Scotch Whisky toasts trademark renewal, fake toy epidemic, and IACC looks back on 2017: 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 US Senate’s announcement that nominated USPTO director Andrei Iancu will be voted on next week, Costco Korea losing a design infringement suit, ICANN extending its GDPR consideration window, and the retirement of the Swaziland trademark registrar. Coverage this time from Trevor Little (TL), Tim Lince (TJL), Adam Houldsworth (AH) and Timothy Au (TA).

Market Radar:  

Vale Dolores Hanna – This week IAM reported that Dolores Hanna – an inductee to the IP Hall of Fame and the first female president of the International Trademark Association – died earlier this month at the age of 90. An industry trailblazer, Hanna was an inspiration to countless generations of IP practitioners in the US and further afield.  Editor-in-chief Joff Wild writes: “She will be greatly missed. All of us at IAM extend our condolences to her family and friends at this difficult time.” It is a sentiment that World Trademark Review can only echo at this sad time. (TL)

UK delegation welcomes renewal of Scotch Whisky trademark in China – The chief executive of the Scotch Whiskey Association, Karen Betts, has announced that the organisation’s trademark has been successfully extended in China until 2028. She welcomed the development while accompanying UK prime minister Theresa May on a three-day trade visit to the world’s second largest economy. “The renewal of the SCOTCH WHISKY trademark is an important step in securing future growth for the world’s leading high-quality spirit drink in China, the world’s largest spirits market”, she said. “While challenges remain, Scotch Whisky producers can be confident that the Chinese government officially recognises Scotch Whisky as a Scottish product, produced according to traditional methods, that should be given special recognition in the Chinese market”. The association has had to tackle 200 or so imitation brands in China, and Betts said that it had enjoyed “great support from the Chinese authorities, who take food fraud and IP protection seriously”, while also thanking the British Embassy for its assistance. (AH)

$15 million of fake merchandise seized by US operation – It has been announced by US Immigration and Customs Enforcement (ICE) that Operation Team Player has yielded the seizure of more than 170,000 counterfeit sports items worth more than $15 million, as well as 65 arrests and 24 convictions. The operation, which is run by Homeland Security’s IPR Center, targets the importation of knock-off sports gear, which, according to ICE Deputy Director Thomas Homan, “wreak havoc on local economies, threaten the health and safety of the American public and fund criminal organisations engaged  in other illegal activities”. The announcement was made in the run-up to this Sunday’s Super Bowl, which is usually accompanied by a surge in the sale of counterfeit sportswear. (AH)

IACC looks back on 2017 – The International Anti-counterfeiting Coalition (IACC) has published its annual ‘Year in Review’, looking back at highlights from an eventful 2017. In his opening remarks, the organisation’s president Bob Barchiesi claimed that it had been “a period of accelerated work in brand protection”, with various new initiatives and partnerships cited. He also noted that he plans to “ensure the IACC’s strength and stability in the years to come” through the creation of a new strategic plan. Certainly compared to the IACC’s tumultuous 2016, which included a membership revolt and the suspension of Alibaba as a member, it appeared to be a positive year for the organisation – and with pledges of new partnerships and programs, there’s clearly optimism that 2018 will be even better. (TJL)

Legal Radar:

Nominated USPTO director set for confirmation vote next week – Back in December we reported on the news that Andrei Iancu, President Trump’s nominee to be director of the USPTO, had been approved by the Senate Judiciary Committee, winning the unanimous consent of its members. This week, IP Watchdog’s Gene Quinn reported that the US Senate has reached agreement to hold a confirmation vote on Iancu on Monday 5 February. The vote will take place after a 30 minute debate. To date, much of the discussion around Iancu’s nomination has focused on his patent credentials but the position is equally important for trademark owners and practitioners. Whether the latter is even mentioned in Monday’s debate remains to be seen. (TL)

Golden Knights and US Army discussing settlement – The National Hockey League (NHL) expansion team Vegas Golden Knights and the US Army are working towards an out-of-court settlement of their ongoing trademark dispute. Two weeks ago, the Army, whose parachute team is also known as the Golden Knights, filed an opposition to the hockey franchise’s GOLDEN KNIGHTS mark, which was granted last year following a long-running battle before the USPTO. It is being reported that the team’s owners, Black Knight Sports and Entertainment, have now filed a motion to suspend for settlement with consent at the trademark office, giving the two parties until April 25th to reach an agreement. The Army does not own trademark rights to its parachute team’s nickname, but is claiming exclusive rights through use. (AH)

