Louis Vuitton takedown spree, Poundland relaunches Twin Peaks bar, and a proposal for next round of ‘.brand’ TLDs: news round-up

Every Tuesday and Friday, WTR presents a round-up of news, developments and insights from across the trademark sphere. In our latest edition, we look at a Malaysian minister promoting the country’s impending accession to the Madrid Protocol, a university trademark backlash sparking a review, food conglomerates moving to revamp their portfolios, an advocacy group criticising Canada’s cannabis plain-packaging regime, and more. Coverage this time from Trevor Little (TL), Adam Houldsworth (AH), Bridget Diakun (BD) and Tim Lince (TJL).

Market radar:

Advocacy group criticises Canadian cannabis plain-packaging regime – The Consumer Choice Center (CCC), a global advocacy group focused on consumer choice and market access, has issued a strongly-worded press release on plain packaging in Canada. In it, the group criticises the Canadian government for its strict branding and packaging restrictions on the legal cannabis market. A key contention is that the government has applied its tobacco plain-packaging regime and applied it to cannabis products. At a news conference, David Clement, North American affairs manager for the CCC, claimed the Canadian government “seems committed to treating adult consumers like children”, adding: “What we've seen is that Health Canada and our federal government are regulating products with complete disregard for consumers, and complete disregard for a continuum of risk. Our worry now is what started with tobacco has moved to cannabis, and now will move to other products, such as soft drinks, alcohol and various other food items.” The suggestion of a plain packaging ‘domino effect’ has been warned about since Australia introduced the world’s first such regime. It appears these concerns continue. (TJL)

Call for increased consumer protection against fakes – New research has revealed that, while over a quarter (26%) of UK consumers have been duped into buying a counterfeit product while shopping online in the last 12 months, with less than half (45%) receiving a refund after reporting the incident. The study, conducted by Incopro, polled 1,000 consumers and also revealed that one in five (22%) of consumers surveyed said they have lost between £100 and £500 in the past 12 months from buying products that turned out to be fake. In a press release accompanying the report, Simon Baggs, CEO and co-founder of Incopro, said: “That consumers have reported counterfeit sellers after being ripped off and still not received any kind of refund is a serious issue that needs to be addressed. It’s clear that consumers need more protection from online marketplaces and brands to combat counterfeiting, especially as online spending rises in the future.” Whether that protection will be forthcoming remains to be seen. (TL)

University trademark backlash sparks review – Earlier this summer, Iowa State University tightened its trademark policy, limiting the ability of many student organisations to reference the institution’s name. However, the Des Moines Register reports that the battle has been stepped up, with student government members unanimously passing a resolution that called for a temporary halt of the new policy and increase in the number of students on the Trademark Advisory Committee. We have written previously about the need for universities to police their marks – in this instance, efforts to do so against student groups has led to a high-profile backlash. (TL)

Poundland relaunches Twin Peaks chocolate bar following trademark case – Following a high-profile IP dispute, Poundland has relaunched its Twin Peaks chocolate bar with a new design. Back in 2017, Poundland had to scrap its first Twin Peaks chocolate bar after a multi-month legal dispute with the owner of the Toblerone chocolate bar, Mondelez. Around 500,000 bars which had already been produced were still sold, with Poundland pledging to relaunch the product with a new design. This month, then, a new Twin Peaks chocolate bar launched in stores around the UK with a sloped, rather than pointed, chocolate shape. Furthermore, a white chocolate version also launched (which, in our opinion, has packaging which much more closely resembles the packaging of the white chocolate Toblerone than the milk chocolate version). (TJL)

Legal radar:

