Call for more robust online RPMs, Alibabacoin hits back and getting legal advice from a robot: 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 a trademark infringement lawsuit involving much-loved US TV sitcom I Love Lucy, the experts calling for more robust RPMs, how Alibabacoin is hitting back at the Alibaba lawsuit and how the Smiley trademark owner is targeting the Indian market. Coverage this time from Trevor Little (TL), Tim Lince (TJL), Adam Houldsworth (AH) and Timothy Au (TA).

Market Radar:

Alibabacoin hits back at accusation of trademark infringement – We reported last week on Alibaba accusing a Dubai-based cryptocurrency developer, Alibabacoin, of trademark infringement. A lawsuit was filed by the Chinese e-commerce giant in the United States last week, accusing the defendant of a “ploy” to use the Alibaba name to raise over $3.5 million in cryptoassets from investors through Initial Coin Offerings – therefore engaging “in a willful and concerted campaign to cause the public to believe falsely that Alibaba is the source of defendants’ products and services”. Now, a week later, and Alibabacoin has publicly hit back. In an email to Forbes, the Alibabacoin Foundation states: “The word Alibaba does not belong to a certain entity or individual. may have protection afforded by the trademarks acquired, however, [the] word Alibaba is free of use in its legitimate business activities.” With no sign of the cryptocurrency company backing down, it looks like this could be a bitter battle between the two sides. (TJL)

Owner of Smiley trademark targets Indian market – The Smiley Company, the owner of the Smiley trademark, is looking to expand the influence of its famous mark by teaming up with licensing and merchandising agency Dream Theatre to commercialise the smiley symbol in India. The mark is already registered in over 100 countries and 14 product categories, but The Smiley Company is now hoping to extend its licensing business into India and is currently creating a shortlist of licensing and merchandise applications for the brand, including food and beverages and daily-use items. The company has stated it is eschewing a one-size-fits-all approach; despite fashion and lifestyle accounting for the majority of its revenues, fast-moving consumer goods are higher in value in India and will be focused on more. (TA)

TrademarkVision in awards contention – Visual search company TrademarkVision is a finalist in the 'Exporting Innovation' category in the 2018 CRN Impact Awards. The award – established by CRN, an Australian news and insight platform for IT resellers, service providers, distributors and vendors – is dedicated to Australian technology firms that have developed their own intellectual property, successfully commercialised it and are winning export sales from international customers. In its coverage of the shortlist, CRN notes that the offering – now in use by IP offices in Australia, Chile and the European Union – is “streamlining logo searches using computer vision and artificial intelligence (AI). It is to trademark professionals what reverse image searches such as Google Images and TinEye are to consumers”. As to how the system is helping offices, Carolina Belmar, deputy manager of the department of trademarks, geographical indications and appellations of origin at the National Institute of Industrial Property (INAPI), told CRN: “[TrademarkVision] results are available in seconds and the most relevant ones are placed at the beginning of the list. This has an enormous impact in the quality of trademark examination, as we are no longer partially blind when it comes to figurative signs and can now base a refusal decision on a solid reason, not only due to the fact they have the same Vienna codes but due to the comparison of the images themselves.” The winner of the award will be announced next month. (TL)

Legal Radar:

USPTO up in Q1 of 2018 – IP attorney Erik Pelton has looked at trademark filings at the USPTO in the first quarter of 2018, and it reveals a modest increase. In all, according to the iPelton Blog, trademark filings rose by 5% in Q1, with 113,068 new applications filed. For comparison, in the first three months of 2017, that figure stood at 107,561. In the same time period in 2013, only 80,591 marks were filed – a reminder of the rapid growth rate at the USPTO in recent years. (TJL)

Levi files trademark suit over famous red tabs – It has been reported that fashion brand Levi is suing French fashion brand Kenzo, owned by LMVH, for trademark infringement for allegedly copying Levi’s famous red tabs on its jeans. Levi’s complaint states that Kenzo’s infringement threatens to cause the American denim brand to lose sales and suffer “incalculable and irreparable damage” to its goodwill. It also claims that Kenzo has failed to comply with a number of cease-and-desist letters, which have called for it to stop selling the clothing with similar tabs. The complaint was filed with the district court in San Francisco. (TA)

CBS sued for I Love Lucy infringement – US television network CBS is being taken to court by the production company behind the the 1950s hit series, I Love Lucy. Desilu Productions claims that CBS, in using the name DESILU and related images, has infringed its trademark rights. The TV network in turn claims that it possesses shared rights to the Desilu and I Love Lucy brands, which it acquired from Paramount Pictures. This is denied by Desilu Productions, which asserts that its creators (actors Lucille Ball and Desi Arnaz) coined the term long before they became famous. CBS is also said to have disrupted recent efforts by the production company to resurrect the Desilu brand, causing the organisation “irreparable damage”. Desilu Productions is seeking a declaratory judgement that CBS does not own rights to DESILU, and is wants all of the profits earned by the network through use of the brand. (AH)

