Lucasfilm trademark scuffle, Breaking Bad beer battle and Tanzania launches counterfeit campaign: 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 how half of cybercrime revenues come from illicit online marketplaces, the Brexit-related tmark ruffling feathers, how cryptocoin names are often inspired by movies and books, and why Lucasfilm being sued for trademark infringement. Coverage this time from Trevor Little (TL), Tim Lince (TJL), Adam Houldsworth (AH) and Timothy Au (TA).
Legal Radar:
Lucasfilm in scuffle over card game name – It has been reported that Lucasfilm is being sued by the owner of the mark SABACC for trademark infringement. Ren Ventures registered the trademark in 2015, when it began selling a mobile card game called Sabacc. The term already featured in the Star Wars universe as the name of a card game. As such, Disney filed an opposition in May last year and subsequently filed a federal trademark suit against Ren Ventures in December, which remains pending. Disney has argued that “the mobile game is intended to, and does, copy and appropriate plaintiffs’ Sabacc game in order to capitalise on the goodwill of the Sabacc mark and the Star Wars franchise”. Now Ren Ventures has countered with its own suit, claiming that Disney’s Lucasfilm is infringing on its registered mark by using the game in its promotion for the upcoming film Solo: A Star Wars Story. The mobile game company is requesting the removal of all mention of Sabacc from Lucasfilm’s marketing materials. In particular, it claims that the Disney’s promotional partnership with restaurant chain Denny’s is “likely to cause consumer confusion”. Ren Ventures is suing both Lucasfilm and Denny’s, as well as Collider, which was the first to publish Denny’s advertisement. (TA)
Sony sues brewery for infringement – According to attorney Brendan Palfreyman, Sony Pictures – the production company behind the award-winning TV drama Breaking Bad – has filed suit against Knee Deep Brewing over its Breaking Bud IPA. In the complaint, as Palfreyman explains, Sony claims that Knee Deep made an “obvious effort to trade on the fame and recognition” of the Breaking Bad marks, including that the product’s label includes a character in a hazmat suit and an RV (two elements commonly associated with the TV show). While on the surface this could be a typical trademark suit, the attorney claims it is one to watch because “likely thousands of breweries have beer names inspired by TV shows or movies”, as well as many examples of officially licensed movies and TV beer products. (TJL)
Social media reaction to dispute is “tempest in a teapot”, says trademark owner – The owner of a brewery in Toronto has reacted to a social media controversy which has arisen around a cease-and-desist letter his company sent to an alleged trademark infringer, it has been reported. Amsterdam Brewery Co, which owns YYZ for use on alcoholic beverages, sent the warning letter to its neighbour Bandit Brewery which has been using the initials (also the city’s airport code) on its travel-themed beer products.Taking to social media, Bandit criticised “The Big Guys” for claiming to own the city’s airport code. But Jeff Carefoot, owner of Amsterdam Brewery, has hit back, saying: “I’m kind of upset that they tried to vilify us unreasonably. There’s a number of people upset with us.” He said that “in most respects, it’s a tempest in a teapot”; there was no point in having a trademark if you were not going to enforce it, and it was an “unfortunate situation of not doing your homework” on Bandit Brewery’s part, he further claimed. (AH)
Market Radar:
Tanzania launches “massive” counterfeit awareness campaign – African nation Tanzania has stepped up its anti-counterfeiting efforts, reports Xinhuanet. In a statement issued late last week by the Tanzania Bureau of Standards (TBS) and the Fair Competition Commission (FCC), the campaign was focused on educating the public on how the government checks for counterfeit goods. Frank Mdimi, the FCC’s senior communications officer, said such a campaign was urgently needed: “There has been an outcry from the public regarding the influx of substandard and counterfeit products in Tanzania which needs to be fully addressed by the responsible institutions. [Therefore] we intend to reach the general public through community radio and television broadcasts and meetings with business communities.” (TJL)
Half of cybercrime revenues comes from illicit online markets, suggest new study – A newly released report suggests that at least $1.5 trillion of sales are made each year in illegal online markets and from the theft of intellectual property. Undertaken by senior lecturer in criminology at the University of Surrey, Dr Michael McGuire, the study found that $500 billion is generated worldwide by the theft of intellectual property and trade secrets, and $860 billion is raised by sale of counterfeits, counterfeit-producing equipment and drugs. The author commented that “illicit and illegal online markets are now the most lucrative cybercriminal form of revenue generation, constituting over 50% of total revenues, while theft of trade secrets and IP constitutes around 35% of cybercrime revenues”. The study also noted that individual earnings from cybercrime are on average higher (by 10-15%) than for other crimes. (AH)
