Levi’s labelled trademark bully, Swiss shop holds IHOB mark and call for independent Rwandan IP office: 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 Levi’s being accused of being “one of the world’s biggest trademark bullies”, the South African health minister calling for plain packaging on tobacco products, calls for an independent, standalone IP office in Rwanda, and the intellectual property of Nine West Holdings has been sold. Coverage this time from Trevor Little (TL), Tim Lince (TJL) and Timothy Au (TA).

Legal radar:

3M opposes new F1 logo – At the end of 2017, Formula 1 revealed that it was planning to rebrand itself and replace its iconic logo with a new one. Its plans hit an immediate roadblock, though, after it was discovered the new brand bore a strong resemblance to a trademark filed in early 2017 by US multinational 3M, the maker of Post-it Notes and Scotch tape, for a range of therapeutic clothing. Now, the American conglomerate has filed for an opposition to F1’s new logo, it has been reported. F1 made its application in 26 trademark classes, which includes one covering clothing but not therapeutic clothing. (TA)

The start of the trademark ‘Bourbon War’ – It has been reported over on Courthouse News Service that a dispute which erupted over the use of the trademark ‘Old Taylor Distillery’ has been labelled by one judge as the start of the “Bourbon War”. Sazerac Brands, which owns the trademark in question, filed suit against Peristyle after the latter purchased an abandoned Old Taylor Distillery back in 2014 to manufacture bourbon. Although the landmark was renamed Castle and Key in 2016, Sazerac alleges that Peristyle continued to use the original signage bearing the name Old Taylor up until that point. Peristyle secured a motion for summary judgment on Sazerac’s infringement claims last year, but lawyers representing Sazerac have now asked a Sixth Circuit panel to reverse the ruling, referencing a survey that showed 44% of consumers were confused by the name at the landmark. On the other side, Peristyle’s attorneys have argued that Castle and Key has only ever referred to the Old Taylor Distillery name “descriptively and geographically”. A time has yet to be set for the court’s decision but US circuit Judge Sutton has already warned that this suit is “a preliminary skirmish on the eve of Gettysburg”. (TA)

EFF slams rights of publicity proposal – The Electronic Frontier Foundation has sent a memorandum in opposition to Assembly Bill 8155-B and Senate Bill 5857-B, which it states would alter decades of New York law by establishing a right of publicity for deceased individuals. The memo identifies four flaws in the proposals. Firstly, it contends, it reframes a well-established privacy right into a freely transferable property right, “something it was never meant to be”. Second, it places pressure on heirs to commercialise the image of deceased relatives, while also creating an unprecedented worldwide right (“The bill would turn the State of New York into a litigation destination for celebrities from all over the world”). Finally, the EFF argues that the bills contains unconstitutionally vague provisions which “will likely chill creative works protected by the First Amendment”. The EFF concludes: “We hope legislators take the time to consider all of these objections and oppose the latest attempt to expand the right of publicity.” (TL)

Trump indicates support for marijuana bill – Craft beer news outlet Brewbound reports that US President Donald Trump has told reporters he would likely support congressional efforts to end the federal ban on marijuana. Last week Senators Cory Gardner and Elizabeth Warren introduced the Strengthening the Tenth Amendment Through Entrusting States Act as part of a bipartisan effort to amend the Controlled Substances Act and allow states to regulate marijuana without interference from the federal government. Before heading to the G7 summit, Trump is reported as stating: “I support Sen. Gardner. I know exactly what he’s doing. We’re looking at it. But I probably will end up supporting that, yes.” The bill does not mention trademarks but earlier this year we reported on the uncertainty surrounding the federal marijuana enforcement policy, and its impact on brands in the sector. Moves to clarify the state of play should go some way to end that uncertainty. (TL)

Levi’s accused of being “one of the world’s biggest trademark bullies” – A British luxury brand has filed suit against denim manufacturing giant Levi Strauss after it received what it dubbed a “baseless and hopelessly flawed” cease-and-desist letter. The case was filed by Barbour in a New York federal court after Levi sent the letter, which claimed that all items of clothing featuring Barbour’s flag – a small tab featuring the brand’s name – were infringing products and that Barbour should cease the sale of these items within 10 days. The British brand responded by arguing it has been using its flag tabs for almost 20 years and that “no reasonable and prudent consumer would ever mistakenly believe that these Barbour-branded products are somehow connected with, affiliated with, or sponsored by Levi’s”. It went as far as to label the American clothing giant’s letter “a classic example of severe overreaching by a company that has the dubious distinction of being one of the world’s biggest trademark bullies”. The case will play out through legal avenues but in the meantime coverage of the dispute highlights the media attractiveness of the ‘trademark bully’ label – whether or not that is the case in reality (TA)

Market radar:

