Plain packaging in Korea, UKIPO’s 12 fake days of Christmas and Bud Light infringer gets Super Bowl invite: 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 today’s edition, we look at another creative cease-and-desist, a company’s “secret battle” with North Korea over counterfeit goods and the measure that UK lawyers are to prepare for Brexit. Coverage this time from Trevor Little (TL), Tim Lince (TJL), Adam Houldsworth (AH) and Timothy Au (TA).

Legal Radar:

UKIPO counts down “12 fake days of Christmas” – The UK Intellectual Property Office (UKIPO) has launched a new IP awareness campaign which marks the “12 fake days of Christmas”. The campaign, which is part of the office’s 'Buy Real' initiative, features a series of video clips, one released each day for 12 days, highlighting various ways that consumers can be scammed over Christmas. It features a song with lyrics by Wayne Beecham, who penned a wedding song this year that went viral. As the UKIPO’s press release states, the videos are light-hearted but have a serious message: “Although the video has a comical side to it, there's a serious underlying theme [that] fraudsters sell fake goods using the intellectual property (IP) of legitimate businesses, to make a profit.” More than any other IP office this year, the UKIPO has really stepped up its anti-counterfeiting awareness efforts – hopefully that continues into the New Year and beyond. (TJL)

Infringe Bud Light, go to the Superbowl World Trademark Review has written at some length on creative approaches to cease-and-desist letters, which can serve both enforcement and PR purposes. It appears to have been on the minds of the Bud Light team, with media reports latching onto a cease-and-desist sent to the makers of Dilly Dilly Ale. As Ad Week reports, ‘Dilly Dilly’ is a catchphrase used in medieval themed Bud Light adverts. Having noted Modist Brewing Company’s Dilly Dilly Mosaic Double IPA, it promptly dispatched a cease-and-desist – written on parchment and delivered (and read) by “a town crier in exquisite medieval garb”. The parchment correspondence stated: “Let it be known that we believe any beer shared between friends is a fine beer indeed. And we are duly flattered by your loyal tribute. However, ‘Dilly Dilly’ is the motto of our realm, so we humbly ask that you keep this to a limited edition, one-time-only run. This is by order of the king. Disobedience shall be met with additional scrolls, then a formal warning, and finally, a private tour of the Pit of Misery. Please send a raven, letter or electronic mail to let us know that you agree to this request.” Additionally, the company offered two “thrones” for Modist employees to attend the upcoming Super Bowl. The move has generated a lot of online buzz and follows in the footsteps of Netflix’s creative approach to such a correspondence earlier in the year and TGI Fridays in October. In fact, it led one IP expert, American University Washington law professor Christine Farley, to ask: “Will there be a new cottage industry of firms that can create funny IP threats?” (TL)

Dubai customs reaffirms commitment to the fight against fakes – Director of Dubai Customs’ IP rights department, Yousuf Ozair Mubarak, has declared that the United Arab Emirates is among the world’s leading countries when it comes to tackling counterfeits. His comments were made as his department participated in a workshop hosted in Dubai by Japan’s Ministry of Economy. Mubarak emphasised the importance of protecting IP rights as part of the UAE’s project to make “creativity the primary catalyst to our economy". Furthermore, according to Gulf News, his customs department has made 137 counterfeit seizures in the first half of 2017. (AH)

Barbados minister denies rise in fake products – Talking to media representatives late last week, the Barbados government’s minister of industry, international business, commerce and small business development, Donville Inniss, gave a rebuttal to reports of a rise in counterfeits in the country. According to Loop, he claimed that a rise in legal disputes involving fakes does not necessarily signify an increase in counterfeit products in the Barbadian marketplace. “One must not construe any recent cases in court involving fake products as there being any upsurge in the number of fake products entering the market; I think what we are speaking to here is respect for intellectual property and all that goes with it,” he said, adding that more legal disputes will hopefully lead to citizens seeing the benefits of registered IP protections: “What I would like to see coming out is a heightened awareness of the need for Barbadians to have their designs [trademarked] so they would realise the immense value that comes [with it] because, at the end of the day, it may cost the same to produce a shoe from Puma as it may cost to produce one from Nike, as it may cost to produce a no-brand name one, but that little emblem on the side [...] carries with it a value to the company and the people who design it.” For the wider IP community, seeing a country’s industry minister directly encouraging respect for trademarks should be seen as a positive. (TJL)

Lawyers preparing for Brexit with Irish registrationsBloomberg has reported on the sharp rise in UK lawyers who have registered in Ireland since the EU referendum result in June 2016. According to figures, 501 attorneys from England and Wales have registered in Ireland this year, with a further 806 registering in 2016. According to Ken Murphy, director-general of the Law Society of Ireland, only about 50 to 100 a year registered before the referendum result. The reason for the registration spike is that when the UK leaves the European Union, it is presumed lawyers only registered in the UK will be unable to represent clients in EU courts (which requires attorneys be registered in a country with EU membership). While the results don’t specifically show how many of those who registered practice in IP law primarily (the article does state that a majority are “mostly antitrust and trade specialists”) we have previously reported, IP firms are particularly fearful of losing EU access. (TJL)