Costco Korea loses design infringement suit – The Korea Times has reported that the Seoul District Court this week ruled that Costco Korea must pay 200 million won ($186,000) for the infringement of a design patent. A designer alleged that Costco Korea was selling multifunctional storage boxes that infringed on a design that it had applied for in 2010 and registered 2 years after. In addition to damages awarded to the designer, the court has ordered the retailer to dispose of the offending products from its warehouses. Costco Korea’s argument that it did not know of the existence of the registered design was rejected by the court. The judgment stated: “Despite several differences, the two products are similar in overall aesthetic impression.” (TA)

Concern over fake toy epidemic – The British Toy and Hobby Association (BTHA) is urging increased enforcement action to prevent the production and sale of counterfeit toys in the UK. According to an article on Chemical Watch, a BTHA safety expert, Jerry Burnie, said the association estimates that between 10% and 12% of all toys on the UK market are fake. The key reason the figure is so high, he adds, is that enforcement efforts are not working. “We feel we have all the legal things in place and adding more regulations doesn’t affect people trying to ignore them anyway,” he says. “If enforcement had more resource and could enforce more items that would be very helpful.” The key issue, the article states, is that UK enforcement services were “in the midst of a funding crisis”, but it’s an issue that key parties are well aware of. For example, a European Commission spokesperson admitted that, while EU toy safety regulations are the “strictest in the world”, there are “still too many unsafe and non-compliant products sold on the EU market". Of course, once the UK leaves the EU next year, there are already calls to “throw some EU regulations on a bonfire” – time will tell whether that includes safety regulations that help tackle this epidemic of fake toys. (TJL)

Swaziland trademark registrar retires – Over on Lexology, Simon Brown, Nicole Haworth and Nondumiso Msimang from Adams & Adams have posted the news that - after 8 years in office - Mr Stephan Magagula, registrar of trademarks in Swaziland, retired from office on December a 2017. In 2015, Magagula had a hand in preparing the Industrial Property Tribunal Bill and the Trademark (Amendment) Bill. The authors note that the latter seeks to bring Swaziland’s national legislation in line with its international obligations under the Madrid and ARIPO filing systems. Currently the two bills have yet to be presented to the country’s Parliament for debate. (TL)

Online radar:

ICANN (correctly) extends GDPR consideration window – One of the hot topics in the ICANN world is the potential impact of the General Data Protection Regulation (GDPR) on rights holders’ access to accurate and reliable WHOIS data. ICANN recently published three models for public comment, and last week we published a guest blog from the president of ICANN’s Intellectual Property Constituency (IPC), in which he warned that one of the suggested approaches could mean that WHOIS as we know it “goes dark”. In that post, ICANN – which had allocated just 2 days to assess community input – was urged to provide a reasonable extension of time to allow the community to share their input before it makes its decision. While the comment period closed as planned on January 29, the organisation has confirmed that it will take longer to assess the input it has received from all parties before publishing an assessment of how it will approach compliance with GDPR. As it stands, the community should have access to ICANN’s plan by the middle of February. (TL)

On the move:

Brown Rudnick strengthens tech and IP capability – Brown Rudnick LLP has announced the appointment of Mark Lubbock as a partner in the technology & intellectual property group of its London office. Lubbock – who formerly headed up Ashurst’s technology and IP practice - boasts over 20 years of experience in technology and privacy. (TL)

Team of Greenberg Traurig attorneys join Buchalter - J Rick Taché and his core team – Erikson Squier and Roger Scott (both senior counsel) – have moved to Buchalter from Greenberg Traurig. Taché will serve as the firm-wide co-chair of the patent litigation group, with his team based in the Firm’s Orange County, California office. Taché practices extensively in complex intellectual property litigation and focuses his practice on trademark and patent prosecution across a range of industries (including the aerospace, automotive, consumer products, cosmetics, internet, manufacturing, medical device, and software sectors). (TL)

Davis Polk snags IP litigator – International law firm Davis Polk has announced that IP litigator Ashok Ramani will be joining as a partner in its litigation department in Northern California. Ramani joins from Keker, Van Nest & Peters, where he was previously a partner, and has represented companies including Comcast, Netflix, Hulu, HTC, and Broadcom. According to the press release, he has secured multiple nine-figure settlements for plaintiff clients. (TJL)

New head of trademarks at Cameron – Boutique European law firm Cameron Intellectual Property has announced the appointment of Meena Murrin as a senior trademark attorney, wherein she will head up the firm’s trademark practice. She was previously as Marks & Clerk as an IP attorney, and the press release says she is “uniquely skilled within the field of intellectual property law in Scotland”. Stewart Cameron, director and founder of Cameron IP, commented: “The firm’s growing success is due to our people and the increasing demand for specialist IP services.  Meena’s expertise, enthusiasm and dedication to providing a first-rate service to clients will be invaluable as she leads the trade mark practice and further drives the success of the firm.” (TJL)

And finally…

Have your say on the state of the industryWorld 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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