YouTube win in copyright case at CJEU; call for TPAC nominations; OECD counterfeit trade report – news digest

Every Tuesday and Friday, WTR presents a round-up of news, developments and insights from across the trademark sphere. In our latest round-up, we look at new research from Scamadviser, the Buy Safe America Coalition welcoming an update to the Big Tech accountability memo, INTA and the IP Office of the Philippines signing an anti-counterfeiting MOU, and much more.

Market radar:

Taylor Wessing launches Beijing Tailun IP Agency Taylor Wessing has established an exclusive relationship with a specialist trademark and IP agency in China. Beijing Tailun IP Agency opened at the start of 2020 to pilot operations with select clients of Taylor Wessing before its official launch this week. The agency is led by partner Thomas Pattloch, who was formerly the IP officer of the EU Delegation to China, and launches with the appointment of five new lawyers. The move enables the agency to provide coordinated international support for clients in all aspects of contentious and non-contentious IP matters, including registering, managing and defending trademarks, domain names and copyrights in mainland China. The agency will cooperate exclusively with Taylor Wessing lawyers for strategic advice and assistance in trademark and IP enforcement matters. Pattloch said: "China's importance as a trademarks and copyright hub is increasing. Taylor Wessing's team has a leading reputation throughout Europe in IP, and opening an independent agency dedicated to these services was the obvious next step. Clients will benefit greatly from the opportunities the new agency presents. Having a licensed IP office provides them with greater value and efficiency from international advisors that can support them across all aspects of IP needs."

Why and where consumers buy fakes – Scamadviser has released its 2021 “Why do consumers buy fakes?” report, which draws on a survey of 1,102 consumers from around the world. Among the headline findings are that 65% of respondents consider themselves capable of identifying counterfeit goods – although this varies greatly by industry. For example, only 10% feel that they could identify fake medicines and toys. Turning to buying habits, over half (57%) have bought a fake product in the past either unknowingly or while doubting the originality of the product. Almost a fifth (18%) admit to having knowingly bought fakes (most commonly clothing, electronics and accessories). Websites are the most popular channel to buy counterfeits (39%), followed by online marketplace (28%) and physical stores and social media sites (22% each). The study also provides insight into what would dissuade consumers from buying counterfeits. The primary reason for buying fake goods is that 17% of consumers believe that there will be no significant difference, suggesting that this could be a misperception to tackle – especially when coupled with the finding that 42% said that concern about the quality of the product would deter them from purchasing. Other concerns are that purchasing online is not safe as financial data may be misused (37%) and that the product may not be delivered (31%).

OECD tracks counterfeit trade – The Organisation for Economic Cooperation and Development (OECD) has published a new report, titled “Global trade in fakes: a worrying threat”. The report quantifies the magnitude, value, scope and trends of global trade in counterfeit and pirated goods, drawing on enforcement data sets. It estimates that the volume of international trade in counterfeit and pirated products amounted to as much as $464 billion in 2019 or 2.5% of world trade (roughly equating to the gross domestic product of advanced OECD economies such as Austria and Belgium). The study also provides an in-depth assessment of the situation in the European Union, calculating that imports of counterfeit and pirated products into the European Union amounted to as much as €119 billion in 2019, representing up to 5.8% of EU imports. Returning to the global picture, it states that, while counterfeit and pirated goods originate from virtually all economies across all continents, China remains the primary economy of origin. Meanwhile, fake goods tend to be shipped by every means of transport. Small parcels are the most common form of delivery, posing a significant challenge in terms of enforcement. In terms of value, counterfeits transported by container ship clearly dominate, accounting for more than half of the global value of counterfeit seizures in 2019.

Buy Safe America Coalition welcomes update to big tech accountability memo – We recently reported on Congresswoman Cathy McMorris Rodgers’ Big Tech Accountability Platform, which looks to rein in the power of Big Tech and has a policy target of requiring tech companies to implement and maintain reasonable moderation practices in relation to counterfeit products on their platforms. This month, a third pillar of focus was added to the memo alongside Big Tech responsibility and power – namely, Big Tech and China. On the topic of fake goods, it states: “Big tech companies must do more to address the sale of counterfeit goods coming from China. To address this concern, we will explore online marketplaces’ policies and practices for addressing counterfeit goods, including any additional scrutiny applied to sellers based in China.” This week, the Buy Safe America Coalition wrote to McMorris Rodgers to applaud the update, stating: “According to a January 2020 report by the Department of Homeland Security, the annual cost of counterfeit and pirated goods being sold in the US is over $500 billion, with 90 percent of seized products in 2018 arriving from mainland China and Hong Kong.” The letter concluded: “We look forward to working directly with you, your staff, and every member of the committee to prioritize vital consumer protection measures to online marketplaces.”

Legal radar:

CJEU sides with YouTube in copyright infringement case – The Court of Justice of the European Union has sided with YouTube in a copyright infringement case, ruling that online platforms are not liable for users loading unauthorised content unless they fail to expeditiously delete or block access to protected content where they have specific knowledge that it is available illegally on their platform (Joined Cases C-682/18 and C-683/18). The decision confirms that, as it currently stands, online platform operators do not, in principle, communicate to the public where copyright-protected content is illegally posted online by platform users. However, they do make such a communication where they have contributed, beyond merely making the platform available, to providing public access to such content. Reacting to the decision, Lucy Harrold, partner at Keystone Law, said: “This case demonstrates that EU law is still lagging behind where rights holders want it to be. Chasing individual uploaders of infringing material is a challenging task and it would therefore greatly assist IP owners to be able to hold social media platforms to account. These companies benefit financially from the infringements via advertising revenue but still remain largely protected from the consequences of uploaded infringing material (as long as they implement preventative measures and act quickly once notified of potentially infringing content). This case does not appear to change the law merely to restate it and any greater accountability on the part of social media platforms will require further legislation at an EU level and around the world.” 