Canada’s government in talks to bypass rules for counterfeit seizures CBC News has reported that Canada has entered into talks with US officials after new demands from the Trump administration that the country take a tougher stance on in-transit counterfeit goods destined for the US. Under a law that has been in effect since 2015, Canadian customs officers can only seize fake goods that will land in the domestic market. Officials have long spurned the demands for tougher counterfeit rules, despite critics claiming that fake imports to Canada are worth billions of dollars. However, the current Liberal government now looks to have opened up talks with the US administration to reach a compromise. In a briefing note obtained by CBC News, the Canada Border Services Agency may acquiesce to the US demands without actually changing the law. A number of solutions have been proposed that will not require a change in legislation; however, Michael Geist, a law professor at the University of Ottawa who specialises in intellectual property, believes it is “very troubling” that “Canada meets international standards and passed legislation specifically excluding in-transit shipments yet officials are seeking to find ways to bypass those rules”. (TA)

Call for plain packaging in Korea – A World Health Organisation representative has made a public call for South Korea to introduce plain packaging on tobacco products. Talking to the Korea Herald, Kerstin Schotte, a medical officer at WHO’s Department of Prevention of Non-communicable Disease, lauded Korea’s introduction of graphic warnings and high tobacco taxes, but suggested the country needs to go further. “Loopholes exist when it comes to measures to effectively control the tobacco industry’s promotion of their products. That’s why a stronger initiative, such as introducing plain packaging should be considered now.” The call comes on the fifth anniversary of plain packaging being implemented in Australia, which led to a slew of articles over the weekend claiming “Australia’s plain packaging experiment” has been “a failure” and “a disaster”. (TJL)

Company battles North Korea’s counterfeit clams – Canadian company Clearwater Seafoods has spoken publicly about its “secret battle” with North Korea over the sale of counterfeit products. Specifically, CEO Ian Smith claims the company has spent “millions of dollars building up consumer demand for Arctic surf clams in Asia, and the North Koreans are using devious methods to infiltrate the Chinese market for surf clams”. Those methods include clams harvested by North Korean vessels being sold on the Chinese market in counterfeited Clearwater packaging, including calling it “Product of Canada”. This led to Clearwater spending millions working with the Chinese government to “stamp out” the products – work that is “starting to pay off”, Smith added, including one company paying a $300,000 fine for counterfeiting. Another interesting anecdote from the Herald article is that Clearwater doesn’t have the same problem in the Japanese market because, according to Smith, “the Japanese consumer is interested in food and food safety and wants to know where the clam comes from”. A reminder, perhaps, on the ongoing prevalence of fakes in China and how North Korea is taking advantage of it. (TJL)

On the move:

Dinsmore opens Cleveland office, adds 15 – Dinsmore & Shohl has expanded its presence across Ohio with the establishment of a Cleveland office. The opening of the office coincides with the arrival of 15 new staff members from McDonald Hopkins LLC, including five IP attorneys who will join the firm’s trademark practice group. The new attorneys include James Dimitrijevs, who has been named as managing partner of the Cleveland office, and Grant Monachino as a partner. Talking about the new office, Dinsmore managing partner George Vincent said the growth “reflects our path as a firm”. (TJL)

McDonald Hopkins appoints new IP chair – US law firm McDonald Hopkins, which has offices in six cities across the country, has announced the appointment of Todd Benni as its chair of the firm’s IP prosecution and management practice group. Benni has been at the firm since 2011 and has extensive experience in trademark, advertising and domain name issues. The firm also confirmed that David Movius will expand his role as the chair of the firm’s IP litigation practice group. In the role, according to the press release, Movius will “aggressively prosecute intellectual property claims and zealously defend clients” in patent, trademark, trade dress, and copyright disputes. (TJL)

Lee makes the move to Squire Patton Boggs – Kerry Lee, former head of the IP group at healthcare and consumer pharmaceuticals company Walgreens Boots Alliance, has moved into private practice, becoming a partner at Squire Patton Boggs. Set to lead the IP & technology practice group in UK cities Manchester and London, Lee is vastly experienced trademark portfolio management as well as in handling mergers and acquisitions. (AH)

Media watch:

Identifying the type of trademark squatter – The China Law Blog has published a blog into the five distinct categories of entities that file trademarks for popular brands in China. Often lumped together as “trademark squatters”, the five categories include “The Extortionist”, who hold brand names for ransom, “The Counterfeiter”, who register foreign brand names to use in commerce, and “The Coincidental Copycat”, who may have applied for a popular brand term independently and are unaware of an associated brand. The blog concludes that all brand owners should identify which category a “trademark squatter” fits into, as it will greatly affect the best strategy going forward, concluding: “Better yet, register your trademark right away and prevent having to strategise at all.” (TJL)

And finally…

Just days left to make nominations for the WTR Industry Awards – World Trademark Review is currently inviting nominations for its extensive annual research project, designed to identify and recognise the leading in-house trademark teams and individuals. Act now to ensure that the industry’s leading lights are recognised at the WTR Industry Awards 2018, as the nominations window closes at the end of this week. Click here now to access our short survey form and ensure that your peers and colleagues receive the recognition that they deserve. (TL)

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