Scotch Whisky in Korea, Pakistan IPO tackles fakes, and Samsung domain: news digest

Scotch Whisky in Korea, Pakistan IPO tackles fakes, and Samsung domain: 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 Ikea pursuing a small entrepreneur for alleged infringement, applications rising at the Philippines IP Office, a perfume trademark battle, a debate over whether the Wikipedia brand has been tarnished by WikiLeaks, and much more. Coverage this time from Trevor Little (TL), Adam Houldsworth (AH), Bridget Diakun (BD), Jonathan Walfisz (JW)  and Tim Lince (TJL).

Market radar:

DWS launches new fund to quantify IP based capital – Deutsche Bank-owned DWS Group has launched the DWS Invest CROCI Intellectual Capital fund to aid revenue comparisons of companies that rely on intellectual capital. Quantifying the revenue generated by intangible assets is essential for a full picture of a company’s growth. DWS’ Cash Return on Capital Invested (CROCI) team reported that there has been “no real corporate earnings growth on an aggregate basis over the past decade”. (JW)

David Beckham pays $50 million for full ownership of own brand – According to the Financial Times, David and Victoria Beckham have paid $50 million to Simon Fuller for his minority stake in Beckham Brand Holdings. The company was founded in 2014 and manages Beckham’s partnerships and brands, including stakes in Seven Global, David Beckham Ventures as well as his new soccer club Inter Miami FC. A person familiar with the deal alleges that new projects undertaken by the former footballer star were the driving force to take control of Beckham Brand Holdings. (BD)

Small business owner on ‘David v Goliath’ battle – Last week, a press release was issued proclaiming that beauty products entrepreneur, Tiffany Parmar, is “standing her ground” against Tiffany & Co after the latter opposed her UK trademark application for COTSWOLD LASHES BY TIFFANY. The release characterises the dispute as a ‘David v Goliath’ battle, with Parmar stating: “The system for trademarks seems very out of date to me and is not in line with the realities of modern life. It seems to give a distinct advantage to larger and well-established businesses at the expense of smaller firms, such as myself, particularly where there may be a widely used name involved such as my own.” Proceedings are ongoing and WTR asked Mark Culbert of iLaw (which is representing Parmar) about the rationale for going public about the dispute while it is still underway. He explained: “Two reasons really. First of all, the public generally do not always understand how trademarks work and the rights surrounding them. For example, we often come across business people who believe that the mere act of registering a company at Companies House means that the corporate name is protected. We could give many more examples of common misconceptions surrounding trademarks. It is therefore important to engage with the public, and in particular the business community, to help increase knowledge in this key area. Secondly, in this particular case it would in our view be wrong for a large US entity to be granted a monopoly in England over TIFFANY; which is after all a common female name in this country.” He also called for a spotlight to be shone on the importance of balance in trademark law, noting: “Smaller retailers on the high street have lost out to the large global brands and internet giants. As power shifts more and more towards those large corporates, it is important that the courts and tribunals play their part in ensuring such entities don’t ‘grab more of the real estate’ than is their rightful share.  Our hope is that this case will bring into focus where those boundaries lie.” This is not the first clash between a major brand and individual seeking to use a personal name as part of a mark. It is also not the first time that the David v Goliath analogy has been used around a trademark dispute. In previous reporting on the issue, Tiffany & Co has declined to comment. All eyes, then, will be on the UKIPO as it makes its decision. (TL)

Legal radar:

This market ain’t big enough for two torso perfume bottles – A court has ruled against perfume company Coscentra in its application for a perfume bottle shaped as a male torso. The trademark application was deemed too similar to the existing aftershave bottle design by Jean Paul Gaultier. Despite the company’s argument that the build and frames of the two ‘men’ were significantly different, the USPTO found the trademarks confusingly similar, stating: “Under actual marketing conditions, consumers do not necessarily have the luxury of making side-by-side comparisons between marks”. While Coscentra may have argued that their perfume bottle was notable for its inclusion of “private parts”, consumers were deemed unlikely to see the bottle’s appendages as all that memorable. (JW)

Scotch Whisky Association achieves further trademark protection in South Korea – The Scotch Whisky Association has been successful in obtaining a certification trademark in South Korea for ‘Scotch Whisky’. For whisky to meet the standard of ‘Scotch Whisky’ it must be aged in oak casks in Scotland for a minimum of three years and be no less than 40% alcohol by volume. Legal deputy director of the Scotch Whisky Association, Lindesay Low, indicated that the move would continue to ensure that Scotch Whisky would be legally protected post-Brexit. It is also a further measurement to protect the product against counterfeits. (BD)

