North Korea counterfeit threat, Elder Scrolls dispute, and Peru IPO launches WhatsApp service: news digest

North Korea counterfeit threat, Elder Scrolls dispute, and Peru IPO launches WhatsApp service: news digest

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 PUBLIC trademark spat in New York, the Indian tax authorities focusing on IP-related revenue, Brexit electrical safety concerns, fax changes at the EUIPO, and much more. Coverage this time from Trevor Little (TL), Adam Houldsworth (AH), Bridget Diakun (BD) and Tim Lince (TJL).

Market radar:

Final thoughts from INTA’s Embracing Change conference in Paris – Day two of INTA’s Europe conference proved to be as jam-packed as the first. What stood out were the increasing calls for proactivity on the side of practitioners and IP offices in the face of a changing industry. Mariana Karepova, president of the Austrian Patent Office, said that the IP office needs to be a place to help grow businesses, not just a place to file trademarks. Similarly, Pascal Faure, director general, described the French National Institute for Industrial Property (INPI) a “house of innovation”. Faure mentioned that the organisation actively works to engage with SMEs through a reach out program. The INPI has a list of SMEs to visit and arranges meetings to help companies understand the value of IP and register their innovations. Catherine Chammartin, director general of the Swiss Federal Institute of Intellectual Property (IPI), pointed to technology as the facilitator of advancing quality in patent offices. She argues that the use of technology for filing trademark applications raises quality because it helps to prompt applicants and produce a cleaner and stronger application. On the topic of technology, Karepova pointed out the Austrian Patent Office’s chatbot, which is available on the home page to assist with basic queries. Although this bot is not machine-learning at the moment, she mentions that there is potential to introduce AI into this technology to further enhance its services. Indeed, WTR publishes an annual list of the world’s most innovative IP offices in terms of offering non-core services; the third edition is to be published next week, and includes an exclusive article written by the INPI’s Pascal Faure. (BD)

Indian tax authorities to focus on trademark-related revenue – An article in Indian news outlet The Economic Times has warned that local tax authorities in India are turning their attention to the practice of domestic companies allowing subsidiaries to use their trademarks for free or at a low price. Sachin Dave writes that the authorities are keen to levy Goods and Services Tax (GST) on the notional valuation of licensed brands, and have started to question company CFOs and finance professionals about the practice. The piece sends a timely warning that companies need to have GST rules in mind when licensing out trademarks to affiliates and internal departments. (TL)

Brexit electrical safety concerns – UK non-profit organisation Electrical Safety First (ESF) is cautioning against allowing safety standards to decline following the Brexit, it has been reported. Current EU law on safety standards should be transposed into UK law in the event of a ‘no-deal’ Brexit, it argues, in order to minimise risks surrounding counterfeit or otherwise substandard products, which pose significant physical danger to consumers. “It is essential the UK does not become a priority destination for substandard or counterfeit products as a result of possible deregulation of safety standards,” ESF states. “Future trade negotiations must not be made at the expense of product safety standards which could ultimately put the consumer at greater risk in the home.” Enforcement agencies on the frontline against fake and sub-par electrical goods need to be adequately resourced, it adds. (AH)

Could North Korea become a major counterfeiting hub? – According to a report from Axios, North Korea could turn to “stealing business secrets to crank up their economy”. The article is based on a report from cybersecurity firm CrowdStrike, with its vice president of intelligence, Adam Meyers, saying: “North Korea will want to leapfrog its way into the global economy. Vietnam is frequently mentioned as the model North Korea would follow to build a sustainable economy. But China would be on the table too." That model could see North Korea stealing intellectual property, which may see an increase in counterfeit pharmaceuticals (or other products) and movie piracy being produced in the country. One key issue for North Korea, though, is a “lack of infrastructure for that the kinds of high-tech manufacturing that China succeeded with – and does not have the equipment to mass-produce cheap, modern products”. Nonetheless, this is a risk that rights holders should remember, as it has the potential to become a significantly bigger issue in the future. (TJL)

