Jamaica approves protection of GIs, Montenegro joins TMView and United Kingdom ratifies Hague Agreement: 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 edition, we look at the latest predictions for the next round of gTLDs, a tale of two O’Keefe law firms, the IP Office of the Philippines reporting on counterfeit seizures in 2017 and the United Kingdom’s IP Crime Unit urging the public to “treat mum right” by avoiding fakes. Coverage this time from Trevor Little (TL), Tim Lince (TJL), Adam Houldsworth (AH) and Timothy Au (TA).

Legal Radar:

UK ratifies Hague Agreement – The United Kingdom government today ratified the Hague Agreement, marking the final step in its process of joining the international system for the registration of industrial design. The system allows applicants to register their designs in more than 60 jurisdictions with a single application, allowing innovators to save money on their registrations. While the EU has been a contracting party since 2008, the UK has not itself a member. The UKIPO’s chief executive Tim Moss stated: “The UK’s decision to join the Hague system in our nation capacity will give business a greater choice in how to protect, manage and register their designs internationally, and save them money. Our membership of this international system may also encourage non-UK owners of designs to register their rights in the UK for basing manufacturing, distribution or licensing of their intellectual property.” (AH)

Philippines reports significant increase in seized fakes – The Intellectual Property Office of the Philippines (IPOPHL) has announced that upwards of P8.4 billion ($157.6 million) worth of counterfeit and pirated goods were seized in 2017 – the largest haul since 2014. Writing in the Manila Bulletin, the office’s director general, Josephine R. Santiago, confirmed that the value of counterfeit goods confiscated by various local agencies increased by 26% on 2016. The most seized items in 2017 were electronics, optical media and pharmaceutical/personal care products – a fact that Santiago voiced particular concern about: “As this reflects the growing market demand for electronic goods and products involving public health and safety, we warn the public to be wary of counterfeiters exploiting this high demand. This alarming development underscores the need for the various relevant agencies of government and the intellectual property rights owners to address this serious concern. The IPOPHL, for its part, continues to intensify its campaign against the selling and buying of these counterfeit products.” (TJL)

Snap trademark battle gets quietly resolved – Snapchat’s rebranding back in 2016 to Snap Inc ruffled the feathers of Snap Interactive, a developer of decentralised technologies, which filed a trademark infringement lawsuit to prevent the technology company’s name change. However, it would appear the dispute has been fully resolved: the suit was dismissed at the end of 2016 and now, over a year on, Snap Interactive has announced that it will now go by the name PeerStream, while stating that it had been contemplating a rebrand since 2016. The confusion between Snap Inc and Snap Interactive proved to be a boon for the latter company in at least one instance though: a case of mistaken identity caused its shares to rocket when Snap Inc announced it was going public. (TA)

Montenegro joins TMView – The EU Intellectual Property Office (EUIPO) has confirmed that the Intellectual Property Office of Montenegro (IPOM) has made its trademark data available as part of its TMView search platform. This sees participating offices to TMView rising to 63, with 48.4 million trademarks in total being indexed and updated daily. As part of its press release, the EUIPO also revealed that TMView has served more than 39.8 million searches from 157 different countries since it launched in April 2010,. The success of such initiatives is why the EUIPO is pushing the boundaries on digital offerings at IP offices – and the addition of Montenegro is another reminder of that. (TJL)

Jamaica approves protection of GIs – The Jamaica Senate has approved a bill for the protection of geographical indications, a move which will be seen as a boon for local agricultural businesses. Announced last week, it will provide manufacturers of goods in Jamaica – especially in the food and beverages sector – a stronger level of protection on geographical indications (GIs). According to Loop Jamaica, the leader of the Jamaican government’s minister of foreign affairs and foreign trade, Kamina Johnson Smith, said “it was necessary to amend the law to protect the country's image from abuse of foreign competitors who would seek to misappropriate the country's reputation”, adding: “The amendments to the Act seek to accord the highest level of protection for the geographical indications afforded by the Trade-Related Aspects of Intellectual Property Rights (TRIPS).”  The Jamaica Intellectual Property Office (JIPO) will manage the new system, which covers all goods, including wines and spirits. It will also seek to establish a Geographical Indications Advisory Committee, tasked with reviewing applications for the registration of a geographical indication. For relevant brands, this is one to look out for. (TJL)

A tale of two O’Keefe law firms – Last July, Chicago law firm O’Keefe Lyons & Hynes filed a trademark infringement claim against O’Keefe Law Firm, also based in Illinois, claiming that the latter’s name was causing confusion among clients. O’Keefe Lyons was founded in 1937, while O’Keefe Law Firm was formed in 2012; both firms handle tax appeals. It has now been reported that the two firms have managed to settle their differences, although the terms of the agreement have not been specified. The O’Keefe Law Firm continues to operate under the same name on its website, but now includes a disclaimer that it is not affiliated with O’Keefe Lyons. The dispute is, on the surface at least, similar to a recent tussle between two firms operating under the ‘Fish’ umbrella, and a reminder that trademark disputes can be just as common in the law firm space. (TA)

CoorsTek secures another win in pink hip component fight – It has been announced that the Paris High Court has ruled in favour of CoorsTek Medical, a US-based manufacturer of ceramic components, in a lawsuit brought by CeramTec, which was aiming to block the manufacture and sale of a pink ceramic hip component produced by CoorsTek. The court found that CeramTec had filed for its “pink” trademarks in bad faith; it was ruled that its EU trademark registrations to the colour pink in relation to ceramic implants are invalid and unenforceable throughout the European Union. The victory for CoorsTek follows a similar win back in January 2017, when a US district court ruled that CeramTec did not own any trademark or trade dress rights to the colour pink in the US. (TA)

