21 Apr
2020

Trump campaign cease and desist; INTA event goes virtual; data on covid-19 counterfeiting – 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 rapper Pitbull being granted two trademarks for his yell, Victoria Beckham in a trademark dispute, New Balance ending another Chinese lawsuit, and much more. Coverage this time from Trevor Little (TL), Bridget Diakun (BD), Jonathan Walfisz (JW) and Tim Lince (TJL).

Market radar:

Not full of hot air. Pitbull registers his yell - US rapper Pitbull, otherwise known as Mr. Worldwide, has sought protections for his yell. The performer appears to not be shouting into the wind with his attempt as the yell has been a mainstay feature of many of his hit songs. Pitbull’s yell is a ‘grito’ which has significant links to Mexican tradition and has been discussed by the musician and his attorneys in the latest issue of the NYU Journal of Intellectual Property and Entertainment Law journal. In the article, they discuss the historical relevance of the grito and Pitbull’s use of his distinct version throughout his career – culminating in the USPTO granting two marks for the yell. The article notes that “we believe that Pitbull’s registration of his grito for musical sound recordings is the first time a sound trademark within a song has been registered in the principal register for musical sound recordings.” The journal’s editor-in-chief, Nicholas Vincent said of the article: “This could be a new way of protecting products or branding that can better help consumers and audiences identify products. It’s opening the door to potential new trademark protection that could be lucrative for a lot of entertainers.” (JW)

A data-led view of covid-19 counterfeiting – A report published by Europol has provided an up-to-date threat picture of the activities of counterfeiters during the COVID-19 crisis, drawing on data from EU Member States and Europol’s partner countries. The analysis reveals that the companies targeting the EU for distribution of counterfeit pharmaceutical products and equipment are registered to addresses both within the EU (Bulgaria, Germany, Netherlands, Poland among others) and outside the EU (China, India, United States). Meanwhile, although some product offers for counterfeit goods related to the COVID-19 pandemic have appeared on the dark web, the product offerings available there remain limited compared to the surface web, which continues to host the primary distribution platforms for counterfeit goods. On the surface web, in addition to established platforms, a significant number of new websites have been established for the express purpose of profiting from the pandemic – these websites selling fake COVID-19 home test kits and offering unconfirmed and often false advice on the treatment of COVID-19. Europol Executive Director, Catherine de Bolle, states: “Counterfeit goods sold during the corona crisis do not meet the required quality standards and pose a real threat to public health and safety. People who buy these fake products have a false sense of security, while they are in fact left unprotected against the virus. Therefore, we should not only go after the criminals behind these scams, but also, through prevention work, inform potential victims who are putting themselves and others at risk by using such fake goods.” (TL)

Trump 2020 campaign sends cease and desist over fake merch – US President Donald Trump’s 2020 election campaign has sent a cease and desist letter to a Nashville-based couple for selling counterfeit Trump merchandise. In the letter, it is claimed that the activity “hurts the President’s Campaign and you must immediately cease and desist or the Campaign will take all necessary measures to protect its rights”. The couple are charged with wrapping a bus in Trump branding and selling merchandise from the bus. Startlingly, as well as the IP infringement, the campaign claims the couple had been operating during the coronavirus pandemic. “Your infringement is bad, but even more reprehensible is the fact that your bus has been seen operating in April in contravention of the President’s national emergency declaration and Governor Lee’s shelter-in-place directive. People think your bus is affiliated with the Campaign. You work a great disservice on the President’s campaign when you to give the false impression that the Campaign is not taking the COVID-19 pandemic seriously. {sic}" The move reflects the attitude of the general counsel of the Trump Organisation, Alan Garten, who told WTR when Donald Trump first announced his candidacy for US president: “While we appreciate the support of the public, we cannot permit the dilution of Mr Trump’s intellectual property rights.” (TJL)

INTA New York event goes virtual – The International Trademark Association (INTA) has announced that its upcoming 2020 New York Conference, which was previously postponed due to coronavirus concerns, will now be held virtually. In fact, this is the association’s first-ever virtual conference, and promises to deliver “the same exceptional content you’ve come to expect in a combination of live and on-demand offerings that will provide opportunities to learn and network with colleagues from around the world”. The theme of the event is “Brands in Society: Their Influence and Responsibility”. (TJL)

Legal radar:

Spin Master lodges record win in China – Children’s entertainment company Spin Master has won a major victory in a long-running patent dispute against a toy producer in China, resulting in the largest damages ever awarded to a foreign patent owner. In a first instance judgment, the Suzhou Intermediate Peoples’ Court found the defendant Guangzhou Lingdong Creative Culture Technology Ltd had infringed Spin Master’s patents covering its Bakugan children’s toy line (including its rollable shape), and awarded damages of RMB 15.5million ($2.2million) – the largest ever for a foreign plaintiff according to public data for patent infringement cases in China. In a press release, Douglas Clark, global head of dispute resolution with Rouse (which represented Spin Master) stated: “The high damages awarded and successful private prosecution are both extremely rare and send a clear message to IP rights holders globally and to potential infringers in China that infringement of IP rights will not be tolerated. If ever there is a time when the courts in China might err on the side of local protectionism you would be forgiven for thinking it is now, just as the economy recovers from Covid-19. The fact that they have ruled so emphatically in favour of protecting the legitimate rights of the IP owner is a clear and bold statement.” (TL)

