UDRP blow for Etsy, opportunity for Lego in 3D printing and INTA adopts design guidelines: news round-up

In our latest round-up we report on the fierce opposition to the Canadian government’s plans to impose plain packaging on legal cannabis products, consider US tax reforms which will make IP assets abroad less valuable and present coverage from INTA’s Brand Authenticity Conference, which concludes in Berlin today. Coverage this time from Trevor Little (TL), Tim Lince (TJL), Adam Houldsworth (AH) and Timothy Au (TA).

Legal Radar:

Myanmar looks to set up first dedicated IP office - Draft trademark legislation proposing the establishment of an IP office has been published by the government of Myanmar for public consultation. The country is currently without a specialist office; brand owners are required to file for rights at the Office of the Registration of Deeds, and foreign innovators need to give notarised and legalised power of attorney to a domestic trademark professional, reports INTA Bulletin. But under the proposed new legislation, the country will establish its first dedicated IP office, and a first-to-file registration system with a broader definition of trademark registrability. Foreign applicants will still need to make their registrations through a local agent. (AH)

Companies sued in latest comic convention infringement suit - The New England Anime Society is seeking emergency injunctions against two companies - Fantastic Gatherings and Interactive Meet and Greet Entertainment Inc - which it claims are infringing its ANIME BOSTON trademark. The two defendants- which are marketing their own anime conference as “Boston Anime Fest” - are alleged to be deliberately misleading consumers with their similar name, reports local press. The owner of Interactive Meet and Greet Entertainment has replied that the suit is an instance of trademark bullying by a company seeking to monopolise the generic concept of anime in a geographical area. This dispute has arisen against the background of the more prominent comic convention dispute between San Diego Comic Con and Salt Lake City Comic Con, previously reported by World Trademark Review. This latest spat further highlights how questions around descriptiveness and generic-ness can become contentious in this sector. (AH)

The deadly cost of counterfeit drugs highlighted - An estimated one in 10 medicines in poor countries are counterfeit and likely responsible for the deaths of tens of thousands of children every year, The Guardian reports, citing new World Health Organisation statistics. To arrive at the figures, experts reviewed 100 studies involving more than 48,000 medicines. The study concluded that drugs for treating malaria and bacterial infections accounted for nearly 65% of fake medicines and estimated that countries are spending about $30bn on counterfeit drugs. (TL)

Trademark questions absent during Iancu hearing - President Trump’s nominee for the USPTO Directorship, Andrei Iancu, has answered IP questions during his Senate confirmation hearing, World Trademark Review’s sister publication IAM reports. His qualified criticisms of the inter partes review process and his concern about reduced patent eligibility will reassure patent holders, especially in the life sciences. However, trademark issues seem to have been crowded out of the hearing by hard IP matters, leaving us none-the-wiser about where Iancu stands on brand rights. (AH)

Market radar:

Fasken Martineau rebrands - Canadian firm Fasken Martineau has shortened its name to Fasken and unveiled a new logo and website as the 700-member firm, 150 year old firm seeks to reflect “its mission to help clients navigate the legal complexities of their business” The rebrand has debuted with a series of ads in Canadian and US media, including spots in select legal and financial publications and news sites. A key emphasis for the firm is its revamped website, which it states makes it easier to access lawyer skills, relevant experience and value-added qualifications. Peter Feldberg, managing partner, reflects: “Our clients are the core of our business.  We are committed to providing them excellent, innovative, practical and cost effective legal services. Our new site ensures a better experience for our clients - making navigation to the information of interest to them quicker and easier.” (TL)

INTA adopts design guidelines - INTA’s board of directors has approved a resolution adopting Model Design Law Guidelines, which will serve as a standard for its analysis of - and comment on - national and regional design laws and regulations. The guidelines are written in a jurisdictionally neutral way and enable the association to take positions purely on design law and practice, without a connection to trademarks. David Stone, the chair of the designs committee and partner at Allen & Overy, explained: “This is a living document that will evolve over time, continuing to provide INTA staff and committees with a core set of principles to use with regards to design law globally.” The move comes shortly after the INTA CEO Etienne Sanz de Acedo revealed plans for an expansion of the association’s remit, which he described as a ‘beyond trademarks’ project. It can be expected that designs will be a central plank of its activities going forward. (TL)

Indian sports market shuts down in police raids protestThe Times of India reports that traders on India’s Surajkund road – home to one of the largest sports markets in India – have closed shop in protest at recent raids by local police. Earlier in the week, several stores were raided after a complaint was made by a leading company regarding the misuse of its brand, mainly on cricket bats. The raid led to two traders being briefly detained and the trade union shutting down the market. A meeting was also held to discuss whether further action should be taken by the traders. Anuj Singhal, president of the Sports Good Trader Union, is quoted as saying: “The way [the police] behaved with the local traders during the raid is unacceptable. Misuse of company’s [sic] logo has been a norm but we are being selectively targeted. We have to stand together to brave the atrocities of the administration which has made us a punching bad.” It would seem, then, that from the traders’ perspective brand misuse is so common it has become ‘a norm’ and transgressors may even feel victimised when targeted, highlighting just how widespread the problem of IP infringement is. (TA)

Major US tax reforms to make IP assets abroad less valuable – A significant change to US tax rules, which are close to being voted into law, will make it less attractive for US companies to locate IP assets in other countries, as reported by The Irish Times. Under the new rules, IP assets held abroad would be subject to US tax for the first time.  The move is designed to encourage US firms to invest in such assets domestically. This will pose significant challenges for Ireland in particular, which has become a hub for US corporations. However, as noted by Olivia Buckley, communications director at the Irish Tax Institute, US companies will still need international bases and Ireland remains well placed to draw in companies targeting the European market. (TA)