Market Radar:

UK IP police urges public to “treat mum right” by avoiding fakes – The UK’s Police Intellectual Property Crime Unit launched a social media campaign last week leading up to Mother’s Day. Images posted to Twitter used the tagline “Don’t be tight, treat mum right”, with messages around avoiding buying counterfeit goods when looking for a present. “If you've forgotten to buy a gift, make sure you don't make the mistake of buying a last minute, shoddy fake!” said one tweet, with another warning that “genuine products make much better gifts, they won't leave your mum at risk of burns or rashes ”. This is the type of initiative that the UK, especially the UKIPO, conducts regularly – an example of how it sees social media as a key asset for spreading awareness of IP. (TJL)

Lego tops list of strongest brands in the UK – The annual Superbrands ranking, wherein UK consumers vote for brands based on quality, reliability and distinction, has been topped this year by Lego. The toy brand beat out last year’s winner British Airways, which fell outside of the top 20, reflecting a year in which a major IT failure forced the airline to cancel hundreds of flights. Superbrands chairman Stephen Cheliotis reflected on the sharp change in public sentiment, saying: “British Airways tumbling from top spot to outside of the top 20 should be a wake-up call for all brands. In a world where customer expectations have rightfully risen, brands cannot afford to disappoint and need to continually deliver to retain their valuable reputations.” The top five of the Superbrands rankings consisted of Lego, Gillette, Apple, Andrex and Coca-Cola, while the Superbrands Most Relevant listed was headed by PayPal, Cancer Research UK, Amazon, Aldi, and Macmillan Cancer Support. (TJL)

Emirates IP association celebrates 2017 achievements, outlines new initiatives – At its recent annual meeting, the Emirates Intellectual Property Association highlighted its key achievement in 2017, including the introduction of the Intellectual Property Expert Diploma, the first IP qualification and training course of its type in the Gulf. At the gathering, the association also underscored its continued commitment to promoting IP education in the United Arab Emirates: its Chairman, HE Maj General Dr. Abdul Quddoos AR Al Obaidli, drew attention to the upcoming “EIPA Award”, due to be initiated in partnership with the World Intellectual Property Organisation (WIPO). He stressed: “We have ambitious plans to educate government employees as well as staff of public and private institutions on intellectual property rights and copyright protection – falling in line with our mission to raise the level of awareness and knowledge of the society concerning intellectual property laws.” Educating the younger generation about intellectual property was part of the country’s strategy to build an economy less dependent on oil, and this appears to be a part of that. (AH)

USPTO unveils new patent cover design – The USPTO unveiled the new design of the patent grant cover during a special ceremony at the South by Southwest Interactive Festival in Texas. As we reported last week, the redesigned cover will debut on patent number 10 million, which is expected to issue sometime in 2018.  Speaking at the unveiling, Andrei Iancu, under-secretary of commerce for intellectual property and director of the USPTO, commented: “American ingenuity has been at the forefront of every major technological revolution of the past two centuries, from steam engines to flight, and from the biotechnology revolution to the information revolution. This new patent design not only celebrates how far we’ve come and the new frontiers we have yet to explore, it also represents the cornerstone and the currency of an American intellectual property system that has given so much to the world and will continue to do so for ages to come.” (TL)

Domain name radar:

Second round of new gTLDs applications unlikely before 2022? – On Domain Incite, Kevin Murphy has reported on a session at this week’s ICANN meeting in San Juan, in which Jeff Neuman, co-chair of the New gTLD Subsequent Procedures Working Group, presented a “best case” timetable for the next round of applications. While the timeline discussed projected a launch of the next window in the first quarter of 2021, Murphy notes that this is predicated on adherence to a tight timeline and concludes: “All things considered, I wouldn’t place any bets on an application window opening as early as 2021.” (TL)

Little progress on GDPR WHOIS compliance – Staying in San Juan, Winston & Strawn’s Paul McGrady is posting updates from the ICANN meeting. Heading into the meeting, the continued discussion of how the EU’s General Data Protection Regulation (GDPR) will impact access to WHOIS information. While that has certainly been the case in terms of focus, McGrady – in a post titled ‘Slow to No Progress on GDPR Issues at ICANN 61 – reports: “As feared, it is now evident that ICANN does not have a clear path forward to grant access to WHOIS data once their interim model is put in place. There remain no details of how parties wishing access will be accredited, when that will happen, and who will do the accrediting… ICANN’s lack of detail and apparent plan is leading to fears that some raised of a coming WHOIS blackout – and all of the resultant online crime that will follow – if criminals know that law enforcement and private parties enforcing rights won’t be able to determine their identity.” As the May 25 2018 enforcement date for GDPR looms, there is clearly much word to be done if a situation in which WHOIS goes dark is to be avoided. (TL)

On the move:

Lawrie IP names new director – Lawrie IP, a Glasgow firm specialising in patents and trademarks, has announced that Sharon Mackison will serve as its new director. Donald Lawrie, founder of the firm, states: “Over the last four years, Sharon has played a key role in building our trademark client base, such that we are now a recognised firm for trademark services in Scotland. She has also been instrumental in the firm achieving and maintain its ISO accreditations, as well as having significant input to our business development activities.” (TA)

And finally…

New edition of Pharmaceutical Trademarks available to view online – The seventh edition of Pharmaceutical Trademarks: A Global Guide, which provides trademark professionals with comprehensive guidance on the key issues involved in the protection, enforcement and marketing of pharmaceutical brands, is now available, and free to view, online. The latest edition provides in-depth guidance on the legal regime in 12 key jurisdictions, as well as insight into how to manage a pharmaceutical trademark portfolio with the assistance of outside counsel. To access the latest pharmaceutical intelligence, click here. (TL)

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