New tags developed to identify counterfeit products – Researchers from the University of Copenhagen have created a “pirate-safe labeling system” which allows phones to spot fakes. Each item is given a label, referred to as a tag, which is a unique fingerprint that is impossible to copy. This tag is made of transparent ink, making it inexpensive, and all that needs to be done to create a fingerprint is to spray this ink on a bar code or other material. Any product which leaves a factory can be tagged and then uploaded to a database. Consumers can validate their purchases using a phone app which scans the item and checks to see if there is a match on the database. This system was tested by producing 9,720 tags made of QR-codes which were printed on paper then sprayed with the transparent ink. An image database was then created, and the researchers scanned the images with other phones to see if it was a match. There were no false matches in the result. While there were a few technical errors, these are expected to be remedied through software. This program has the potential to be used on a range of products, from luxury goods to pharmaceuticals. (BD)

Legal radar:

PUBLIC trademark spat breaks out in New York – A trademark infringement dispute has arisen over the use of the word PUBLIC by two neighbouring businesses, according to the New York Times. The Public Theater, well-known for putting on free Shakespeare performances in Central Park has filed a lawsuit against hotelier Ian Schrager, owner of the new Public Hotel, which is located less than a mile away on the Lower East Side of Manhattan and opened in 2017. The suit alleges that the hotel’s use of the word PUBLIC to advertise performances infringes the theatre’s rights, as does its use of a similar logo. The hotel features a performance area called Public Arts, where plays, musicals and comedies are performed, and art is displayed. “I remember at least a few donors who have remarked how clever we were to expand just a few blocks south of us,” Public Theater executive director Patrick Willingham told the New York Times, emphasising the confusion caused by the hotel’s branding. Schrager has said in response that his company has its owns trademarks to the word, which not been registered by the theatre at the time of filing. “We fully intend to defend our rights with vigour and right the wrong being perpetrated against us,” he said. (AH)

Sci-fi author opposing REDFALL mark – Media outlets have widely reported this week on a trademark dispute between a sci-fi author and a major gaming company – even suggesting it could lead to a delay of an anticipated video game title. Jay J. Falconer (author of the Redfall book series) recently lodged an opposition against ZeniMax Media (the owners of Bethesda Game Studios) over a US trademark application for the term REDFALL. Articles have suggested that ‘Redfall’ could be the name of the next Elder Scrolls videogame, a massively popular RPG series. According to Falconer on Twitter: “My lawyers made attempts to contact gaming company to work out a simple licensing deal for them to use my Redfall name. They ignored me every time. Shame. Left me no choice. All could have been avoided.” Indeed, according to GamesRadar, the dispute could be more than just a legal headache for ZeniMax Media – it could lead to the next Elder Scrolls being delayed. “The cold, hard evidence [suggests] that with a trademark battle going on there really is no chance that the sequel to Skyrim will be coming out any time soon. With this opposition going on, there’s little chance we’ll hear anything official about the full title either (or get a new trailer - unless Bethesda was to just run the game with ‘Elder Scrolls 6’ as the title in the meantime),” the article finds. On Reddit, one user suggested that ZeniMax has a potentially good case: “Original publication of this [author]'s book is 2016? If there is anything that even mentions ‘Redfall’ in any of the previous lore of any Elder Scrolls products given that it's a 20-year-old property, wouldn't that negate his claim immediately due to pre-existing material?” Of course, that may be a point that attorneys will look into as the opposition process moves forward. (TJL)

Office radar:

EUIPO clarifies fax change – In a blog post, the EU Intellectual Property Office (EUIPO) has reminded users that ‘Decision No EX-19-1’ enters into force on March 1 2019. Specifically, the decision concerns procedures relating to EU trademarks and community designs where fax is an accepted means of communication. From March 1, all incoming fax submissions must be sent to the official general fax number of the EUIPO in order to be acceptable. Therefore, any incoming fax sent to a non-official fax number “will be deemed not to have been received as from this date”. For practitioners that still send faxes, this is a change worth noting. (TJL)

UKIPO outlines post-Brexit trademark numbering – The UK Intellectual Property Office (UKIPO) has outlined further details about EU trademarks that will be transferred to the UK register following Brexit. According to the office: “In order to identify comparable UK rights and distinguish them from existing UK trade marks, the number allocated to the comparable mark will be the last 8 digits of the EUTM prefixed with UK009.” For example, an existing EU trademark with the number ‘000000977’ will have the comparable UK trademark number of ‘UK00900000977’. “By retaining the EUTM number, we aim to keep the administrative process to a minimum,” the UKIPO added. (TJL)

