KIPO calls out Chinese plagiarism, USPTO rule making, reality show trademark protection and pugs in Prada: news round-up

In our final news round-up of the week, we look at the IP fallout from Kid Rock’s latest tour announcement, how the Korean Intellectual Property Office is speaking out on behalf of infringed domestic brands, the status of trademarks in space and the USPTO’s planned abolition of  interference proceedings. Coverage this time from Trevor Little (TL), Tim Lince (TJL), Adam Houldsworth (AH) and Timothy Au (TA).

Legal Radar:

USPTO proposes removal of trademark interference proceedings – The US Patent and Trademark Office (USPTO) has given notice that it intends to abolish trademark interference proceedings as part of a drive to strip back ineffective regulations. Trademark interferences are TTAB proceedings for determining “which, if any, of the owners of conflicting entitled to registration”. They are granted only in extraordinary circumstances, when it is deemed that a party would alternatively be required to face a large number of opposition and cancellation proceedings on similar questions. An average of only one petition for such proceedings has been made each year since 1983, all except three of which have been rejected. As such, the USPTO has declared them unnecessary in a federal notice of proposed rulemaking. This proposed change, says the notice, is consistent with President Trump’s Executive Orders 13771 and 13777, which seek the reduction of regulation and the controlling of regulatory costs. (AH)

From predicted Senate run to trademark battle? – It was confirmed this week that, after much speculation, musician Kid Rock would not be making a run for the US Senate on the Republican ticket. This ended a multi-month saga of rumours about another celebrity with no political experience potentially heading to Washington DC. But while that episode may be over, Rock may be about to begin another battle – but rather than an election, it is a potential legal fight. As reported by Amplify, Rock announced a new tour called “The Greatest Show on Earth” – a name which is identical to the tagline of historic circus troupe Ringling Bros and Barnum & Bailey. The article suggests that Feld Entertainment, the owner of the Ringling Bros intellectual property, is consulting their IP attorneys about how to proceed, with one attorney suggesting a confidential license agreement could be the “smart” way to go. For now, though, we want to see if a trademark battle will ensue. (TJL)

KIPO speaks up about Chinese infringement – The Korean Intellectual Property Office (KIPO) sent documents this week to a Korean lawmaker, Kang Chang-il, about local products and brands being copied or plagiarised in China and other ASEAN countries. In a report from domestic outlet The Hankyoreh, the office claimed that there have been 1,638 cases of such activity between 2014 and August 2017, with the number rising dramatically in recent months. A key problem, the article states, is Chinese TV companies creating copycat versions of South Korean cultural products: “Chinese broadcasters have reportedly been churning out entertainment programs that duplicate exactly the format of 29 programs by South Korean broadcasters, including Infinite Challenge, Produce 101, Please Take Care of My Refrigerator, Fantastic Duo, and Immortal Song,” the document claims, with the Korean lawmaker urging the embassy in China to do something about the issue. It is a rare instance of an IP office proactively seeking to tackle overseas infringement of domestic brands. (TJL)

Poundland to redesign imitation Toblerone bars after settling dispute – UK discount store Poundland has agreed to redesign a range of its chocolate bars which Swiss chocolatier Mondelēz argued infringed its Toblerone brand. However, under the terms of an agreement – which brings to an end to a three-month dispute – Poundland will be allowed sell a maximum of 500,000 Twin Peaks bars over the Christmas period, albeit with alternative packaging. Complicating the spat somewhat had been the fact that Poundland is itself a major customer of Mondelēz’s, selling a large number of Toblerones in shops across the country. Perhaps it was this retailer/brand relationship which helped to reach a compromise agreement, although as we have previously reported sometimes that relationship can be a complication. (AH)

Court awards interdiction to stop infringement of TCP – A South African court has ruled that a local pharmaceuticals company must stop using the name 3CP, which infringes the rights of Belgium-based Omega Pharma, the owner of the TCP brand. Imposing an interdiction against Tritof Enterprises, the court ordered that the Sandton-based firm’s 3CP mark be cancelled; it also compelled Tritof to transfer the domain name ‘’ to Omega. Judge Tati Makgoka said the South African company had sought to benefit from TCP’s reputation, and that consumer would be confused by the similar branding. (AH)

Say you, say IP – American singer-songwriter Lionel Richie, who is now a judge on American Idol, is the latest celebrity to make a trademark application for a reality show catchphrase. According to Music News, he filed two applications at the USPTO this week for the terms ‘HERE COMES DA JUDGE’ and ‘HERE COMES DA JUDGE - LIONEL RICHIE’ for various merchandise products – phrases that he will presumably use when he appears on American Idol (filming for the series began this month and will air next year). The move follows various efforts by reality TV personalities to protect catchphrases in recent years. For example, Paris Hilton attained three trademark registrations for the phrase THAT’S HOT from her show The Simple Life (those marks are now abandoned). Perhaps most famously, US president Donald Trump has multiple registrations for the catchphrase YOU’RE FIRED from the reality show The Apprentice. Interestingly, on the flip-side, some of the most famous reality show catchphrases do not have related trademark registrations. Survivor host Jeff Probst has not attempted to attain registered rights in the iconic phrase “the tribe has spoken” (despite hundreds of merchandise products using the term), while RuPaul Charles (who has registered rights in the name RUPAUL) has not filed applications for the numerous catchphrases that appear in RuPaul’s Drag Race, such as “sashay, away” and “Shante, you stay”. Perhaps, then, there is room for growth in celebrity trademark filings. (TJL)