Lego takes cautiously optimistic view of 3D printing – Talking at INTA’s Brand Authenticity Conference in Berlin this week, a representative from Lego suggested the toy giant is not as concerned by 3D printing as some commentators have suggested. Mette Andersen, corporate counsel at Lego System (although talking in a personal capacity), said that, based on the current technology of 3D printing, Lego does not seen it as a threat. The key reason, she said, is that it can take upwards of three hours to print a single Lego-shaped brick. “There’s not much fun you can have with only one brick,” she quipped, although further admitted that there’s been numerous discussions at the company about both the opportunities and threats of 3D printing. One opportunity Andersen mentioned was the possibility of Lego selling official 3D printing blueprints. Another is of tolerating entities that create products that Lego itself cannot or does not. “Something that could be interesting, and something we see today, is special elements that we don’t make ourselves. For example, we don’t make military models – guns and so on – and that’s something we see on the market today. Another is customisation, such as different types of hair or leg that we don’t produce. We see that created now, such as a Texas company that fills in the gaps of items we don’t make and we acknowledge that could be interesting for consumers. As long as they do it fairly, we accept it.” We often hear the significant IP challenges of 3D printing – and indeed the session warned of many of those (and we’ve covered the topic widely before). But for Lego, it appears to be a subject that’s approached with hope as much as fear. (TJL)

Former INTA president makes diversity call – Also at INTA’s Brand Authenticity Conference, 2016 president Ronald van Tuijl, who is IP director at JT International, gave a passionate call for members to consider diversity when casting votes for candidates to INTA leadership positions and encourage colleagues to engage with committees. Referring to the new committee structure that was put in place this year, van Tuijl described it as “the most inclusive process you can think of, specifically from a regional perspective”, adding that the diversity aspect of INTA is “actually embedded and vital to the association’s policy”. However he added that, while he doesn’t believe there’s a specific problem, he does want to encourage members to consider diversity when nominating members for positions at the association. “As INTA has a desire to be as inclusive as possible, we need the nominations. Most of you will have people in their firms who may not be active in INTA and may benefit their careers or personal life to be active in the association. Reach out to people who could be the leaders of the future, and help make sure the diversity and inclusivity of the association will remain in place, and that one day we will have a president from Africa or Asia. So that’s my call; the next time the voting period opens up, I’ll ask you to vote with that in mind, and between then and now, if you have someone you think can contribute, make sure you reach out to them.” (TJL)

Domain name radar:

UDRP blow for Etsy - Etsy has lost a UDRP dispute seeking to recover the ‘esty.com’ domain. On Domain Name Wire, Andrew Allemann reports on that the case faced an uphill battle from outset as the owner of the domain, PortMedia Holdings, registered it four years before Etsy commences business. The site was parked and some traffic was sent to zero click landers with scams on them. In this case, the domain owner said it was unaware of the landers, with Allemann observing: “I suspect many domain owners aren’t aware of what parking companies are doing with their domain traffic. I urge all domain name owners to ask their parking providers if they serve zero click and if there’s an option to turn it off.” (TL)

Media watch:

Debate rages in Canada over plain packaging on legal cannabis – Advertising experts have weighed in on the ongoing debate in Canada over whether legal marijuana should be sold in plain packaging. Talking to Marijuana.com, one advertising executive, Terry O’Reilly, expressed surprise at the Canadian government looking to non-branded packaging for legal cannabis. “I know this is an ongoing process and the government has asked for feedback, but I hope that they get to a place where they will allow branding of the various products,” he said. “[Cannabis] really lends itself to some interesting branding, but I think the government’s worry, as it is with alcohol, is that branding has to be strictly regulated. The thing for me is, if you’re going to allow this product to be sold legally and to be used recreationally, I don’t quite understand why you wouldn’t allow it to advertise with regulations, and brand, within reason.” Another expert, author Faith Popcorn, took an even stronger stance against the government’s proposal. “I think it’s crazy, frankly. Without branding, cannabis is staying in the shadows, it makes it less understood [with] no differentiators for consumers.” The article is a reminder of the strong views on plain packaging beyond just the legal arguments. If plain packaging becomes standard for tobacco and cannabis products, the question is whether it will spread to other product sectors. (TJL)

Pepsico headache over viral lobster story – There will be groans at Pepsico headquarters this week with a widely covered story placing the famous Pepsi logo in a particularly compromising position. As reported by Sky News, a Canadian fishing crew found a lobster with a Pepsi logo “tattooed” onto its claw. The photo being used to illustrate the article is being used to draw attention to the problem of sea pollution. Somewhat ironically, Pepsico’s chief counsel of global trademarks, Joe Ferretti, is a speaker at INTA’s Berlin conference this week which focuses on corporate social responsibility – with the issue of plastic in the ocean a subject that has been raised more than once. He noted during his session that Pepsico is spending hundreds of millions of dollars to create more environmentally responsible products with the hope that Pepsico’s brands, 20 of which are worth over $1 billion, will be associated with ethical production. If the ‘Pepsi lobster’ becomes a symbol for plastic waste in the ocean, that task may become more difficult for arguably its most well-known brand. (TJL)

And finally…

There is less than one week to go until Brand Strategy China Last week we unveiled the speaking faculty for the second annual Brand Strategy China event, taking place in Shanghai on December 7. Amongst the confirmed speakers on our high level roster are senior industry leaders from adidas, Brita, Chanel, Ford, Honeywell, L Brands, NBC Universal, New Balance, Philips,  and Whirlpool Corporation. The full programme and speakers list is available here. Click here now to reserve your place at this innovative industry event - just a few remain available at the discounted rate of $695 (using code ONLINEEB). (TL)

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