Victoria Beckham brings Aussie skincare company to court over ‘VB’ initials – Victoria Beckham has stepped up her battle against VB Skinlab, a Sydney-based skincare company over the use of two trademarks using the letters ‘VB’, reports The Sydney Morning Herald. The Aussie business applied to register the trademarks ‘VB Salon’ and ‘VB Skinlab’ in Australia to cover beauty salon services, skincare products and cosmetics. The applications were met with opposition by Beckham who claimed the brand would confuse consumers, and also alleged the company was acting in bad faith. The fashion designer currently uses her initials for a luxury clothing line as well as cosmetics. The opposition was unsuccessful, with IP Australia rejecting both arguments and ordering Beckham to pay for VB Skinlab’s legal costs. The fashion designer has now appealed the decision at the Federal Circuit Court. (BD)

New Balance gets to the finishing line of another major Chinese suit – Footwear brand New Balance has secured a $1.5 million win in China, reports The Fashion Law. The Pudong New Area People’s Court in Shanghai decided that defendant New Barlun was guilty of unfair competition for its use of a similar ‘N’ logo on its shoes. New Barlun had originally argued that, despite New Balance’s China trademark for its ‘N’ being registered before New Barlun’s one, New Barlun’s mark was still significantly different. This argument was dismissed as the court held that the two marks were “identical with or similar to” each other. It was therefore found that the New Barlun mark was not registered in good faith. Alongside finding New Barlun guilty of unfair competition, the court ordered them to pay $1.5 million in damages, reminiscent of previous seismic wins by New Balance in Chinese courts. (JW)

Office radar:

(For more of the latest coronavirus-related updates from national IP offices, please read our dedicated article which is being continuously updated)

EUIPO updates examination guidelines – The EU Intellectual Property Office (EUIPO) has announced a new electronic version of the EUIPO Guidelines for Examination of EUTMs and RCDs. Various new features have been implemented following feedback from users. Improvements include an advanced search function and the ability to download PDFs of parts or sections from the guidelines. (TJL)

Media Watch:

Zoom becomes the go to tool for weddings as well as work –  Owen Smigelski, head of ICANN compliance and Relations – and a former trademark attorney who served as senior counsel for Sunrider Corporation and as an INTA committee member – hit the headlines this week. While many in the trademark world are embracing Zoom as the ‘go to’ platform for business communications, The LA Times reports that Smigelski and wife-to-be Carolyne turned to the platform to host their wedding when the coronavirus pandemic put paid to plans for a physical gathering. In a description that will be familiar to those seeking to use video conferencing platforms while working from home, the outlet notes that, at the allotted time, the happy couple booted up their computer and welcomed guests: “Some people were dressed up, some casually rumpled. A couple of bridesmaids wore their gowns. Some guests sat in their living rooms munching on snacks, as if they were unseen, watching TV one way. Babies burbled. Dogs moved across frames. Fingers filled them. People wandered away and returned. Conversations some thought were private really weren’t.” However, vows were said and champagne glasses were raised. One of his wedding pictures is posted here. Congratulations to Owen and Carolyne from everyone at WTR! (TL)

Two Canadian lawyers apply for COVID-19 mark – Montreal lawyers, Meriem Amir and Giovanni De Sua, have filed applications for COVID-19 and ‘COVID-19 prevention and care’ at the Canadian Intellectual Property Office (CIPO). The duo’s filing on 25 March was reported on widely by the Canadian press, with commentators doubting the likelihood of the marks being registered. The likely opportunistic filings is typical when any new word enters the public lexicon. However, the move inevitably tarnishes trademarks in the public eye. On a Reddit thread discussing the topic, comments included “Ahhh, lawyers. The only thing worse than a global pandemic” and “Personally, I vote we let them take the trademark, but hold them responsible for the impact of their IP for personal injury and economic loss”. (JW)

On the move:

Greenberg Traurig announces New York partner promotions – Greenberg Traurig has announced a number of promotions including three members of its New York office’s IP & technology practice. Julie P Bookbinder has been elevated to the position of shareholder, and Jeffrey R Colin and Brian Prew have been promoted to of counsel. Bookbinder’s practice addresses a number of intellectual property areas including patent, trademark, copyright, and trade secret litigation, patent prosecution and non-litigation enforcement of trademarks and copyrights. Colin focuses on complex patent litigation with a specialty in pharmaceuticals, medical devices, and consumer electronics. Prew is an IP litigator who works across industries including pharmaceuticals, computer software financial services and biotechnology. (BD)

Akerman expands Chicago office – Akerman has strengthened its Chicago office with the hire of two new partners, Joel Sestito and Kevin Shortsle. Sestito is a member of the real estate finance practice, and Shortsle is part of the firm’s IP group. Shortsle is an IP litigator and his practice focuses on pharmaceutical, chemical and medical device technologies. He also counsels clients and handles patent prosecution. Akerman’s national IP team has experienced significant growth over the past year, with four partners joining the ranks in Tampa, Chicago and Austin. (BD)

Linklaters announce partner and counsel elections – Linklaters has announced its global counsel and partner promotions. Three members of its TMT/IP practice have been elevated to new roles. Greg Palmer and Agnieszka Mencel, of London and Warsaw respectively, have been promoted to counsel. Guillaume Couneson has been elevated to partner, he works out of the Belgium office. (BD)

And finally...

Have you say on coronavirus impact on trademark practiceWTR is inviting trademark professionals to share their perspective on how the ongoing covid-19 pandemic is impacting brand protection efforts. The aim of this new project is to understand the issues that have arisen in recent weeks, explore how industry is adapting and pass the findings along to help the wider trademark community. Any views that you supply will be used only to build up a general picture of the state of the market (your responses may therefore be used anonymously in editorial, but will not be attributed to you, and your information will not be used for any commercial purpose). Completion of the survey should take no more than 5 minutes. The results will be presented on the WTR platform in the next couple of weeks. The survey form is available here. (TJL)

Jonathan Walfisz

Author | Reporter

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Jonathan Walfisz