Deep dive into Apple counterfeit fight, Skripal poison pair trademark, and most valuable UK brands: 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 China and Singapore partnering up for an IP initiative, the malware threat from pirated content being quantified, another trademark scam highlighted, domain name portfolio struggles revealed, a German court dealing a blow to ICANN, and much more. Coverage this time from Trevor Little (TL) and Tim Lince (TJL).

Market radar:

Singapore and China to set up IP Innovation Service Centre – IP ValueLab, the enterprise engagement arm of Singapore’s IP Office, has signed an MOU with the Sino-Singapore Guangzhou Knowledge City Administrative Committee and Sino-Singapore Guangzhou Knowledge City Investment and Development Co to set-up an “International Intellectual Property Innovation Service Centre” in the Sino-Singapore Guangzhou Knowledge City. The centre is intended to connect IP expertise within the government and private sectors from both countries, and to tap into Singapore’s experience in building IP skills to set up an IP college in Guangzhou. The Centre will also enable China’s enterprises to gain access to ASEAN and other key overseas markets via Singapore. Tan Shau En, executive director of IP ValueLab, states: “The new IP Innovation Centre will be a critical link in the global innovation ecosystem with Guangzhou and Singapore acting as attractive bases to anchor and commercialise IP, enabling access to high growth regions in ASEAN and the Greater Bay Area, and bolstering high value economic growth for Guangzhou and Singapore.” (TL)

Most valuable UK brands revealed – WPP and Kantar Millward Brown have announced the 2017 UK Top 50, which ranks the 50 most valuable brands in the UK in the last year. The list is topped by Vodafone, with a brand value of $28.9bn, followed by HSBC ($23.6bn), Shell ($20.3bn), BT ($13.6bn) and Sky ($12bn). A number of new brands entered the ranking for the first time, including JustEat, Deliveroo (which is reportedly in talks with Uber over a possible acquisition) and BrewDog. The most notable trend from this year’s results, according to the press release, is the importance of innovation. “If a brand fails to innovate in a way that consumers find both meaningful and different, it drops in value. The brands considered innovative and meaningfully different – Dulux, Just Eat, Dyson, BBC, BrewDog, Compare the Market, Tesco, Sky, John Lewis and Innocent – are worth twice as much on average compared to low performers on both aspects.” (TJL)

Malware threat from pirated content quantified – New research has uncovered over 4,000 files containing malware or potentially unwanted programmes from more than 1,000 websites suspected of sharing illegally protected content. In an EU-wide research project carried out by the EUIPO, the 4 000 malicious files originated from approximately 100 individually developed pieces of malware, often marketed as being useful user software, including fake game installers and free programmes to access and stream pirated content. Commenting on the study, which was carried out in collaboration with the United Nations Interregional Crime and Justice Research Institute, EUIPO acting executive director Christian Archambeau warned: “Our previous research has shown that over half of digital natives say they consider the safety of a site to be a priority when accessing content online. Today’s study findings are [therefore] important for all online users, of whatever age, as they highlight the inherent dangers in copyright-infringing sites.” Whether that message is heard, and leads to behaviour changes, remains to be seen but proof of the danger is there for all to see. (TL)

Skripal poison pair to be awarded trademark – In what may be the most unusual trademark story of the week, two Russian men suspected of poisoning two people in the UK will “be awarded a trademark for the production of chemical compounds and perfume”. According to The Moscow Times, a Russian company, Golden Brand, has applied to register the trademark for the term PETROFF & BOSHIROFF, the surname of the suspected pair, Alexander Petrov and Ruslan Boshirov. A spokesperson for the company said: “After the name gets registered, we will gift it to Boshirov and Petrov, and they can start a company if they want,” further admitting they “did it as a marketing tool; it's good for public relations.” The article states that the trademark is in classes for the manufacture and sale of industrial chemicals and perfume, as well as to operate fitness centers and travel agencies. On the surface this is an unusual (and, to some, humourous) PR stunt following a baffling interview with the pair in which they claimed to be innocent tourists who flew from Russia to the UK solely to visit “Salisbury Cathedral's 123-metre spire”. But ultimately the move involves filing an application for the name of two people suspected of attempted murder. How Rospatent will treat the application remains to be seen. (TJL)

Legal radar:

Another week, another trademark scam – Over on the iPelton blog, there is a sense of déjà vu as the ever watchful Erik Pelton warns of yet another trademark solicitation scam – this time from the International Patent and Trademark Register (IPTR). Pelton observes: “The offer is worthless. For just $2,356 they will register your trademark their database. I have never heard of their database, their database is not complete, and I have never once heard a trademark professional refer to their database as a resource.” Pelton recently used the USPTO’s comment period on its Draft 2018-2022 Strategic Plan to call for action, stating: “At a minimum, increased funding and staffing for enhanced coordination with the Department of Commerce, Federal Trade Commission, Small Business Administration, US Postal Service, and other agencies to combat this issue would be welcomed by trademark users.” Whether that makes it into the plan will hopefully be known in the near future, but clearly more action is needed to tackle this ongoing headache. (TL)

