Barbie setback, Fiji pledges improved IP environment and Coco a success despite trademark backlash: 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 today’s edition, we look at Mattel facing a trademark opposition setback in Japan, how domain name growth has slowed due to a drop in new gTLDs, and how a pop superstar identified fakes of her own merchandise being sold – which led to the arrest of her uncle. Coverage this time from Trevor Little (TL), Tim Lince (TJL), Adam Houldsworth (AH) and Timothy Au (TA).

Legal Radar:

Fiji pledges to improve registration and enforcement of trademarks – The prime minister of Fiji, Voreqe Bainimarama, launched the country’s 5-year and 20-year national development plan last week, and it includes some key pledges regarding intellectual property. Talking about the plan as a whole, Bainimarama said he hoped it would transform Fiji into “an even more progressive, vibrant and inclusive society”, with bold plans including reaching almost 100% renewable energy by 2030. As part of its plans for structural reforms, the government promises “to ensure effective arbitration and mediation processes” in legal disputes, as well as “improving registration and enforcement of copyright, trademarks and patents”. Specific details on how this would be done were not given, however. There was also a pledge to develop and strengthen “intellectual property rights for protection of traditional knowledge” in the government’s effort to bolster local culture and tourism. Furthermore, in describing its plans to expand the country’s transport network, the government revealed that it would be establishing an “accreditation of vehicle repairers and service agencies and tyres to guard against counterfeiting” – an issue identified as holding back improvement. Finally, Fiji pledges to “further streamline” and “reduce red tape” all procedures related to customs. While IP was hardly the focus of the Fijian government’s long-term plan, there are stipulations in it that should be seen as a positive by the trademark community. (TJL)

State-run Russian company suffers setback in long-running vodka trademark dispute – A Russian state entity, Federal Treasury Enterprise Sojuzplodoimport (FKP), has had its trademark infringement suit against SPI Spirits suspended by the Federal Court of Australia until further notice. The case concerns the right to the famous vodka brand Stolichnaya, which originated in the then-Soviet Union; the Russian state claims that it inherited exclusive rights to the brand, while SPI – the private descendant of the company which sold the brand during the Soviet era – also lays claim to trademark. In suspending the case, The Drinks Business reports, the Australian court instructed FKP to pay SPI’s legal costs and gave it until November 30th to submit documents it “has been withholding for years”. SPI seems to be gaining the upper hand in the international dispute between the two parties, which has been raging for the past twelve years: this month, SPI also won a US District Court against FKP, and in October a Brazilian lawsuit was decided in its favour too. (AH)

Mattel’s Barbie opposition fails – The MArks IP Law firm reports that global toy manufacturer Mattel, the maker of Barbie, has failed in an opposition of the mark ‘Salon BARBIES’, which was filed in classes 35 (advertising and business services) and 43 (hotels and restaurants). The Japan Patent Office (JPO) acknowledged that Mattel’s BARBIE mark had acquired a high degree of popularity and reputation as a source indicator of dolls, but denied the similarity between the two marks from visual, phonetic and conceptual points of view. Mattel has a long history of enforcing its trademark rights the world-famous doll, often without success. (TA)

Art fair settles trademark suit against Adidas – Having sued Adidas for trademark infringement earlier this year, Art Basel has now reached a settlement with the famous sports brand. The suit was initiated in May when Adidas used the art fair’s name on a new limited edition range of high-end sneakers, which are being sold online for between $100 and $500. Art Basel sought an end to the sale of the shoes in question and demanded damages for the dilution of its brand rights. In a statement confirming that the dispute has been settled amicably, Adidas conceded that it had not obtained a license for the Art Basel brand and expressed regret for its actions. (AH)

Rihanna spots counterfeits, inadvertently leads to uncle's arrest – Local media in Barbados has reported on the uncle of Rihanna being arrested for selling counterfeits of the pop superstar’s fashion merchandise. Specifically, local musician Leroy Brathwaite was accused of selling fake version of products from Rihanna’s brand partnership with Puma. Curiously, a police spokesperson revealed that it was Rihanna herself who identified the fakes which led to her relative's arrest: “Rihanna was in Barbados, saw the knock-off products of her brand being sold, she reported it to her Puma executive back in Curacao or wherever the case may be. The executive officer came to Barbados, made a check, realized the produce or merchandise was indeed fake and made a report to police, and we investigated.” That investigation led to the arrested of Brathwaite who was charged with selling goods bearing the Puma sign which were likely to be mistaken for the registered trademark Puma. While a standard counterfeit charge on the face of it, it’s heartening to know that even multimillionaire music stars are concerned enough about fakes to report them. (TJL)

