GDPR “unmitigated victory” for scammers, Thunderpussy support and World Cup fakes crackdown: 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 round-up, we look at the questions that arose over whether US President Donald Trump violated Deere’s trademark rights, registrations rising for UK spirit marks, Interpol celebrates collaboration, GDPR being labelled “an unmitigated victory for spammers and scammers” and much more. Coverage this time from Trevor Little (TL), Tim Lince (TJL), Adam Houldsworth (AH) and Timothy Au (TA).

Market radar:

Shanghai government initiates campaign to tackle expo-related infringement – With the China International Import Expo just over a month away, authorities have initiated a 100-day law enforcement campaign to crack down on trademark infringement, unfair competition and other illegal business activities in the run-up. As reported by YICAI, the program, dubbed ‘Intellectual Property Protection, and Promotion of Fair Competition’, will see local authorities clamp down on misues of both the official event’s marks, as well as those of exhibitors and well-known foreign and domestic brands. Misleading adverts online will also be a focus. The media outlet expands: “Law enforcement scrutiny will rest on products particularly vulnerable to infringement, especially electronics, agricultural produce and clothing exhibited at the event. [Meanwhile] Regulators will also closely attend to key businesses such as production and sales, trademark printing, advertising and online marketing operations to nip infringement in the bud.” The move will be welcomed by rights holders given the commercial importance of the expo – and the inevitable infringement that will accompany it. (TL)

World Cup crackdown contributes to Chinese customs seizure numbers – In the first half of 2018, China Customs detained more than 32,000 shipments of suspected IPR-infringing goods, involving 7.1 million articles of goods. In total, the goods found to infringe trademarks totalled 6.9 million articles – 97.2% of overall IPR seizures and impacting more than 2,200 domestic and foreign-owned trademarks. According to official statistics, the eastern coastal Customs districts of Tianjin, Shanghai, Qingdao, Ningbo and Xiamen played a major role in cracking down on IP infringing goods, while the inland Customs districts of Shenyang, Zhengzhou, Wuhan and Changchun all registered a rise in enforcement actions. Additionally, the authorities seized more than 30,000 shipments of IPR-infringing goods contained in postal parcels and express couriers. Going into more detail, the authorities revealed that a three-month operation conducted in tandem with Russia Customs, focused on the rights owned by FIFA and the sponsors of this year’s World Cup tournament, resulted in the seizure of more than half a million infringing articles. (TL)

Anti-Counterfeiting Group gets new director - The UK Anti-Counterfeiting Group (ACG) announced on Monday that it has appointed Phil Lewis as its new director, taking over from Alison Statham. The ACG works on behalf of UK business to promote effective IP policies, evidence-based enforcement strategies and multi-party collaborations. From 2001 Lewis worked at the UKIPO as a senior policy advisor on IP crime, and helped to develop the country’s first National IP Crime Strategy. He later joined the European Commission, where he played a central role in the creation of the EU Observatory on Infringement of IP Rights, before joining the ACG as a policy & strategy advisor in 2014. (AH)

Legal radar:

Change in trademark procedures in UAE – The Trademarks Department of the United Arab Emirates’ Ministry of Economy has announced procedures which will impact new trademark applications. From July 9, for all applications – which are required to be filed online – it will no longer be possible to request an amendment after submission except for corrections to the agent-on-record details (provided that a proper power of attorney has been filed). According to law firm NJQ & Associates, in the case that an application contains incorrect information with respect to the international classification number, list of goods and services, missing documents, or any other aspect, “the examination section will issue an office action against such applications, and applicants (or their representatives) cannot amend said application before examination”. (TJL)

Trademark registrations for spirits surge in the UKSpirits Business reports that there has been a steep rise in trademarks for spirits and liquers in the UK, with 2,210 registrations in 2017, representing a 41% increase from the previous year and an 84% increase from just five years ago. Ben Mark, legal director at London-based law firm RPC, attributes this to an industry-wide boost in innovation which has resulted in a plethora of new ‘artisan’ brands being launched. “Many drinks companies are adopting a strategy of launching multiple sub-brands and varieties of their drinks in order to meet consumer and retailer’s demands for limited runs and niche drinks,” Mark states. Of course, with the growing interest in trademarks in this arena, brand disputes likely to increase too, both by number and intensity. (TA)

Media watch:

Questions arise over whether Donald Trump violated Deere mark – Some media reports have asked whether a recent event held by US President Donald Trump may have violated the trademark rights of industrial giant Deere. During a “Make Our Farmers Great Again” campaign stop, Trump threw out hats which appeared to sport Deere’s iconic green and yellow colours. Confirming the colours were not coincidentally linked to the brand, Trump said during the event: “Because we have a lot of farmers in this place, we had this hat made up – it’s the John Deere colours." In an article for USA Today, Deere responded by saying such use of its colours is not infringing due to it being used on apparel. “We're not concerned as long as it's not ag green equipment with yellow wheels,” said a Deere spokesperson, adding that the company appreciates the brand’s colours “being recognised as the color of ag in the Midwest”. While debate on the colours was discussed, Bloomberg further revealed that Trump is one of the “biggest buyers of Deere golf course machines” – suggesting that, rather than using Deere colours solely to connect with a farming audience, the US president is a fan of the brand too. (TJL)