Market radar:

Fight the Fakes campaign welcomes new partner – Fight the Fakes, a campaign aiming to raise awareness about the dangers of counterfeit medicines, welcomed the National Association of Boards of Pharmacy (NABP) as its 35th partner this week. The announcement coincided with the meeting of the campaign’s global partners in Brussels, as the coalition approaches its four-year anniversary and continues to gain traction in its efforts to tackle the market of falsified medicines. (TA)

Cops’ warning over Halloween fakes – The City of London Police has warned consumers about the dangers of purchasing counterfeit Halloween-themed goods. The UK Intellectual Property Crime Unit has advised that fake fancy dress outfits are less likely to have been safety tested, and could pose health risks, including suffocation and poisoning. This message was reinforced by Ros Lynch of the Intellectual Property Office who said that buying knock-off costumes has “potentially shocking implications for public safety”. The unit has also taken the opportunity to reiterate its campaign slogan: “there’s more at stake” when buying fake goods online. As reported in a previous World Trademark Review round-up, it has previously warned about the dangers of identity fraud when purchasing counterfeit goods on the internet and is at the forefront of public messaging over the dangers of counterfeits in the UK. (AH)

Media watch:

To boldly go where no IP attorney has gone before – The Houston Chronicle has run an interview that will be sure to please any space geeks. The Texas newspaper sat down with IP lawyer Constance Rhebergen, a partner at Bracewell. Before taking up intellectual law as a profession, Rhebergen worked on a NASA project to build an oxygen station on the moon, with an ambitious plan to extract oxygen from sand. Unsurprisingly, she still has an interest in all things space, and was asked questions about the current state of IP law beyond Earth. The interview primarily focuses on patents. Rhebergen notes, for instance, that anything invented on the International Space Station could create an IP conflict due to no single organisation being able to issue a patent that would be enforceable on the station. “If it's invented or built in space – and stays in space – there is no way to protect that invention,” she claims. Presumably the same principle applies for any trademarks created in space. Interestingly, in our interview with NASA’s attorney-adviser Jeffrey L Heninger in 2015, he had a slightly different view to IP created on the ISS: “If there’s a de facto position, it will be the law of the sovereign whose module the activity is occurring in; so in the US modules, arguably US law would be applicable; in the Japanese module, Japanese law would be applicable – that’s the general regime.” Rhebergen’s position appears to be that certainty needs to be established, and has one proposal in that regard: “We need to develop a legal framework so businesses can get into the space race. The World Intellectual Property Organisation (WIPO) is a clearinghouse that examines patent applications for adherence to an established set of rules, but it doesn't issue patents. I propose they could issue patents for space.” Whether WIPO would consider such a suggestion remains to be seen – perhaps ‘space’ could be the 101st member of the Madrid Protocol? (TJL)

Pugs in Prada – A charming story by UK regional newspaper the Nottingham Post focused on the city’s Trading Standards team donating counterfeits to a local dog rescue centre. It reports that the Nottingham City Council's Trading Standards seized more than 200 fake products in June 2017, including 41 blankets. The standard procedure, as it is with most such operations, is to destroy the counterfeit goods, but instead the team decided to donate the blankets – from brands including Versace, Louis Vuitton and Chanel – to Castlefield Dog Rescue, and used the move as a PR effort to promote its anti-counterfeiting activities. A representative from the dog rescue centre confirmed they had not received such a donation before, while a spokesperson from the council explained: “It would be a shame to just throw away so many blankets, especially knowing that they could make lots of rescued dogs comfy this winter.” There’s been reports in the past about alternatives to destroying fakes, such as redistributing them to the vulnerable or aiding aid projects in Africa (which included removing the fake labels). Obviously there’s a fine line to take for affected rights holders, who don’t want to be seen as inadvertently supporting the production of fakes. At the same time, there may be an opportunity for more counterfeit goods to be used to support charitable efforts. There also appears to be a public appetite to see dogs wearing high-fashion – indeed, there’s an entire blog dedicated to pugs wearing Prada products… (TJL)

And finally…

Nominations are open for the WTR Industry Awards  World Trademark Review is currently inviting nominations for its extensive annual research project, designed to identify and recognise the leading in-house trademark teams and individuals. Act now to ensure that the industry’s leading lights are recognised at the WTR Industry Awards 2018. The nominations window closes on December 8, nominations must be for corporate trademark professionals – any nominations for private practice/law firm professionals will be disregarded. Click here now to access our short survey form and ensure that your peers and colleagues receive the recognition that they deserve. (TL)

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