South African health minister pushes for tobacco plain packagingSources report that a new tobacco control bill has been proposed by South Africa’s Minister of Health, Aaron Motsoaledi. If passed into law, the bill would seek to drastically change the way in which tobacco products are marketed and regulated in the country. As part of the proposals, packaging would be standardised with a minimum of 30% of the packaging to feature graphic health warnings. The bill is also looking to cut down smoking rates through the regulation of e-cigarettes, removal of cigarette vending machines, implementation of smoke-free policies and stricter regulation of tobacco marketing. (TA)

Authentic Brands gets new shoes – Authentic Brands Group prevailed in an auction for the intellectual property of bankrupt US shoe and accessories company Nine West Holdings Inc on Sunday, with Reuters reporting that a revised bid of about $350 million (up from an initial bid of $200 million) saw it fend off competition for the portfolio. Authentic adds the shoe portfolio to a strong line-up of fashion, sports and celebrity brands, and clearly sees growth potential in a company that has faltered. (TL)

Calls for independent IP office in Rwanda – Rwanda’s Ministry of Trade and Industry has been called upon to create an independent, standalone IP office. Reporting on a workshop organised by the ministry to generate ideas to lead the country’s next national IP policy, The New Times notes that there was criticism of the current set-up, which sees the Rwanda Development Board in charge of intellectual property registration but other ministries in charge of regulating innovation in different sectors. The notion of a single entity overseeing IP matters received a warm response, the outlet reporting that the country’s Minister for Trade and Industry stated:“We need to have one-stop-centre office. This is a very specialised institution and mixing it with institutions with other agendas is not a good idea for Rwanda.” Change, then, appears to be coming in the country. (TL)

Media watch:

IHOP beware: Swiss IT shop holds IHOB trademark – Social media has been ‘IHOb’ crazy in recent days, after fast food brand IHOP announced it was temporarily rebranding to mark its new burger range. As we wrote earlier today, industry experts have warned that this type of marketing move is not suitable for all companies, with various critical trademark dimensions to be considered. One question was over whether IHOP should register the term IHOB if it is only planning to use the brand temporarily. Interestingly, outside of the US. It appears that at least one trademark for the term IHOB exists. The Swiss mark was filed in 2002 in class 11 (lighting, heating, cooking, etc) and was renewed for an additional 10 years in 2012. It is owned by iCenter Sagl, an IT service center based in the city of Lugano, Switzerland. Currently, the IHOP fast food chain is known as a US brand but it actually has 1,650 restaurants across North America, Latin America, the Middle East, Southeast Asia and Oceania, with reported plans to launch in Europe. So while there’s no suggestion this Swiss mark is a cause for concern for IHOP, the fast food brand is expanding rapidly and such marks could pose a problem in the future (if it was to keep using the IHOb brand). (TJL)

On the move:

Fish & Richardson adds IP litigator in Silicon Valley – Fish & Richardson has welcomed Esha Bandyopadhyay, formerly of Winston & Strawn, to its Silicon Valley office as a principal in its litigation group. Specialising in IP and commercial litigation matters, she has experience across a range of technology-related matters and in copyright, trademark, Internet and false advertising disputes. (TA)

Litigator joins Greenberg Traurig – Intellectual property litigator Scott W Doyle has joined Greenberg Traurig as a shareholder and chair of the firm's International Trade Commission (ITC) practice. Doyle focuses primarily on intellectual property infringement actions in the federal courts and Section 337 actions at the ITC - where he once worked in the General Counsel's office. He joins the firm’s the Washington, DC office, as part of the Global Intellectual Property & Technology Practice Group. (TL)

Dickinson Wright brings on board two IP litigators – Detroit-headquartered law firm Dickinson Wright has announced the addition of two IP-focused litigators: Jonathan Baker to its Silicon Valley office and Steven Daniels to the firm’s Austin branch. Baker has nearly 20 years of IP litigation experience, including in patent, trademark, copyright and trade secret cases, and Daniels possesses over two decades of experience in patent, trade secret and commercial litigation. (TA)

And finally…

Free-to-view anti-counterfeiting guide now available – The 2018 edition of Anti-counterfeiting – A Global Guide, which provides trademark and brand protection professionals with critical guidance on anti-counterfeiting laws, procedures and strategies in key jurisdictions around the world, is now available to view online. This indispensable publication analyses the anti-counterfeiting frameworks in place in 21 jurisdictions, with two regional chapters identifying wider trends and best practices in the European Union and the Western Balkans. In addition, an industry insight section offers guidance on the creation of global anti-counterfeiting programmes, analysis of the liability of physical intermediaries and an exploration of best practice in working with online platform operators. There is also tailored strategic advice for those operating in the fashion and luxury sector. You can access the guide here. (TL)

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