Novichok trademark flurry, gift shop seeks IT'S COMING HOME mark and IHOb is no more: 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 there’s been a flurry of trademark applications around the world for the name of the deadly nerve agent Novichok, how Kenya is stepping up its anti-counterfeit efforts, how Cornish pasties are getting a new authentication scheme and – in the run-up to England’s World Cup semi-final match – how a UK gift shop has filed a trademark application for the term “it’s coming home”. Coverage this time from Trevor Little (TL), Tim Lince (TJL), Adam Houldsworth (AH) and Timothy Au (TA).

Market radar:

Gift shop files trademark application for England World Cup song lyric – Following England’s win in the World Cup quarter finals on Saturday, one phrase has been inescapable for those in the country: “It’s coming home”. Used in the chorus of a popular 1996 single by British band The Lightning Seeds, the phrase has been resurrected thanks to England’s progression in the World Cup (in fact, the song is on course to top the music charts this weekend). But it appears one British company sees dollar-signs in the phrase and is seeking registered trademark protection for use on clothing. Specifically, UK-based gift company FatCuckoo filed a trademark application at the UK Intellectual Property Office (UKIPO) for the term IT’S COMING HOME on July 7 (the day of England’s quarter-final win). The application is in class 25 for items including headwear, footwear, aprons, and T-shirts. If the trademark application reaches registration, it means – in theory – that FatCuckoo could stop the sale of clothing items using the phrase in the UK. Time will tell whether members of The Lightning Seeds (or collaborators on the Three Lions song, comedians David Baddiel and Frank Skinner) will consider an opposition when the application reaches publication… (TJL)

IHOb no more as IHOP reverses rebrand – We reported on fast food brand International House of Pancakes (IHOP) unveiling its rebrand last month, with its new IHOb identity generating much social media buzz. It was widely expected to be a temporary marketing move, and we wrote at the time that such campaigns are potentially risky from a trademark and brand protection perspective. Less than a month after the ‘rebrand’ and IHOP has confirmed it is IHOb no more. In a Facebook post, the company said: “We’d never turn our back on pancakes (except for that time we faked it to promote our new burgers).” In terms of marketing stunts, the IHOb move will no doubt be remembered by those in the industry. But with questions over its success (the NYPost claimed that it was a “flop” according to new data), it may be a campaign strategy that few will repeat in the future. (TJL)

Cornish pasties get new authentication scheme – The Cornish Pasty Association (CPA), which owns the ‘Genuine Cornish Pasty’ trademark, has announced the creation of a retailer scheme for businesses selling Cornish pasties made by certified producers. A newly established online directory will help consumers locate authentic versions of the pasty, while businesses who enrol in the scheme will be able to use the CPA’s trademark and be able to partake in Cornish Pasty Week, a week-long event celebrating the popular food product. Jason Jobling, chairman of the CPA, stated that the scheme would allow the CPA to raise awareness of the Cornish pasty’s distinctiveness and give those in the pasty business more reason to get involved. With the United States pushing for the UK to drop geographical indications post-Brexit, expect Cornish pasties to remain in the news for the foreseeable future. (TA)

