Scientology trademarks, Brazil’s backlog impact and Leason Ellis victorious against solicitation scammer: 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 the law firm which was told it doesn’t have exclusive rights to its initials, the impact of backlog measures in Brazil, the pros and cons of China’s rocketing trademark trajectory, and a new victory against trademark scammers. Coverage this time from Trevor Little (TL), Tim Lince (TJL), Adam Houldsworth (AH) and Timothy Au (TA).

Legal Radar:

Leason Ellis victorious (again) in fight against trademark scammer – We have previously applauded the efforts of IP boutique Leason Ellis to combat trademark solicitation scammers, and it appears those efforts continue. This week the firm revealed that it has secured a settlement against a company that charged consumers hundreds of dollars for publication in a so-called “database” of registered marks. The firm’s complaint alleged that Patent & Trademark Association Inc (PTMA) had engaged in false advertising, unfair competition, deceptive acts and practices, and tortious interference with prospective economic relations by marketing to trademark owners the prospective “publication” of their trademark registrations in a database run by PTMA. The complaint further alleged that defendants were confusing consumers into believing that the database was legitimate by sending unsolicited notices designed to make it appear as though PTMA was an official government enterprise. As part of the negotiated settlement, PTMA is permanently barred from ever engaging in trademark or intellectual property-related activities in the United States. The firm also recovered several domain names belonging to the company. It’s a victory all trademark owners should applaud. (TL)

Bacardi trademark application rejected – Bacardi has had its UK trademark application for ANGEL’S ENVY rejected. The famous beverage brand bought the Louisville-based Angel’s Envy bourbon brand in 2015, but its trademark registration was opposed by Le Fée, which claimed that the brand would be confused with its Absinthe product, Envy & NV Spirits. Interestingly, while the UKIPO ruled that direct confusion between the brands was unlikely because of the additional word, it decided that indirect confusion was a realistic prospect, with the possibility of Angel’s Envy being perceived as a sub-brand or spin-off brand of Envy & NV Spirits. Bacardi has announced that it will appeal the decision. (AH)

Law firm told it doesn’t have exclusive rights to initials – A Texas state district court judge has ruled against a law firm which claimed to have common law trademark rights to the initials which make up its name. PM Law Firm, a personal injury outfit led by John Papapavlou and Porya Mostaghimi, had alleged that P&M, otherwise known as Paranjpe & Mahadass, was confusing local consumers and infringing its rights. It sent a cease-and-desist letter to the similarly branded firm, which launched a lawsuit in return. Judge Robert Schaffer ruled in favour of P&M, stating that PM did not have any common law claim to exclusive use of the letters P or M. (AH)

Stone Brewing locks horns with MillerCoors in trademark battle – Stone Brewing has filed suit against MillerCoors, a subsidiary of Molson Coors Brewing Company, alleging that the international brewer has infringed on its ‘Stone’ trademark. Explaining the decision to defend its brand in a video uploaded to YouTube, Stone Brewing co-founder Greg Koch explains that the independent brewery is known for being the antithesis to ‘Big Beer’, as well as for its bold character and individualism, and that it feels it has no choice but to engage MillerCoors in court to defend its brand. MillerCoors’ ‘Keystone’ line of beers had recently been repackaged so that the word ‘Stone’ featured more prominently; Stone Brewing claims in its complaint that the international brewery is attempting to “steal the consumer loyalty and awesome reputation of Stone’s craft brews and iconic STONE trademark”. Stone Brewing is seeking damages and profits from the sale of the rebranded Keystone products and for MillerCoors to stop using the ‘Stone’ mark in relation to the sale and distribution of its Keystone beers. (TA)

Division in Armenia’s wine industry over use of the ‘Karas’ trademark – As reported by, Tierras de Armenia, one of the country’s biggest wineries in Armenia, has attempted to clamp down on the use of the word ‘Karas’. This move has caused a bitter dispute to ensue between itself and Zorah, another local producer. The term refers to large clay amphora used to make wine, but controversy has arisen due to the fact that Tierras de Armenia does not use the clay vessels to make its wines. Although the use of karasses has greatly diminished over time, recent investment in Armenia’s wine industry has led to a revival in their use and popularity. Zorah founder Zorik Gharibian labelled Tierras de Armenia’s a “senseless endeavour”, adding: “What [they] will achieve with this self-centred action is only division and discord, with the only great loser being the future development of Armenia’s wine industry itself.” (TA)

Market Radar:

The pros and cons of China’s rocketing trademark trajectory – As we reported recently, 2017 was another record year in terms of trademark applications at the China Trademark Office – with more than 5.7 million lodged though the year (up 55% on 2016). This brought the total number of registered trademarks in the country to 14.92 million. While characterising the figures as a “vote in favour” of registering IP in China on the China Law Blog, Matthew Dresden warns that there are downsides. For instance, he notes that it will become increasingly difficult to register marks in the country and predicts that – while this means registered marks become more valuable incentives for squatters to file applications will also go up. Whatever the reality going forward, a big question is whether the upward trajectory of applications will continue. (TL)

CPMA pushes back against larger warnings on alcohol packaging – In the UK, the Royal Society for Public Health recently said that the “strength of each drink and the risks of exceeding the recommended limit” should be made clearer on alcohol packaging, with a recommendation to add graphic cigarette-style warnings on bottles and cans. In response, Mike Ridgway of the Consumer Packaging Manufacturers Alliance (CPMA) warned that such a move could lead to the measures such as plain packaging. “Both brand owners and the packaging industry have been warned that the trend for regulation of this type will not disappear and with the example of tobacco packaging regulation can see this how this could eventually end with excessive health warning coverage and ultimately plain packaging,” he stated in comments to Packaging News. We’ve warned before about the domino effect of plain packaging, and it’s clearly something of concern to the CPMA. (TJL)