Office radar:

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

Time is running out to make TPAC nominations – Three weeks remain for nominations for both the Patent and Trademark Public Advisory Committees (P/TPAC). The USPTO announced the nomination period to fill upcoming vacancies in a Federal Register Notice on 24 May 2021, providing additional PPAC and TPAC nomination information and application procedures on its website. Submissions are due on or before 9 July 2021. The Public Advisory Committees were created in 1999 to advise the secretary of commerce, the under secretary of commerce for intellectual property and the director of the office on the management of patent and trademark operations, including matters relating to goals, performance, budgets and user fees. Each committee consists of nine voting members appointed by, and serving at the pleasure of, the secretary of commerce. Additional details are available in the Federal Register Notice.

IPONZ improves offerings – The IP Office of New Zealand has unveiled a range of improvements to its website and online case management offering, including the addition of the Trademark Specification Builder, a tool for searching pre-approved trademark goods and services terms. The office explains: “The search uses artificial intelligence to provide better results and related terms. Plans are underway to integrate similar features into our trademark application form.” Elsewhere, notifications of the restriction or cancellation of international trademark registrations designating New Zealand from their office of origin will no longer be immediately actioned in the New Zealand trademark register. Instead, its case management facility will automatically impose a three-month delay before implementing the change. “This delay is to provide an opportunity to request for the NZD to be transformed into a national application or registration,” the office states. “Applicants must still email us at [email protected] to request for this transformation.”

INTA and IPOPHL sign anti-counterfeiting MOU – The IP Office of the Philippines (IPOPHL) has signed a memorandum of understanding (MOU) with INTA, focusing on collaboration in anti-counterfeiting efforts by improving capacity and raising awareness among consumers, businesses, online platforms and national authorities. The MOU was signed by IPOPHL Director General Rowel S Barba and INTA President Tiki Dare in a virtual ceremony on 22 June. Barba stated: “We are thankful to INTA for always standing with IPOPHL in the past years. But today, we elevate our collaborative relations to a more solid partnership where we will be pursuing a multi-pronged strategy on capacity building, awareness, and global dialogue.” The MOU work plan will be implemented throughout 2022 and before being assessed to identify areas that need further work and potential new concerns that demand action from both parties.

Media Watch: 

Better news for Banksy on Australian trademarks – This week on WTR we reported on the EUIPO Cancellation Division’s declaration that four of Banksy’s trademarks are invalid. On Wednesday came better news for the street artist, with The Guardian reporting that he has successfully applied for trademarks for two of his most famous artworks (‘Love is in the Air’ and ‘Girl with Balloon’) in Australia. The registrations will apply to the use of the images on a range of goods, including posters, handbags, umbrellas, bedsheets, clothing and rugs.

On the move: 

Barnes & Thornburg expands national footprintBarnes & Thornburg has announced the opening of a Boston office, its 20th in the United States. The new office is anchored by the addition of experienced IP partners Ronald E Cahill, Heather B Repicky, Rory P Pheiffer and Derek Roller, who join current partners Robyn S Maguire and Matthew Leno. “These attorneys are top practitioners in their field and have skills that complement our talent across the country,” said William R Boudreaux, co-chair of the life sciences practice. “They not only counsel clients on their IP strategy, but also advise at the C-suite level on how to align IP strategy to achieve larger business objectives. Bringing them on board gives us the ability to immediately serve the burgeoning life sciences community in and around Boston.” 

Murgitroyd announces senior appointmentsMurgitroyd has announced two senior appointments to its leadership team, with Helen Archibald joining as COO and Joanne Lecky being appointed managing director, trademarks. Gordon Stark, CEO, commented: “We are thrilled to attract someone of Helen’s calibre to Murgitroyd. Helen will lead business operations across our international office network and her experience in legal professional services will enhance our ability to focus on strategic delivery, operational efficiency and the use of technology to support our growth ambitions. Helen’s background in HR will also be important in supporting and developing the talent within the company, as our people are at the heart of our business. Joanne Lecky is a skilled trademark attorney, trusted by her clients to protect their brands. She has also demonstrated the drive and leadership skills to ensure that our trademark group remains a leader in its field and responds to the changing needs of brand owners as they embrace an increasingly digital world. Joanne’s appointment reflects the importance which we place within Murgitroyd on providing tangible opportunities for career development, as the company grows.”

And finally... 

Latest edition of the WTR 300 now available WTR is pleased to announce the publication of the fifth edition of WTR 300: The World’s Leading Corporate Trademark Professionals. The publication identifies the individuals deemed to be the leading lights of the corporate trademark world. The full methodology for the publication is available here but, in summary, we ran a three-month campaign to elicit nominations from the trademark community. Individuals who received multiple nominations from outside their own organisation were long-listed and the editorial team then engaged in additional research and outreach before deciding on the final list. The full list is now available to view here.

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