Over 10% of British people would prefer legal advice from a robot – We wrote last year about a new report that “robots could cause a job plunge in the legal sector”. It was based on a report from the Law Society, a body that represents solicitors in England and Wales, about the fall in legal sector jobs due to the increased use of artificial intelligence. Now, a few months later, there is further research on the response to receiving legal advice from so-called robots. Specifically, a new survey by Reboot Digital Marketing and Mindshare has found that 14% of British people would rather take legal advice from robots than humans. For comparison, the survey found that 11% would prefer medical advice from a robot, 25% would prefer robots elected to positions of political power rather than humans, and 60% would prefer robots when going through the process of purchasing a car. The immediate good news, of course, is that 86% of people would rather get legal advice from a human. But the question now is, as automation and AI become more advanced, whether that figure remains as high in the future. (TJL)

Domain name radar:

Expert calls for more robust RPMs – On his law firm blog, Winston & Strawn’s Paul D McGrady has examined two recent UDRP and URS complaints, spurring him to conclude that – while providing an opportunity to tackle squatting – the current RPMs do nothing to actually deter infringers from attempting to register such domains in the first instance. He argues: “What is striking about these examples of cybersquatting in the new gTLDs, is that both marks are fairly well known and there really is no way that someone could have ‘accidently’ registered either of them. What that shows us is that rights protection mechanisms (or RPMs, as those in the trade call them) are insufficient to prevent cybersquatting… Their function is reactive rather than proactive. A squatter simply has no incentive not to squat since neither the UDRP panelists nor the URS panelists can order damages or attorneys’ fees. Most squatters just hope to make money off of the domain names and hope either not to get caught or that the brand owner, at significant expense to the brand owner, will use an ICANN RPM to recover the domain name rather than taking the squatter to court to get damages and attorneys’ fees.” As such, he suggests it is time to “insist that ICANN come out with robust RPMs that actually deter cybersquatting, rather than just serve as a hammer in a perpetual game of whack-a-mole”. Unfortunately, as he notes, the problem is likely to intensify if GDPR provides a further barrier to identifying infringers. In fact, he concludes, GDPR is set to make UDRP and URS proceedings “more difficult, less efficient, and costly”. (TL)

On the move:

Greenberg’s Dwayne Mason elected to HIPLA board – It has been announced that Dwayne Mason, shareholder and head of Greenberg Traurig’s Texas IP litigation practice, has been elected to the Board of the Houston Intellectual Property Law Association (HIPLA). His 2-year term as a director of the HIPLA board commenced on April 1.  Mason’s practice focuses on patent, trademark, copyright, trade secret and technology-based litigation, in addition to patent and trademark portfolio management. (TA)

Deutmeyer joins Fredrikson & Byron – Attorney Tracy L. Deutmeyer has joined US law firm Fredrikson & Byron as an officer in its Advertising, Marketing & Trademark and Copyright Protections & Enforcement groups. She joins from McGrath North. In the press release announcing the hire, attorney Bridget Penick commented: “Deutmeyer’s expertise as a skilled trademark attorney enhances our office’s intellectual property capabilities, and we are delighted to expand upon our caliber of services throughout Iowa.” (TJL)

Former patent judge Dongju Kwon joins Yoon & Yang – Korean firm Yoon & Yang has recruited Dongju Kwon to its sprawling IP practice group. Kwon, a former Korean patent court judge, joins the firm as a partner as of 15th March; he brings 18 years’ experience judicial experience to role, as well as international savvy he picked up working as part of WIPO’s standing committee on the law of patents and the International Trial Division at the Supreme Court of Korea. (AH)

Lewis Silkin acquires slogan search provider – UK law firm Lewis Silkin LLP has announced its acquisition of Adslogans, a specialist provider of global marketing slogan search services, with many prominent clients in the marketing and advertising field. Adslogans capabilities in the review of straplines, catchphrases and slogans are hoped to help the law firm provide valuable non-legal branding services, which complement its well-established legal practice in trademark law. Lewis Silkin partner Dominic Farnsworth said: “We work closely with many brand owners and agencies on new product and business launches, re-branding projects and advertising campaigns, and both ourselves and our clients have frequently used Adslogans to augment our trade mark clearance programme. Slogans, in particular, can be a concern for advertisers, with few resources out there to help assess any risk of passing off and other similarly contentious IP issues.” (AH)

And finally...

Exclusive survey presents details evolving risks and opportunities – Over the past week, World Trademark Review has posted a series of intelligence pieces focused on the 2018 Global Trademark Benchmarking survey results. To date, we have:

In the coming days, assessments of the effectiveness of customs authorities and litigation forums around the world will be unveiled. (TL)

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