Distillery criticised for ‘Novichok vodka’ as flurry of trademark applications revealed – A UK-based distillery has been criticised for launching a range of vodka named “Novichok Edition” in the week that a person died from exposure to the nerve agent. According to The Drum, the alcohol company, Bristol Dry Gin, announced its new vodka product on July 7, while Dawn Sturgess died on July 8 (after falling ill on June 30). In social media comments, one user from Salisbury (the town where the first Novichok incident, involving the Skripals family, occurred in March 2018) said: “I think your marketing team might want to rethink the name. For those of us enduring this nightmare it really is in poor taste.” The distillery stood firm in a statement, writing: “Novichok Edition has been in development for some time, and was only named and released after the Skripals had recovered. It was intended to lighten the mood and ease tensions, not to cause offence, and reaction has been overwhelmingly positive. We sincerely apologise if any offence was caused, especially to the families of Dawn Sturgess and Charlie Rowley, and understand the timing of the release of this product may have lacked sensitivity. The Novichok Edition is a limited edition, which sold out within hours of being released, and we have no plans to produce any more." It appears, though, that Bristol Dry Gin is not the only company seeing opportunities in the name of the deadly nerve agent. There have been at least eight trademark applications filed since March 2018 which include the term NOVICHOK (there were zero prior to then). Four of the trademark applications were filed by Czech Republic resident Jan Radil (two filed at the EUIPO, two at the USPTO). In terms of other applications, one was filed is in Switzerland, another in France, and another in the UK. Finally, and most relevant to Bristol Dry Gin, is another mark at the USPTO for the term VODKA NOVICHOK (which, incidentally, has a specimen that appears to be the term scrawled on a wall in marker pen). All eight of the applications have not had a first office action yet. With the term being widely associated with a deadly nerve agent, the question now is whether any of the NOVICHOK trademark applications will reach registration. (TJL)

ICE seizes $43 million worth of fakes in Texas – US Immigration and Customs Enforcement (ICE) has announced the seizure of over 180,000 counterfeit products in Laredo, Texas worth almost $43 million. Agents with ICE’s Homeland Security Investigation (HSI) conducted the investigation in June, finding that the Laredo-based criminal group responsible was the same as one that had been involved in a separate counterfeit merchandise seizure in May. Just under 800 boxes were detained, which collectively contained 181,615 fake items, including a range of counterfeited brands such as Adidas, Apple, Calvin Klein, Casio, Chanel, Coach, Diesel, Fendi, Gucci, Hugo Boss, LG, Luis Vuitton, Mark Kors, Nike, Rolex, Samsung, Sony, Under Armour, Yves St. Laurent and DC and Marvel Comics. (TA)

Kenya steps up anti-counterfeiting efforts - In the Daily Nation, Ibrahim Oruko reports that Kenya’s government has seized contraband and counterfeit goods worth Sh7.5 billion, with 179 foreign individuals arrested and charged since the formation of the country’s Multi-Agency Committee in May. The committee draws on the expertise of the country’s Anti Counterfeit Agency, Bureau of Standards, Revenue Authority and Industrial Property Institute. Oruko notes that this success is partly down to a strategic change that has resulted in enhanced surveillance at entry and exit points, as well as a ‘100% inspection and verification’ approach to cargo moving at all points of entry without a certificate of conformity, as well as cargo arriving through Eldoret Airport. (TL)

Mobile drug authentication not feasible says Nigerian agency – The mobile authentication of drugs, which has been touted as a potentially effective weapon in Nigeria’s war against counterfeit medicines, is not possible at present, the country’s National Agency for Food and Drug Administration and Control (NAFDAC) has said. It was responding to calls from Nigeria’s House of Representatives and Consumer Protection Council and Standards Organisation to make use of the Mobile Authentication Scheme to detect counterfeit medicines and remove them from the market. The resources were currently lacking to take such a step, said NAFDAC Director General Prof Moji Adeyeye, even though she recognised the measure would otherwise help to achievement her agency’s objectives. “The limited authentication that is being undertaken currently for the two classes of drugs by NAFDAC sometimes result in overwhelming calls to the drug information specialists at NAFDAC secretariat”, she explained, continuing: “Considering the fact that NAFDAC has over 11,000 registered drug products, the manpower that will be needed to authenticate all drugs will be enormous”. (AH)

Trademarks on the up in the Philippines – The Intellectual Property Office of the Philippines (IPOPHL) has revealed that applications for IP rights increased by 14% in the first quarter of this year (compared to the same period in 2017). In terms of the type of rights most sought after in the country, trademarks led the way – representing 84% of the total applications. The Manila Bulletin quotes IPOPHL director general Josephine R. Santiago, who pointed to rising demand from smaller entities: “The rise of intellectual property applications reflects the spreading awareness among the public of the importance of trademarks, due to our key partnerships with media, the Department of Trade and Industry, and other strategic partners… Of course, these efforts are underpinned by the growing understanding, appreciation, and relevance of trademarks among micro, small, and medium enterprises, ultimately driving the increased demand for protection.” (TL)

