Burberry targets Target, Google launches GDPR-ready WHOIS records and battle of the cat hotels: 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 why Burberry is filing suit against discount retailer Target, Kenya’s president's warning about counterfeiting damage, how Google changing its WHOIS records in time for the upcoming GDPR enforcement date and much more. Coverage this time from Trevor Little (TL), Tim Lince (TJL), Adam Houldsworth (AH) and Timothy Au (TA).

Legal radar:

Burberry takes anti-counterfeiting battle to Target – Burberry has filed a US lawsuit against Target alleging the retail giant’s “repeated, willful, and egregious misappropriation of Burberry’s famous and iconic check trademarks”. The Fashion Law notes that, according to the $8 million-plus trademark infringement and counterfeiting lawsuit, Target has been selling products bearing “blatant reproductions” of Burberry’s world famous check mark for over a year and will not stop, despite cease and desist efforts on the part of the fashion company. With respect the likelihood of confusion, Burberry adds that Target’s history of collaborations with popular brands and designers makes this likely. For its part, Target states that it has “great respect for design rights” and is seeking to address the matter “in a reasonable manner”. (TL)

Dr. Dre loses trademark dispute with Dr. DraiTMZ reports that rapper Dr. Dre’s request to block a trademark application from a gynaecologist has been dismissed by the USPTO. The rapper had been locked in a dispute with the Pennsylvania-based gynaecologist – who goes by the name Dr. Drai – for a number of years, ever since the latter filed to trademark “Doctor Drai OBGYN & Media Personality” in 2015. In his application, it is mentioned that he has been used the name Dr. Drai for both books he has authored and public appearances. Despite claiming that the application would cause confusion in the marketplace, the USPTO ruled that there was not enough evidence that this would be the case given their different fields of operation. (TA)

Only six marks registered from Liberia – The director general of the African Regional Intellectual Property Organisation (ARIPO), Fernando dos Santos, has revealed that only six trademarks from Liberia have been registered through the ARIPO system, a statistic that he states is “of great concern” to the organisation. Reported by the Liberian Observer, and talking at a two-day seminar on “fostering creativity and innovation for economic growth and development in Africa”, dos Santos stated that one key aim to encourage protection is to raise awareness on the benefits of IP protection – especially in the academic sphere. “We have no marks, patents or industrial designs filed by Liberian institutions and we believe we can reverse this situation,” he concluded. (TJL)

Battle of the cat hotels – A luxury hotel for cat lovers has become embroiled in a trademark dispute with another feline-inspired hotel due to use of its menu terminology. The Pet Joint Pussy Palace opened at Cwm y Rhinwedd Farm in Denbigh, Wales last month, and shortly afterwards received a cease-and-desist email from another cat hotel, the Longcroft Luxury Cat Hotel, located in Hertforshire, England. The email requested the hotel’s owner to stop using the term “Al la Cat” – a term the Pet Joint uses for its pun-filled menu. “We hadn’t really thought about this being a brand name at all or that someone could trademark something like this,” the owner stated. “We were really surprised and initially thought about fighting this but after checking a government website we found they were right and it was registered to them. Now we need to come up with a new name.” (TJL)

Market radar:

Report shows low awareness and interest for IP litigation insuranceA new report on the IP litigation insurance landscape has been published by the European Observatory on Infringements of Intellectual Property Rights. It reveals that IP insurance is more popular in regions such as the United States, China, Japan and Australia, but that IP insurance schemes are generally seen as a niche product, especially in Europe, with few IP rights holders expressing awareness or interest in it. The report concludes that the main reason for this is cost – it notes that insurance premiums are perceived to be too high, while coverage is too limited. It states that lowering these premiums would likely make IP insurance products far more attractive for rights holders. (TA)

Multiple criminal groups dismantled in southern China counterfeit operations – A collection of counterfeit products worth approximately $6.3 million has been seized by police in southern China, it has been reported. Guangdong police conducted two separate operations that led to the seizure of the counterfeit products, including fake Penfolds wines and Swisse and Blackmores supplements, and the dismantling of a number of criminal groups. It was stated that the counterfeits were mostly being sold through e-commerce and social media platforms, including WeChat. These products were advertised as being “overseas direct sales” and some were making a 1000% profit despite selling at a discount compared to authentic products. A Pensfold spokesman urged customers to look for their wines at authorised retailers, and it has been reported that the Australian company has created an internal investigations team to work closely with Chinese and Australian authorities on the matter. (TA)