Media watch:

Column rips into changing dynamic of branding – On CMSWire, web satisfaction expert Gerry McGovern posted an interesting column on the changing concept of brands. Specifically, it looks at how a brand image is shaped differently today that in previous generations, with some brands struggling to catch up. The final paragraph is particularly poignant, and demonstrates how brand owners must be nimble in the digital age: “Online, millions are manipulated, but millions more go online because they are developing immunity to branding. They’re on their own journey, questioning more, comparing more, reviewing more, sharing more. Old branding controls the journey. New branding supports the journey.” If this is true, how should trademark practitioners adapt in an era when consumers, just as much as a company itself, shapes a brand image? (TJL)

Deep dive into Apple counterfeit web – A USA Today article takes a close look into an ongoing investigation by Apple into counterfeit goods of its products being sold on Amazon. The article investigates the origin of where some of these products, a number of which were deemed unsafe to use, are sold, beginning in Brooklyn, New York. Interestingly, the usually media shy Apple offers a comment in the article, clarifying that the company is cracking down on fakes: “The safety of our customers is our first priority, and our teams are constantly working with law enforcement, resellers and e-commerce sites around the world to remove counterfeit products from the market." The article is a reminder, then, of the daunting task that Apple has to combat fakes. (TJL)

Domain name radar:

Domain portfolio struggles uncovered – The Second Annual Domain Management Survey, conducted by Brandsight, has evidenced the increasing difficulties facing domain name portfolio managers – with 88% of respondents stating that dealing with the impact of GDPR and the inability to access WHOIS contact information has been a particular issue. Additionally, 81% of respondents reported that paring back bloated portfolios has been a challenge (in large part likely due to the need to spend less – 88% also said that reducing domain management expenditures is an important goal). With the future of WHOIS access still up in the air, expect the headaches to continue for the foreseeable future. (TL)

German court deals blow to ICANN – The German Higher Regional Court in Cologne has rejected ICANN’s plea for it to reconsider a previous decision related to the organisation’s a dispute with EPAG, a Germany-based registrar that is part of the Tucows Group. In June we reported that ICANN was to appeal a decision not to issue an injunction it requested against EPAG, the initial request a response to EPAG’s announcement that it will no longer collect administrative and technical contact information, as it believes collection of that data would violate GDPR rules (ICANN requires this information to be collected). In making its latest ruling, the court found that the preliminary injunction proceeding does not provide the appropriate framework for addressing the nature of the contractual disputes at issue, and that a decision in preliminary proceedings does not appear to be urgently needed. However, as ICANN noted, the court did not address the merits of the underlying issues with respect to the application of GDPR as it relates to WHOIS, and the organisation is strategising its next steps as it seeks to obtain legal clarity over the collection of WHOIS data in light of GDPR. (TL)

Friday catch-up:

 Every Friday in our news round-up we will provide a quick rundown of the latest news, analysis and intelligence posted on World Trademark Review. Over the past week we:

  • Published a guest blog calling on rights holders to participate in ICANN’s trademark owners survey, feedback from which will be used to inform the rights protection mechanism review;
  • Reported on the launch of a groundbreaking new free IP database from ARIPO;
  • Explored the creative strategies that will be essential for brands venturing into newly-legalised US marijuana markets;
  • Explained how the evolution of ‘trademark counsel’ to ‘brand professionals’ will significantly impact service demands;
  • Argued that UK retail chain Tesco’s trademark ‘misstep’ may actually be a conscious commercial decision;
  • Revealed that US trademark litigation filings remain flat in 2018 as Central District of California continues to be ‘go-to’ venue;
  • Noted how social media buy-and-sell groups are to be targeted in anti-counterfeiting initiative backed by UK government.

And finally…

Get the inside track on cost-effectively managing trademark portfolios WTR is pleased to announce that Managing Trademark Assets Europe will be heading to London on 28 January 2019. The event will present cutting-edge strategies for the creation, protection and monetisation of strong brands, with attendees hearing senior in-house counsel across a range of industries discuss how best to manage risk, ensure continued brand protection coverage and communicate the value of brands to the business in a bid to secure multi-stakeholder support. Delegate places cost just £795 but registrants using the code ONLINEEB before 7 December can save £200 on this rate. Click here to register. (TL)

Unlock unlimited access to all WTR content