Ikea pursues small entrepreneur for alleged infringement – Ikea has sent a cease-and-desist letter to an Australian entrepreneur attempting to register the name ‘Stylkea’ for panels (among other things) for flat-pack furniture. Kylie Hughes, the founder of Stylkea, argues she had researched the name when starting the business and found that some companies have used ‘-kea’ to indicate being part of Ikea, while at other times it is simply used to mean ‘market’ or ‘store’. She had been successful in registering the domain name, but after her trademark was approved Ikea got in touch to oppose the registration. According to Hughes, the Swedish furniture company offered her $105 to cancel the business name as well as transfer the ‘Stylkea’ website to them. This case highlights the importance of small businesses seeking out professional help early in the process, and it also reminds brand owners that a business name registration does not formally establish a right to a name. (BD)

Office radar:

Bosnia and Herzegovina to use harmonised database – The EU Intellectual Property Office (EUIPO) has announced that, as of May 6, the Institute for Intellectual Property of Bosnia and Herzegovina (IIP-BIH) will use the list of trademark goods and services from the harmonised database in TMclass in the Bosnian language. This move means there are now five non-EU IP offices that use and accept terms from this database. According to the EUIPO, “the adoption of HDB by IIP-BIH is a concrete result of the International Cooperation programme managed by the EUIPO in collaboration with its international partners”. (TJL)

Applications up 13% at IPOPHL – The Intellectual Property Office of the Philippines (IPOPHL) has revealed that applications for intellectual property in the first quarter of the year has risen by an impressive 13%. The increase represents a “steadily growing innovation culture in the country”, according to the office. Of those figures, trademark applications rose by 11%, from 8,405 in Q1 2018 to 9,312 in the first quarter of 2019. More reasons for the rise were given by the office: “This growth is the product of our expansion of satellite offices last year,” a representative said. “Furthermore, our Bureau of Trademarks implemented a trademark incentive program which we believe aided the increase.” (TJL)

Pakistan IPO to assist in counterfeit enforcement – The chairman of the Intellectual Property Organization of Pakistan (IPO-Pakistan), Mujeeb Ahmed Khan, visited Pakistan Customs (DGIPRE) earlier this week, in which he was briefed about measures being taken to stop counterfeits entering and being produced in the country. As well as data gathering, the chairman assured Pakistan Customs that the registry would “assist” in helping to curb counterfeits, and further highlighted recent legislative improvement to improve the country’s IP system. (TJL)

Tajikistan IPO gives trademark update – The director of the IP office of Tajikistan, Mirzo Ismoilzoda, has offered a detailed update of the registry’s activities in the first quarter of 2019. In all, the office received 97 trademark applications up to March this year, of which half (48) were from foreign applicants. Furthermore, over the same time period, the office received 600 international applications using the Madrid System, of which examinations of the claimed designation granted 570 of the applications. (TJL)

Media watch:

An ‘Archie Harrison’ registered trademark? – Earlier this week, a new royal baby entered the world, with Buckingham Palace announcing that the Duke and Duchess of Sussex had welcomed a son. Days later, the newly-married couple revealed the much-anticipated name of the newborn: Archie Harrison Mountbatten-Windsor. But the question that IP attorneys are naturally asking is: who will be the first to file a trademark application for ARCHIE HARRISON? On Monday, The Fashion Law wondered whether “the royals will follow the increasingly popular trend amongst US celebs and rush to seek federal protections for their offspring’s name”. Ultimately, the article concludes that, with Harry’s brother William not seeking registration for his three children’s name, “probably not” – but, just like any highly publicised name, there’s always the risk that an opportunistic individual could submit a trademark application, perhaps for some royal baby branded . (TJL)

Has Assange tarnished the Wikipedia brand? – An article earlier this week on Slate looks at how WikiLeaks may have harmed the Wikipedia brand. The main reason: WikiLeaks, ostensibly a platform for its founder Julian Assange and his team to distribute information, is not actually a ‘wiki’ (defined as a website where anyone can collaboratively modify content directly from the web browser). According to an expert in the article, WikiLeaks was “partially inspired” by Wikipedia when it first launched, but that’s where the comparison ends. And, according to Wikipedia co-founder Jimmy Wales, the name and subsequent controversy around WikiLeaks has “hurt the Wikipedia brand”, saying: “I wish they wouldn’t use the name, they are not a Wiki.” It appears, though, that Wikipedia (and master brand The Wikimedia Foundation) cannot do much to stop Assange’s name choice. (TJL)