Louis Vuitton seeks to take down scores of infringing websites – Luxury fashion brand Louis Vuitton has filed suit in Florida against 23 websites operating through US-registered domain names, it is being reported. The defendants, it alleges, are guilty of counterfeiting, trademark infringement, cybersquatting and unfair competition. The domains in question include ‘handbadfakes.com’, ‘louisvuittonbag.site’ and ‘streetwear-official.com’. As well as seeking the seizure of the offending domain names, Louis Vuitton is asking for a restraining order on the sale and production of imitations of its goods and statutory damages of $2 million. The complaint states: “Like many other famous trademark owners in the luxury goods market, Louis Vuitton suffers ongoing daily and sustained violations of its trademark rights at the hands of counterfeiters and infringers…who wrongfully reproduce and counterfeit Louis Vuitton’s trademarks for the twin purposes of (i) duping and confusing the consuming public and (ii) earning substantial profits.” (AH)

Malaysian minister promotes impending accession to the Madrid Protocol – Malaysia’s deputy minister of trade and consumer affairs, Chong Chieng Jen, has spoken to local media outlets about the country’s upcoming accession to the Madrid Protocol. “The move will offer trademark protection for businesses and help them to expand their products and services locally and internationally through a single application,” he said, further revealing that, so far in 2018, there have been 32,481 applications have been filed to the Malaysian IPO so far this year. While an exact date of accession has not been revealed, the Malaysian government is currently in the process of repealing the current Trade Marks Act 1976 and introducing a new Trade Marks Act to allow the country to join. For international rights holders, such a move will be welcomed. (TJL)

“HQ” at the centre of office space trademark dispute – Regus has taken fellow flexible office space firm WeWork to court over its use of the initials HQ, claiming that this infringes trademark rights it obtained for a specific HQ logo when acquiring HQ Network Systems in 2004. The complaint, filed in the US District Court in Dallas, relates to the ‘HQ by WeWork’ service/product recently launched by WeWork, which the plaintiff alleges will cause consumer confusion. Regus argues that it has “expended extensive time and resources over the last thirty-eight plus years in advertising, promoting and developing the HQ mark. As a result of such advertising and expenditures, the relevant public has come to identify all such goods and services offered under the HQ Mark as coming from Plaintiffs alone.” WeWork in turn is seeking to invalidate the HQ mark, arguing that it is a commonly-used term for a headquarters and ineligible for trademark protection; “We believe it should be available to all companies who offer headquarters or office space services,” said a WeWork spokesperson.This is not the only trademark dispute WeWork is embroiled in: it is currently suing Chinese rival UrWork for alleged infringement. (AH)

Office radar:

BOIP implements EUIPO’s back office for trademarks – The Benelux Office for Intellectual Property (BOIP) has successfully implemented the EUIPO’s software package back office for trademarks. The tool, as described by the EUIPO, is used to process trademark applications and brings technical improvements to the BOIP’s existing back office system. For example, it allows for existing manual activities to be automated. Users will be hopeful it further improves operations at the office. (TJL)

French registry offers IP guidance to Las Vegas-bound startups – The French Intellectual Property Office (INPI) has participated in a coaching event for 26 startup companies who will be presenting at the Consumer Electronics Show (CES) in Las Vegas next year. The CES event is the largest electronics show in the world, and companies attending will speak with potentially thousands of visitors during the four-day event (which begins on January 8 2019). In all, the INPI was tasked with ensuring these startups could accurately and effectively answer questions on IP – both for their own information and for any queries that CES attendees may have. To that end, the INPI helped answer questions including, for example, “what is the point of filing an international trademark rather than an American trademark?” and “which branding strategy should be adopted internationally?”. On top of that, Charlotte Beaumatin, the INPI’s expert in the United States, will continue to work with the startups going forward. (TJL)

Mexican IPO signs collaboration agreement to combat fakes – The Mexican Institute of Industrial Property (IMPI) has signed a collaboration agreement with other local organisations which will “strengthen ties of cooperation public and private sectors”. The other signatories were the National Association of Business Lawyers, Bar Association (ANADE), the Mexican Association for the Protection of Intellectual Property (AMPPI), and the American Chamber / Mexico. The primary aim of the initiative will be to establish a basis under which the IMPI and the three other associations can take efficient action in relation to the destruction of counterfeit goods. During a speech before the signing, the generator director of the IMPI, Alfonso Guati-Rojo Sánchez, commented: “In the IMPI we are constantly looking for models of linkage and interaction that allow us to know the perspective in terms of industrial property and in this way we can design and build successful collaboration bridges such as alliance that today we formalize with the ANADE, the AMPPI, and the AMCHAM.” (TJL)