Two IP protection centres to be built in Beijing – Two intellectual property protection centres are to be built in Beijing this year, according to the information office of the Beijing municipal government, as reported by Xinhua. Pan Xinsheng, the deputy director of the Beijing IP office said that the two centres will mainly serve sectors of new information technology, high-end manufacturing, new materials, and bio-medicine. (TA)
Media Watch:
BREXIT trademark causes ire – The British press reported over the weekend about an EU trademark for the term BREXIT. The Express wrote about the “extraordinary step” by two Polish businessmen who are seeking to register the term for their Brexit Drinks Ltd business. The entrepreneurs claim the name of the company is a “bit of fun”, with the proposed sports drink made because “we all need energy to deal with Brexit”. The existence of this particular mark is not unique, however. We reported, and spoke with the applicant, of one of the first Brexit-related trademarks all the way back in June 2016, who claimed at the time they were acting “in a bid to prevent someone else from acquiring the mark and using it to stifle debate”. Since then, according to TMView, there’s been over 60 marks filed around the world which include the term ‘Brexit’ – including this registered mark in the UK of a crudely-drawn bulldog with the caption “blame it on Brexit”. (TJL)
What’s in a cryptoname? – Coindesk has taken a detailed look at the history of cryptocoin names, and the curious detail that many use references to popular movies, TV shows and books. For example, one of the top 20 cryptocurrencies by market capitilization, Tron, appears to take its name from the classic 1980s film. Other examples include Ravencoin (from Game of Thrones), Neo (from The Matrix) and Mithril (from Lord Of The Rings). However, the sheer number of cryptocurrencies launching, with examples of some needing to change their name due to overlapping names, has the potential to “explode into a mess of trademark wars and litigation”, according to Coindesk. With entrepreneurs wanting to name their digital currencies something catchy, often without checking if others are using it, then legal issues can soon arise. One expert, domain name and crypto veteran Joshua Metnick, concluded: "There are only a finite supply of cool words like 'mithril.' It's a decent supply, but it's not infinite." (TJL)
How to deal with differing assessments of “confusing similarity” in China – A recent article on the China Law Blog discusses the disparity between standards of “confusing similarity” at the Chinese Trademark Office (CTMO) and the Chinese courts, and its implications for brand owners. It argues that CTMO examiners tend to be much stricter in their assessment of confusing similarity, because of their comparative inexperience, lack of English language fluency and the greater time pressures they face; “When in doubt, reject”, has become their mantra, the blog suggests. And, while the Trademark Review and Adjudication Board have a more objective and measured approach to this question, it is said still to be error-prone due to overwork. On the other hand, it is argued, many brands that would not be granted trademarks on the grounds of confusing similarity, would not be deemed to have infringed on these same grounds by Chinese courts, meaning that some brand owners end up in the same position as those using descriptive marks, “nobody can stop them from using it, but they can’t stop anyone else using it either”. While this might be tolerable for companies who only want to manufacture and export from China, the blog concludes, it creates a need to rebrand for those seeking to sell to Chinese consumers. (AH)
On the move:
Michael Best adds attorney and managing partner – Michael Best has announced that Anthony Biller and Emily Haas have joined the firm’s intellectual property practice group in Raleigh. Biller, an IP litigator who represents clients on various IP matters including copyrights and trademarks, issues related to licensing, and portfolio management of content and brands, joins as partner in addition to being named managing partner of the office. Haas, who focuses her practice on patent, trademark, copyright and trade secret litigation matters, has joined as a senior counsel. (TL)
And finally…
WTR Industry Awards shortlist revealed – The WTR Industry Awards, now in their twelfth year, shine a spotlight on the vital work performed by in-house counsel across the globe and identify the teams and individuals that deserve special recognition for their exceptional achievements over the past year. This year’s winners will be revealed in May at a private ceremony at the Seattle Art Museum. In advance of the event, World Trademark Review is pleased to present the full shortlist, available here. (TL)