Legal radar:

Only The Brave wins preliminary case in designs dispute with Zara – Only The Brave (OTB), the Italian house of fashion brands that owns Diesel and Marni, has won a battle in its EU dispute with Spanish fashion house Inditex, owner of Zara, which it accuses of counterfeiting its design-rights-protected jeans and footwear. Having been accused of infringing Diesel’s Skinzee-SP jeans’ EU registered design right and the unregistered rights for Marni’s Fussbett sandals, Inditex sought to invalidate the OTB’s Skinzee-SP right on the grounds of unoriginality, and asserted that the Court of Milan could not force it pay damages as it is not headquartered in Italy. The court was not persuaded, however, it has been reported; it affirmed the validity of the design right and ordering Inditex to withdraw all of the allegedly infringing goods, or risk having to pay compensation of $235 for each item. (AH)

Media watch:

Tips for enforcing rights on the dark web – It is crucial for brand owners to educate themselves on the ‘dark web’, and to understand its potential to facilitate IP rights infringement, Emilie Feil-Frazer of Gowling WLG in Canada argues in a recent blog. “Given its anonymity”, she explains, “the dark web is an ideal location for illicit activities to take place”, including the sale of potentially IP-infringing products. Alongside fake passports, ID and credit card information, counterfeit products, including sophisticated pharmaceutical fakes and luxury knock-offs are widely sold. And, while the customer base for such products is presently limited on the dark web (which requires a special browser in order to be surfed), Feil-Frazer points out, enforcement is especially difficult given the untraceability of cryptocurrency and the anonymity of buyers and sellers; and law enforcement professionals can only help in a small number of circumstances. Researching the dark web, and understanding the threat posed to your particular brand, is important for rights holders, who should have a strategy in place to deal with issues in this shadowy recess of the internet; however, she stresses, monitoring the dark web should be done with the help of cyber security professionals. Indeed, it’s a subject we’ve covered extensively on World Trademark Review – and, as Feil-Frazer notes, it’s clearly an evolving threat for brands. (AH)

Domain name radar: finally gets sold after 25 years – The domain name, which has been owned by cryptographer Matt Blaze since 1993, has been sold to Monaco, a Switzerland-based cryptocurrency payment platform start-up. The price of the sale was not disclosed, but the highly sought after domain name has previously been estimated to be worth between $5 to $10 million. Previously, Blaze, an associate professor of computer and information science at the University of Pennsylvania, had categorically refuted all offers from prospective buyers. The deal was less about money and more about finding the right owner for the domain, according to Kris Marszalek, Monaco’s CEO: “If it was only about money [Blaze would] have sold it a long time ago.” (TA)

An invaluable read of the domain name investing journeyOver on Domain Name Wire, Andrew Allemann brings to attention an article by domain name investor Matt Gill, which provides a first-hand account of the experience of domain name investing and shines a light on the vast number of opportunities and challenges that come with it. With “no hatred, no assumptions, and lots of humility”, as well as an “unprecedented transparency of the investor’s results”, Allemann urges all domain investors – not just new investors – to give the piece a read. (TA)

On the move:

Rosenbaum gets a new chair – Chicago intellectual property boutique Rosenbaum IP has added Jason K Schmitz as a shareholder and chair of its intellectual property transactions and global brand management practice groups. Schmitz was most recently a partner in the Chicago office of Vedder Price, and previously held the same titles at Baker & McKenzie and Mayer Brown. Schmitz assists clients in evaluating, structuring, negotiating and managing a wide variety of commercial IP and IT transactions and agreements. He also partners with trademark clients on all aspects of US and global brand management, supporting all stages of brand positioning in the marketplace, from development to brand protection and monetisation. (TL)

And finally…

Anti-counterfeiting around the world – 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 currently 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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