Brazil reveals impact of backlog measures – Earlier this month, we presented exclusive analysis of Brazil’s trademark landscape. As we noted, one challenge for brands eyeing market expansion in Brazil is the backlog at the Brazilian Patent and Trademark Office (INPI). It can take years for an application to make its way through the office even when no complications arise – in more extreme cases, it can take over a decade for an application to reach a final decision. INPI has now issued an update on its efforts to fight the backlog (in part via slew of examiner hires in mid-2017). Across 2017, the time to examination fell from 64 to 35 months where there was an opposition, and from 28 to 24 months where no opposition was lodged. By the end of 2018, the projected time for both is 18 months. Of course, the quality of decisions remain as important as timings but the announcement is wholly positive with respect efforts on the latter. (TL)

On the move:

Dykema unveils trademark practice leader – US firm Dykema has named Jennifer Fraser, a member in the US firm’s intellectual property & IP litigation department, as leader of its trademark practice group. Fraser’s practice covers all aspects of trademark law, ranging from US and foreign clearance and prosecution to litigating rights before the courts and the Trademark Trial and Appeal Board. (TL)

EIP appoints new head of trademark practice – European intellectual property law firm EIP has appointed partner Claire Lehr to be head of its trademark practice, EIP Brands. Lehr has more than 15 years’ experience in the field and has worked at law firms in the UK, Germany, and in various in-house roles. She joins EIP from Cooley, where she helped setup its London-based trademark practice. In a press release, she commented: “I’m delighted to have joined EIP and excited by the opportunity to drive its trademark practice forward into its next stage of development. EIP has an established trademarks team and a growing reputation in this field. I’m looking forward to working with EIP’s current client base and building relationships with new ones.” (TJL)

New partner at Kemp Little – Technology and digital media law firm Kemp Little has appointed Rachael Barber as a partner in the firm’s IP practice. Barber specialises in design, trademark and copyright litigation and enforcement, and joins the firm from Penningtons Manches. Kemp Little’s head of IP and technology disputes, Paul Garland, praised Barber’s “reputation and expertise” in the press release, saying: “Her particular strength in the retail sector will reinforce our ability as a firm to deliver seamless solutions to our many retail and e-commerce clients across IP and commercial technology.” (TJL)

Media Watch:

Scientology to copyright – I mean trademark – key phrases – The Times reports that the Church of Scientology in Ireland is seeking to register 15 trademarks for phrases including “The Bridge to Total Freedom”, which is being seen by commentators as evidence of a planned expansion into the country. The applications, which also include abbreviations such as HCO (Hubbard Communications Office) and NED (New Era Dianetics), are intended to protect the use of key expressions in books, flyers, websites and training courses. We have previously written about the protection of religious signs, as well  the Church of Scientology’s sizeable trademark portfolio, which has led to controversy in some jurisdictions (eg, when a Russian court “backed calls from Russia’s Ministry of Justice to close the church after accepting the department’s argument that the it cannot call itself a religious organisation if it owns a registered trademark”). If successful in these latest applications, further media scrutiny is sure to follow. Hopefully, though, unlike the headline of this trademark-focused story (namely, ‘Scientology bosses to copyright key phrases’), it is hoped that future stories on the topic use the correct IP lingo. (TL)

What’s in a branded name? – The New York Times published an interesting article on the challenges for brands named after a single individual. Specifically, it focuses on the Wynn Resorts brand, a well-known casino and hotel chain in the United States. In recent weeks, the company’s founder and CEO, Steve Wynn, has resigned after allegations of sexual misconduct (which he denies) – an issue the article says demonstrates how “alignment between brand and personality presents a problem”, with one brand consultant adding: “Steve Wynn is arguably the father of modern-day Las Vegas. The fact that his name is, in and of itself, the brand makes it far more complicated, in a similar way that Harvey Weinstein’s personal brand was also the name of his company.” (TJL)

Blockchain could help in fight against fakes – A recently published London School of Economic Business Review article argues that Blockchain could be applied to remedy online counterfeiting woes. Blockchain is a cutting-edge system which produces secure records of transactions between two or more participants. Its authors, Alan Vey and Annika Monari, contend that blockchain can be used to improve supply chain management, allowing consumers to get better information on the record price, date, location, quality and certification of products, and therefore more easily avoid purchasing fake products. This is an example of how more sophisticated technology may allow us to make a dent in unwitting counterfeit purchases. Indeed, it’s an issue that we added to our list of 25 issues that trademark counsel should be aware of in the coming years – and it appears to be an innovation causing waves in the anti-counterfeiting industry. (AH)

And finally…

Have your say on the state of the industry World Trademark Review is currently inviting industry practitioners to participate in the Global Trademark Benchmarking Survey, which measures the pulse of the industry, tracks industry trends and identifies how practice is evolving to counter new threats and embrace fresh opportunities. Participation in the survey is free of charge and designed to give counsel – both in-house and in private practice – the opportunity to have their say on the state of the trademark industry. The survey form for in-house/corporate counsel is available here. The survey form for law firm practitioners is available here. (TL)

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