Support for Thunderpussy – Over on Forbes, contributor Michelle Fabio has penned a lengthy message to the USPTO, proclaiming “it’s time to grant Thunderpussy’s trademark”. In the article, she runs through the history of the mark – in which all-female rock band Thunderpussy sought to register the band name in 2015 and got initially refused under Section 2(a) of the Lanham Act for being “scandalous”, and has been suspended following Matal v Tam and In re Brunetti. Following the latter, the group’s attorney Benjamin D. Kerr stated: "[Securing a trademark] will be invaluable for protecting the band's intellectual property rights and help with their economic viability going forward. Washington State has already granted a trademark for 'Thunderpussy' and we hope the PTO will do the same on the federal level." But will the USPTO follow suit? In arguing why the band should be granted the registered trademark, Fabio said the office is wrong in its definition of the term Thunderpussy. “The idea that ‘pussy’ on it own is vulgar and can’t be trademarked simply isn’t true as the PTO has granted trademarks to many other terms containing the word,” she states. “Moreover, there’s no evidence that Thunderpussy’s ‘use of the term is clearly limited to that vulgar meaning’. To the contrary, the band’s overall message is one of female empowerment and doesn't appear to have anything to do with the sexual act described by Urban Dictionary whatsoever.” This is one of many suspended applications that are causing debate on the merits of trademark applications deemed scandalous. Time will tell how this debate plays out. (TJL)

A pat on the back for Interpol and its collaborative approach – Writing in The National, Nick Webster reports on efforts to tackle the trade in counterfeit goods in the UAE, with the role of Interpol coming in for particular praise. Between March and May, Interpol led anti-counterfeit operations across four continents, including the Middle East, and seized 7.2 million counterfeit and illicit items. Interpol also ran an operation that saw authorities in Saudi Arabia detect, investigate and shut down 100 social media accounts used to distribute counterfeit medical products and unlicensed cosmetics. Speaking to the news outlet, Tim Morris, Interpol’s executive director of police services, commented: “The sheer volume of seizures and follow-up investigations generated by these simultaneous global operations are testimony to the fundamental role of Interpol in shaping a coordinated response in regional and international operations. It’s all about collaboration.” However, Webster notes that the private sector is also doing its bit – citing the example of Al-Futtaim Toyota, which (in partnership with the UAE Government) conducted raids on counterfeit car part dealers across a number of emirates and oversaw the confiscation of 178,781 fake car parts. The latter stands as a good example of how, through partnership, the effectiveness of the fight against fakes can be maximised. (TL)

Domain name radar:

GDPR an “unmitigated victory for the spammers and scammers” – Speaking at the Internet Governance Forum USA, David J. Redl, Assistant Secretary of Commerce for Communications and Information, addressed a number of intellectual Property-related issues, noting that the National Telecommunications and Information Administration (NTIA) has “a collaborative relationship” with the USPTO,  which has “allowed each agency to leverage the other’s subject matter expertise to promote a healthy balance between the availability and protection of IP and innovation in the Internet economy”. However, he was less  effusive about the current state of play with respect access to WHOIS data. Having noted that WHOIS is a vital tool to shut down criminal enterprises and track bad actors, as well as being “a first line in the defense of intellectual property”, he opined: “Unfortunately, European authorities have indicated that the collection and public provision of domain name registration data violates the GDPR… This is an unmitigated victory for the spammers and scammers that plague consumers and businesses. NTIA and the highest levels of the US government are engaging with the European Data Protection Board, the European Commission, and European Member States to provide clarity and guidance to the community as it works to facilitate access and accreditation to WHOIS information, which is now private. This access mechanism is critical to meeting the needs of law enforcement, cybersecurity, and rights protection.” Rights holders will welcome his pledge that the NTIA will take a lead role in the process to develop an access mechanism and “fight hard for the important governmental and commercial equities in the WHOIS service”. That road, however, may be a long one. (TL)

‘Stop using UDRP for business and trademark disputes!’ – Many brand owners are wrongly attempting to resolve trademark and business disputes through the Uniform Dispute Resolution Policy process, argued Zak Muscovitch in a recent Domain Name Wire blog. The policy was intended to be limited in scope, providing dispute resolution in cases where there has been an abusive domain name registration, he stresses. It should not be used when a registered domain name is subject to legitimate dispute. He contends that, in a slew of cases, UDRP panel have dismissed complaints for lying outside the scope of the policy, Muscovitch adds. Greater awareness among complainants’ counsel, he argues, could reduce the misuse of the policy, and ensure that disputes are heard by suitable fora. Of course, one person’s over-reach is another person’s legitimate enforcement effort, and there will be losing complainants who are adamant that their UDRP filing was fair and justified as per the UDRP’s remit. Muscovitch’s commentary, however, does bring to mind remarks made by Adobe System’s J Scott Evans at the 2017 INTA Leadership Meeting. At that event, he urged brand owners to wield the UDRP in a responsible manner at a time when the ICANN community is set to review the mechanism. His argument was that “now is not the time to be clever lawyers and use the UDRP in creative ways to prove how smart you are”. Instead, he stressed the need to use the UDRP only for the purposes it was created. As he predicted, those outside the trademark community are indeed keeping a watchful eye on UDRP proceedings and jumping on any instance of perceived misuse.   (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)

Unlock unlimited access to all WTR content