IP Australia legislation changes next week – The intellectual property office of Australia (IP Australia) has confirmed that IP legislation improvements will come into effect from 24 Feburary 2019. There are a number of major changes – including a streamlined application process, a more effective fee payment system, and a reduction of the grace period before a trademark can be challenged for non-use from five years to three years. The full changes can be read on the office’s page dedicated to the  Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018. (TJL)

Peru IPO introduces WhatsApp help service – The Intellectual Property Office of Peru (Indecopi) has introduced an innovative new service for practitioners, including inventors and those from foreign companies. The tool, called ‘WhatsApp Patenta’, allows anyone to ask questions on the popular messaging app WhatsApp. The service is open during weekday office hours, and according to the office: “You can request quickly, quickly and from any part of the country and the world, information about the procedures and requirements to protect an invention, the status of a file in process before the DIN, guidance on the programs for the promotion of the institution's patenting, details of activities, among other aspects.” Of course, this particular tool is patent-focused, with no sign of a similar trademark service right now. But it is an innovative move by the office, allowing users quick and convenient access to help and information on an app that a significant portion of users will already use. (TJL)

On the move:

Murgitroyd Group announces Chapman IP takeover – Scottish IP firm Murgitroyd Group has announced the takeover of south England firm Chapman IP, as it boasts of recent significant success. According to, the firm revealed profits of £1.7 million in the past six-months, with the takeover of Chapman IP seen as an attempt to spur further growth. (TJL)

Friday catch-up:

Every Friday in our news round-up we will provide a quick rundown of the latest news, analysis and intelligence posted on World Trademark Review. Over the past week we:

  • Invited trademark professionals to participate in our annual Global Trademark Benchmarking Survey, which is designed to give counsel – both in-house and in private practice – the opportunity to share their successes, challenges and concerns from the past 12 months;
  • Took an inside look at Harvard University’s recent brand battle in Turkey, with the legal team revealing key takeaways for practitioners;
  • Published an exclusive interview with Anna Panka, senior counsel at Bacardi, who spoke about how, while legal know-how is critical for law firm practitioners, an understanding of the corporate business environment should not be underestimated;
  • Analysed this year’s Brand Finance Global 500 ranking, which saw large companies in key sectors continue their upward brand value trajectory – and how, for many, this is a cause for concern;
  • Sat down with INTA CEO Etienne Sanz de Acedo, who urged trademark practitioners to embrace change;
  • Presented analysis of the growing problem of illegal online pharmacies, and new approaches to combat the dangers they pose.;
  • Took a deep dive into the USPTO's proposal to require foreign-domiciled trademark applicants, registrants and parties to TTAB proceedings to use an attorney who is licensed to practise law in the United States;
  • Conducted research that revealed how multiple major brands are being impersonated on new social network platform MeWe;
  • Reported on The China National Intellectual Property Administration’s newly revealed plans to curb malicious trademark applications, with both individuals and trademark agencies that file such applications in its sights;
  • Assessed an ambitious new research paper which found that counterfeiting causes significant harm to the purchase intent of authentic products, and reveals various strategies to combat this effect.

And finally…

Obtain high-level trademark management and brand protection insights – WTR is hosting two events, on consecutive days, in Chicago early next month. The Brand Protection Online: Strategies for Ethical Enforcement and Managing Trademark Assets USA events will deliver high-level insight and practical takeaways for those tasked with managing, protecting and monetising brands. On 5 March 2019, Brand Protection Online event will take a deep dive into practical strategies for fighting infringement on ecommerce sites, navigating the changing domain landscape and managing reputation online. Taking place at the same venue the next day, the fourth annual Managing Trademark Assets USA will again focus on the cost-effective management of international portfolios, and comes at a time when it is more important than ever for brand owners to ensure they are integrating innovative and disruptive strategies into their trademark operations. To register for Brand Protection Online (or both events) click here. To register for Managing Trademark Assets USA (or both events) click here. (TL)

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