“Banksy of trademarks” loses Beyoncé opposition, Kuwait online action urged, and The Iso Zone closes: news round-up

Every Tuesday and Friday, World Trademark Review presents a round-up of news, developments and insights from across the trademark sphere. In our latest edition, we look at how urgent action is required for owners of Kuwaiti trademarks, the closure of a Rick & Morty-themed pop-up bar, Moutai ending its 17-year bid for the NATIONAL SPIRIT mark, how to create an effective brand name, and much more. Coverage this time from Trevor Little (TL), Tim Lince (TJL), Adam Houldsworth (AH) and Timothy Au (TA).

Legal radar:

Kuwait office urges online action – A client alert from Clyde & Co reports that a Kuwait Trademark Office circular advises that any trademark applications filed during 2017, which are still pending, must be entered onto its online filing system by 31 August 2018. The bulletin notes that, at this stage, it is unclear whether this requirement will also apply to applications filed prior to 2017. However, for those who have pending 2017 applications, it is time to get online. (TL)

Moutai ends 17-year bid for NATIONAL SPIRIT trademark – Kweichow Moutai, the most famous liquor brand in China, has put an end to its 17-year long attempt to register the mark NATIONAL SPIRIT, after it recently withdrew its appeal against a Chinese trademark office decision. The liquor brand had first tried to obtain rights to the phrase as a trademark in 2001. While China’s trademark office allowed the application to proceed in 2012, it subsequently ruled against Moutai in 2016 following strong objections from over 30 parties, including other local distilleries, on grounds that the term would breach unfair competition rules since it would suggest that the brand is the best liquor in China. Moutai attempted to obtain a registration for the mark for a tenth time this year but the office upheld this decision, leading to Moutai’s appeal; however, in a statement released last week, Moutai withdrew this appeal and apologised to the trademark office. Despite being deemed the most valuable liquor company in the world last year – overtaking Diageo – this will no doubt be a major setback for the Chinese brand, which has come to be known as ‘China’s national spirit’ by many of the public. (TA)

“Banksy of trademarks” loses Beyoncé opposition – Back in 2016, we spoke with Mike Lin, who called himself “the Banksy of trademarks” following a host of politically-charged trademark applications, including NASTY WOMAN (filed a day after Donald Trump uttered it to rival Hillary Clinton at the final presidential debate in 2016), MAKE AMERIKKKA GREAT AGAIN, COPS SHOOT FIRST, and STOP DMCA. He has also filed countless marks, totalling over $35,000 in fees, seemingly related to other entities, including Disney (HOUSE OF MOUSE, TO INFINITY AND BEYOND), Kobe Bryant (THE BLACK MAMBA) and Beyoncé Knowles (POISON IVY PARK), although he stringently denied any link in our interview, saying “I claim no knowledge of popular culture”. Fast forward two years, and Lin is still ruffling feathers in the trademark world. On Friday, the TTAB made their decision in relation to Lin’s mark for POISON IVY PARK (which was filed two weeks after Beyoncé launched an IVY PARK fashion line). The TTAB ruled against Lin, therefore sustaining the previous opposition and refusing registration of the mark. San Francisco-based Lin reached out to World Trademark Review following the decision, and shared a blog post on the subject. In it, he explained why he was unable to respond to the opposer’s motion for entry of judgment during the appeal. “I fell into a depression from July to August of 2017 where I could not get out of bed, and returned to live with my parents in Taipei, Taiwan. It was at that time that my response was requested, and I was in no mindset to do so. I also spent 55 days in a mental health facility in Taipei from Nov to Dec, 2017 resulting in missed deadlines.” With over 270 domain names and 74 trademarks, we’re sure this won’t be the last time we hear about Lin’s branding activities. (TJL)

Market radar:

China eyes blockchain leadership role – A lot is written about Blockchain and the transformative potential of the technology with respect trademark transactional and anticounterfeiting work. This week on Bloomberg, John Butcher reports that the national and local Chinese authorities are offering incentives to companies to protect blockchain IP rights, with local commentators regarding the move as motivated by a desire “to gain ground in the burgeoning technology ahead of overseas competitors”. The article also states that further government measures to protect blockchain IP are likely, “including potentially classifying it as a national security risk in order bring it under China’s cybersecurity law”. For those bracing themselves for a blockchain IP revolution, developments in China should be closely watched. (TL)

Kenya turns to Comesa for help on tackling fakes – According to The East African, Kenyan manufacturers have been increasingly turning to the Common Market for Eastern and Southern Africa (Comesa) for support in tackling illicit goods entering Kenya’s marketplace. At a recent meeting in Nairobi, the Kenya Association of Manufacturers requested Comesa to establish a dedicated institution to deal with counterfeits in Kenya. It is understood that Comesa has a similar body dedicated to anti-competitive practices, with the association stated that a body focused on fighting fakes could be an effective countermeasure. (TJL)