Domain radar:

Samsung learns to play the domain game – Samsung has purchased the domain name, possibly in anticipation of a gaming platform for their mobile phones. The purchase is notable as it comes off the back of Samsung’s failure to recover another Galaxy-based domain name. After changing the name of their app store to Galaxy Store, they attempted to snatch up The domain name had been registered five years before Samsung began using the Galaxy brand and Samsung failed in a cybersquatting complaint under the Uniform Domain Name Dispute Resolution Policy. (JW)

GTLD applicants ordered to return $1.5 million to investors – Prominent generic TLD applicant Famous Four Media (FFM) has been ordered by the courts to pay their investors Domain venture Partners (DVP) back for money used to back letters of credit in ICANN’s name. DVP, an investment company with applications in 60 new gTLDs recruited FFM to manage the gTLDs. Seemingly, the Continuing Operations Instruments (COI), letters of credit assuring ICANN of the continued funding to the domains had the names of switched from DVP to FFM mid-2016. Chief Justice Anthony Dudley ruled that FFM must pay back the money related to the letters of credit, $1.5 million. FFM has been in liquidation for around a year with DVP’s portfolio now being managed by GRS Domains. (JW)

On the move:

Taft adds trademark and domain expert – Taft Stettinius & Hollister has welcomed Paul D McGrady to its intellectual property practice group in Chicago. McGrady brings to the firm his experience in the area of trademarks, copyright, domain names/ICANN matters and intellectual property licensing and litigation. Prior to joining Taft, McGrady was a partner at a global law firm and served as in-house counsel at True Value Hardware where he provided legal services related to trademarks, advertising, shareholder relations and franchising. (TL)

Fieldfisher adds to its Brussels IP group – According to an announcement on Fieldfisher’s website, the firm has hired Serge Flecijn as an of counsel to its Belgian IP group. Flecijn has over 20 years of experience and will help boost the group’s patent litigation practice. (BD)

Fiona Nicolson becomes first female president of LESI – Washington DC-based Licensing Executives Society International (LESI) will induct lawyer Fiona Nicolson as president of the global IP organisation on 26 May. Her tenure will begin during LESI’s annual international conference in Yokohama, Japan and last until the May 2020 conference in Berlin. LESI works around the globe educating businesses and professionals about intellectual property. Nicolson will also be the organisation’s first Scottish president. Nicolson is a partner with Bristows LLP in London and has previously been the head of IP practice at Maclay Murray & Spens in Glasgow for 16 years. (JW)

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 WTR. Over the past week we:

  • Took a deep-dive into the world of indigenous IP rights, and found that trademark practitioners must be aware of this burgeoning field of rights;
  • Looked at the registry operator of the ‘.club’ TLD launching a service designed to offer qualified brands and trademark owners “comprehensive” protection in the namespace, finding there are significant caveats and restrictions;
  • Analysed the USPTO’s decision to suspend its TSDR API following a spike in data scraping that has impeded the work of internal employees, with IP technology vendors confirming it will impact some of their services;
  • Studied a recent report which provides a number of key incentives for “risk-averse CEOs” to undertake trademark-related activity as a means of encouraging product development;
  • Reported on a speech from USPTO director Andrei Iancu, who expanded on efforts to tackle fake specimens of use on the US trademark register and the unauthorised practice of law, and provided an update on anticipated filings growth;
  • With campaigning in the Australian federal election in full swing, we looked at how practitioners on the ground are not bracing for change based on the election result, but are adapting to recent legislative changes that international brand owners should be aware of.

And finally…

WTR launches new-look magazine – The latest issue of WTR magazine has gone live online, and subscribers will note a major number of changes to the magazine and new types of content, all designed to maximise the value of their subscription. For more information on all the changes, you can view our blog here.  We have some exciting features and projects planned for the coming months and look forward to presenting the platform and new-look magazine to INTA Annual Meeting delegates. If you are heading to Boston, be sure to drop by exhibition stand 918/920 to learn more. (TJL)

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