI explained in a press release, he has worked as managing director of fertiliser company Pemex Fertilizantes, served as secretary general of the Inter-American Conference on Social Security, and worked within Mexico’s Ministry of the Interior. (TJL)

Rospatent looks ahead to 2019 – In a detailed blog post about its intentions in the new year, the Russian IP Office (Rospatent) has laid out a series of priorities. The most positive, perhaps, is a renewed commitment to bring down examination times. “The priorities of the department in terms of organising the provision of public services in 2019 remains the reduction of time limits for the registration of IP, while also maintaining the highest level of quality expertise and improving the regulatory framework in the interests of applicants”. For those looking to secure protection in Russia in the next 12 months, look out for possible improvements ahead. (TJL)

Media watch:

Tips on tackling online counterfeits - The China Law Blog has dispensed some interesting pointers on how best to get major e-commerce sites (both Chinese and America) to remove listings for fake items. While most online platforms have procedures in place for taking down IP-infringing listings, it notes, enforcement success depends on following procedures “to the letter”. In practice this means providing documentary proof “1) that you exist and you are an IP owner and 2) that you as the IP owner still have rights to the IP in question. Only after you have submitted these documents and had them verified by the e-commerce site can you even submit a takedown request.” This makes unregistered rights difficult to enforce online – both on Chinese sites, but also on US platforms. The best first step when seeking to enforce unregistered rights is usually to seek a registration, it claims. In China, it helps to have a local registration. And, if you have difficulties in getting a Chinese site to take down a fake listing, it is crucial to employ a counsel who speaks Chinese in order to communicate with higher-level website employees. Sometimes, the blog notes, taking the problem to higher and higher levels within the e-commerce company can be effective in securing a takedown. But for longer lasting benefits, it argues, it may be worth seeking to find out who is behind the counterfeit postings and how they are operating. Fakes can often come from a brand owner’s own distributor or manufacturer. (AH) 

Verge doesn’t take kindly to Verge TV mark – The managing editor of technology outlet The Verge, TC Sottek, has written a short article warning off AT&T from launching a new streaming service called ‘Verge TV’. The suggestion of such a service arose following several trademark applications filed by the media giant. “Seriously, we think ‘Verge TV’ sounds like a great idea,” the article states. “Please check out our YouTube channel. And our existing trademark for ‘The Verge’.” In a particularly snarky conclusion, Sottek writes: “Unfortunately, AT&T, we simply can’t let you have The Verge – if only because being a brand that people love and trust wouldn’t make sense to your customers.” It will be interesting whether AT&T decide to press ahead with its VERGE TV mark or if the threat from The Verge will ward it off without any legal proceedings. (TJL)

On the move:

MOFO elects partners – Morrison & Foerster has announced the election of 12 lawyers to the firm’s partnership, consisting of an equal number of women and men from multiple practice groups across seven offices in the US, Europe, and Asia. In the intellectual property group, Akira Irie, (based in the Tokyo office) and Joyce Liou (San Francisco) have been elevated to partner. Irie has represented clients before US district courts, the International Trade Commission and the USPTO. Liou, meanwhile, focuses her practice on intellectual property litigation, domestic and international trademark prosecution, copyright and trademark enforcement, and domain name arbitration. She has litigated trademark, copyright, and design patent infringement cases, as well as proceedings before the Trademark Trial and Appeal Board. (TL)

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]