Another day, another pop-up bar receives IP warning –  The Washington Post has reported on a Rick & Morty-themed pop-up bar in Washington DC being shut down before its launch following an IP dispute. The bar, called The Wubba Dubba Lub Pub, was supposed to open last Friday but Turner Broadcasting – which airs Rick & Morty on its Cartoon Network TV channel – announced it was seeking an emergency hearing in US District Court due to alleged IP violations. Now, on the website of the pop-up bar, the owners have published a scathing response, claiming: “We have to lay off our beloved employees and take a massive financial hit, all because Turner Broadcasting/Cartoon Network are unwilling to figure out a way to let a great fan tribute happen. We are so sorry to all the fans but we also have learned a valuable lesson: when it comes to free speech and fair use, Turner Broadcasting/Cartoon Network believes that should only be a joke on the show.” The website also urges fans to post messages to Turner Broadcasting on social media. The situation, on the face of it, is in contrast to the “super classy” approach taken by Netflix last September, when a Stranger Things-themed pop-up bar opened in Chicago. But this isn’t the first time Turner Broadcasting has discovered pop-up establishments using a Rick & Morty theme – back in January, it granted permission to a Chicago-based arcade bar themed on the popular animated show. It appears, then, that some trademark departments are increasingly having to deal with pop-up bars, restaurants and shops themed on popular entertainment intellectual property. The key is being prepared to respond. (TJL)

SIPO focuses on IP along the Belt and Road – China’s State Intellectual Property Office is to host a conference on intellectual property rights along the Belt and Road initiative later this month. As reported by CGTN, around 300 industry experts and government representatives are expected to attend, with participating countries exploring possible areas of cooperation in the field of intellectual property among BRI countries and further implement the IP cooperation projects initiated in 2016. The meeting will feature both a public round-table discussion as well as closed meetings, with He Zhimin, SIPO deputy commissioner, stating: “Intellectual property cooperation among Belt and Road countries will help these countries further expand in global markets. And enterprises among the countries will come to know the IP systems and business environment of these Belt and Road countries well, promoting their development in global markets.” The initiative – which combines the land-based Silk Road Economic Belt and oceanic Maritime Silk Road - will have a significant impact on the flow of goods across Eurasia, making it one to watch for rights holders. Following closely on the heels of this conference is the four day China Trademark Festival, which takes place in Tangshan and features contributions from INTA and MARQUES, as well as host organisation The China Trademark Association. In terms of international trademark industry events, China is clearly the place to be this August. (TL)

Media watch:

Nintendo’s lawsuit against retro game sites continues to send ripples – We reported last week on Nintendo’s multi-million dollar trademark and copyright suit against two websites hosting video games from past Nintendo consoles. Although the case is currently pending, a similar website – Emu Paradise – very quickly took note of the message being sent by the games company and removed all of its content, claiming that it was not worth the “potentially disastrous consequences”. Now, The Iso Zone, another retro gaming site, has done the same, it has been reported. However, in a statement released by The Iso Zone, it hopes that this will not be an end to such websites, arguing that “criminals should not be made of passionate enthusiasts”. It goes on to suggest that rights holders should work with the owners of these websites to make retro games easily available to help put an end to piracy. Using Spotify as an example that “pretty much stopped all serious cases of online music piracy”, the company believes “it’s time there was a happy medium like Spotify for retro gaming”. Whether this would be the more effective option in the long run for Nintendo is up for debate, but for now it’s clear that the gaming giant’s lawsuit has managed to send ripples across the retro gaming community. (TA)

Top tips for creating a brand nameOver on Business Insider, Rob Meyerson, a brand consultant, shares a number of tips on how to come up with a creative brand name. Following discussions with ten naming experts, Meyerson lists several methods to aid with the name creation process: having an open-source mindset and being willing to share and discuss ideas with others in the community; utilising technology, including artificial intelligence, as quantity can lead to a rise in quality; taking breaks to see the issue with a fresh set of eyes; changing up your routine, such as moving from words to imagery or digital to pen and paper; and approaching the task from unexpected angles – one suggestion being the deliberate creation of bad names initially before identifying what makes them fail to work. (TA)

Korea prosecutes franchise owners for personal trademark registration – A new blog on Korea JoongAng Daily explains the issues behind the country’s high-profile ongoing trials concerning the practice of franchise company owners registering trademarks under their own name. Several of Korea’s best-known franchise companies do not own the rights to their own brand, which have instead been registered personally by company owners or their family members. The Korea Intellectual Property Office, in a recent report, revealed that this situation applies to 159 out of 216 franchisors with 50 or more stores. This practice, the blog explains, passed without controversy until 2015, when the Justice Party and activist groups made civil complaints against the owners of four restaurant franchises - including Bonjuk, Won Halmeoni Boassam and SPC’s Paris Croissant - accusing them of unlawfully earning money from royalties. Earlier this year, prosecutors decided to press forward with accusations that three out of the four owners have broken the country’s trademark law and profited at the expense of their companies. The owners of SPC Group have returned their rights and repaid their royalties in full to the company, but Bonjuk’s owners continue to contest the allegations, arguing: “It is completely possible and not unlawful for an individual to apply for a trademark for something he or she has created and designed”. But prosecutors argue that once individuals establish companies to manage their business, they have a duty to transfer trademark rights to that company. As well as taking particular company owners to court, the government is also seeking to change trademark laws in order to make it more difficult for individuals to register trademarks for their companies’ branding. (AH)

And finally…

Get to know the corporate trademark world’s leading lights – World Trademark Review has published the enhanced version of the 2018 WTR 300: The World’s Leading Corporate Trademark Professionals list. This community-led research project identifies the individuals deemed to be the leading lights of the corporate trademark world, and now features profiles of many of the industry’s leading trailblazers. Click here to access the enhanced version. (TL)

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