Kenya’s president warns of damage counterfeiting is doing to country’s economy – Kenyan president Uhuru Kenyatta has highlighted the problem faced by the country in terms of counterfeiting. Speaking to parliament during his annual State of the Nation address, he warned that the Kenyan government loses more than 30 billion shillings (nearly $300 billion) in revenue a year as a result of counterfeiting, unlicensed products and tax evasion. He said such activities were also leading to a loss of jobs and direct investment, and affected a broad range of consumer goods sectors, including cosmetics, beverages and pharmaceuticals. (AH)

Domain name radar:

Google gets ready for GDPR – Over on Domain Name Wire, Andrew Allemann has spotted that, with enforcement of the General Data Protection Regulation (GDPR) now just weeks away, Google has changed the records it displays on thick Whois records. Specifically, it has commenced displaying only state, country, and organization name details. Referring to a ‘.app’ registration he made, he notes: “There’s no email address and no way for people to contact me about this domain name”. The longer we wait for confirmation of ICANN’s proposed approach to GDPR compliance for WHOIS data, the more we will see registries adopt their own approach. (TL)

Media radar:

Tesla boss facing trademark loss? – An article on The Outline has looked at a so-called “subtle but undoubtedly sucky blow to [Elon] Musk’s ego”: a USPTO trademark application for his name. Specifically, it focuses on a third-party applicant from Georgia who filed an application for the term ELON MUSK for T-shirt products. According to the application, there are plans to sell Elon Musk themed shirts on four websites (‘elonmusktees.com’, ‘elonmusktees.net’, ‘elonmuskapparel.com’, and ‘elonmuskapparel.net’), all of which are not currently active. As the article notes, the examiners could – and arguably probably will – reject the application for its apparently false connection to the Tesla entrepreneur. (TJL)

WSJ highlights alarm over China filings – This weekend, the Wall Street Journal turned its attention to the unprecedented number of US trademark applications coming from China. Jacob Gershman reports that around one in nine trademark applications reviewed by the USPTO is China-based, with many “rife with false information” and causing concern for officials. Of course, readers of World Trademark Review will be well aware of this phenomenon – we started reporting on it back in detail back in November, highlighting both the startling numbers and providing examples of fraudulent specimens. As to the reason for this surge, the media outlet speculates that it could be fuelled by cash subsidies that Chinese municipal governments are offering to citizens who register a trademark in a foreign country. We have previously covered the Chinese government’s ambitious ‘Made In China 2025’ initiative, aimed at propelling domestic companies onto the world stage. In this instance, many of the applicants are smaller merchants. Therefore, it could well be that the renewal rate is low when it comes for these marks to be extended. In the meantime, it means more clutter on the US register. (TL)

On the move:

Awapatent becomes AWA, announces expansion – After more than a century as Awapatent, the IP consulting firm has rebranded as AWA. Magnus Hallin, CEO, explains: “We make this change to have a brand that better reflects the extensive and true full-service offering of intellectual property services that we have today. Services related to patents have, since our founding in 1897 by Anders Wilhelm Anderson, been a large part of our offering. It will definitely continue to be so in the future, but our current services cover the whole spectrum of intellectual properties and assets, ranging from search and analytics, filing and prosecution, to litigation, licensing, strategy and unfair competition.” In addition to the rebrand, AWA has established a desk at the tech incubator CIC (Cambridge Innovation Center) in Boston and is due to launch a new client platform, initially for the renewal of IP rights. (TL)

Leydig unveils Boulder branch – Leydig, Voit & Mayer has announced the opening of a new office in Boulder, Colorado. The Chicago-based IP law firm additionally has offices in Washington DC, San Francisco, and Frankfurt. The Boulder contingent will be housed by attorneys Stephen Barone, Gary Chapman, Sally Sullivan, Mary Breen Smith, Michael Curtis, Neal Vickery, and scientific advisor Boris Chernomordik. (TA)

And finally…

Issue 73 of WTR now live – The latest edition of World Trademark Review magazine is now available online. The cover story – which subscribers had early access as part of our commitment to the digital-first delivery of content – presents in-depth analysis of this year’s Global Trademark Benchmarking Survey. Additionally, the issue contains coverage recent and developing trends in false advertising law, analysis of recent UDRP decisions, an exploration of the future of 3D trademarks and a reassessment of the enforcement toolbox in China – and much more. To browse all the newly available content, click here. (TL)

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