Sint Maarten IPO celebrates third anniversary – The Bureau For Intellectual Property of Sint Maarten (BIP-SXM) has posted a video celebrating its third anniversary. The registry was first established on October 1 2015 to start receiving applications of national and international trademarks. The office is an an independent governing body and falls under the jurisdiction of the Sint Maarten's Ministry of Tourism, Economic Affairs, Traffic and Telecommunication. According to the video, the IPO has been through much in its three years – including moving offices and overseeing a rise in trademark filings. (TJL)

Media watch:

Food conglomerates move to revamp portfolios – Major companies such as J M Smucker, General Mills and Conagra Brands are reportedly eliminating slow-growth units from their portfolios to focus on the development of health-conscious brands. This is in response to a shift in consumer patterns, as Millennials and Gen Z buyers continuously seek out ‘guilt-free’ food options. General Mills, which uses the beloved Pillsbury brand for frozen biscuits and refrigerated cookie dough, intends to cut 5% of its portfolio to develop low sugar cereals and yogurt. In a similar vein, Hershey has sold off a potato chips product and acquired a brand called Smart Puffs from B&G Foods Inc for a gluten, preservative and trans fat-free snack. As global food producers look to restructure portfolios to keep abreast of market trends, it calls into question what happens to these sidelined brands. As with other marks that have been abandoned, there is potential for resurrection of so-called ‘zombie brands’ after a bit of remodelling if the rights are given up. It is something that certainly needs to be part of the decision making process. (BD)

Domain radar:

Proposal for the next round of ‘.brand’ TLDs to open next year published – In the ICANN community, which next week descends on Barcelona, an ongoing focus has been work to pave the way for a new round of gTLD applications. On CircleID, Donna Austin, policy & industry affairs manager at Neustar, has outlined the proposal set forward by the New gTLD Subsequent Procedures PDP Working Group (PDP WG) and responded to the proposed process for assessing applications in rounds. Specifically, Neustar suggests that a ‘.brand’ application window be opened first, running for just over three months from 1 October 2019. This would be followed by windows for geographic TLDs and – finally – generic and community TLDs. As to why ‘.brands’ first, she maintains: “We believe ‘.brand’ TLDs are the lowest risk category because in the 2012 application process they had the lowest level of contention sets, brand TLDs have historically low rates of abuse and concern for ICANN, and have clearly defined eligibility criteria and requirements that distinguish them from other TLD categories via Specification 13. Not only this, but there is established public demand which assists in creating predictability for the required ICANN resources. This public demand for .brand TLDs also creates great potential for building public awareness of the process which in turn supports the communications for other categories in phases 2 and 3”. While the proposed timings would represent an acceleration on what is currently expected, she concludes that “we have an obligation to be responsive to our policy decisions of the past and work together to ensure that ‘as expeditiously as possible’ doesn't mean 10 years between application windows”.  Expect this to be a hot topic in Barcelona next week. (TL)

And finally…

Nominate the world’s leading corporate trademark counsel WTR is now inviting nominations for the next editions of the WTR 300 and WTR Industry Awards, designed to identify the world’s leading corporate trademark counsel and teams. Nominate now to ensure that the important work undertaken by in-house professionals across the globe receives the recognition it deserves. The nominations window is open until 11 December 2018, during which time we are seeking details of the corporate counsel deemed to be the leading lights of the trademark industry, who are adding significant value to their organisations and are exemplifying the qualities that other counsel should aspire to. You can read more about the process on the nomination page. (TJL)

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