Domain name radar:

Domain growth slows as new gTLDs drop takes its toll – Growth of the worldwide domain industry continued to slow in the third quarter, according to data from CENTR, reports Domain Incite’s Kevin Murphy. However there are caveats. There were 311.1 million registered domains across over 1,500 TLDs at the end of September (representing just 0.7% year-over-year growth), with a 7.2% decline (to 20.6 million names) experienced across new gTLDs. As Murphy notes, though, the latter decline is “largely due to just two high-volume, low-price gTLDs — ‘.xyz’ and ‘.top’ — which lost millions of names that had been registered for pennies apiece”. Excluding these TLDs, CENTR notes that year-over-year growth for the whole industry would have been a healthier 2.5%. (TL)

Market radar:

ipan and IPfolio team up – IP management services and software provider ipan has established a strategic alliance with IPfolio Corporation, a provider of next-generation IP management software. The agreement includes a minority investment by ipan in IPfolio, which will use the financial injection to increase its market access. The partnership will also allow ipan to offer an increased software solutions to its customers with the IPfolio software covering patent and trademark filings and renewals, as well as validation and docketing services. In a press release announcing the move, ipan's founder and CEO, Anton Bory, proclaimed: "IPfolio's rapid acceptance in the market is proven and along with our existing software Unycom and ipss, both of which we continue to develop, IPfolio extends ipan's spectrum of leading-edge and integrated IP software and services. The connection between IPfolio's software solution and ipan's service portfolio will enable us to offer an unmatched IP management solution to the market that is not available today." (TL)

Washington state embraces online trademark searching – On the Seattle Trademark Lawyer blog, Atkins Intellectual Property’s Michael Atkins brings news that the Washington Secretary of State’s database of trademark filings is now searchable online. While you can’t search by attorney or goods or service, Atkins welcomes the move, noting that previously “searching state records was a hit-and-miss (and mostly miss) affair with the Washington State Digital Archives. Or it meant spending time on the phone”. As to the new offering, he expands: “Users can now search Washington trademark filings by trademark number, owner name, trademark word elements, or Uniform Business Identifier (UBI) number. Once a filing is found, you can click a hyperlink and see PDFs of the as-filed documents. The interface is publicly-available, and it’s free.” We spoke to an expert back in 2015 about US state trademarks, who calls for their abolition. On the contrary, it appears the state systems of trademarks are continuing to improve. (TL)

British design group launches IP initiative – Last week saw the launch of a new IP scheme by the Society of British and International Design (SBID). The initiative, unveiled at the UK Parliament, aims to decrease IP infringement in the interior design industry by raising awareness among innovators and helping them to develop clear evidence of brand and design ownership. Working with the UKIPO and Police Intellectual Property Unit, SBID is planning to establish an IP register to allow innovators to record their design rights from an earlier stage. (AH)

Media watch:

Movie world goes loco for Coco despite trademark hiccup – The Washington Post has a feature article this week on the success of Disney/Pixar’s new movie Coco, which has been declared an “animated smash” after bagging over $70 million in its first few days of release in the US. The article looks back at the movie’s nearly decade-long creation process, and – crucially – the “significant PR blunder” that occurred in 2013 when Disney applied to trademark “Día de los Muertos” – the name of the Mexican holiday that Coco focuses on. The move sparked a backlash from various major Latino voices at the time, including some calls to boycott the film on release. In the article, Coco’s story supervisor Jason Katz described the backlash as “tough to take in”, adding: “Working at Pixar, you’re in a little bit of a bubble. We’re removed from the machine to a certain extent [We were] trying to be as genuine and authentic as you can. It wasn’t something we were expecting. We were all just disappointed and sad.” He further described how the backlash caused a changed attitude by the entire movie studio. While the wounds from that perceived trademark overreach have since healed (the movie has been a huge success in Mexico), it’s a reminder of the social responsibility trademark practitioners have when considering their trademark registration strategy. (TJL)

And finally…

Time running out to make nominations for the WTR Industry Awards – World Trademark Review is currently inviting nominations for its extensive annual research project, designed to identify and recognise the leading in-house trademark teams and individuals. Act now to ensure that the industry’s leading lights are recognised at the WTR Industry Awards 2018, as the nominations window closes next week.Click here now to access our short survey form and ensure that your peers and colleagues receive the recognition that they deserve. (TL)

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