Unilever sells tea brands for $5 billion; Zeeger Vink elected 2022 INTA president; OBS Project and Streamlabs dispute – news digest

Every Tuesday and Friday, WTR presents a round-up of news, developments and insights from across the trademark sphere. In our latest round-up, we look at Burberry winning $138,000 in attorney fees from Burberry Jesus, Authentic Brands Group no longer seeking an initial public offering, a new study revealing $68.9 billion of retail theft, and much more. Coverage this time from Victoria Arnold (VA), Bridget Diakun (BD), Tim Lince (TJL) and Trevor Little (TL).

Market radar:

INTA elects Zeeger Vink as 2022 president – Zeeger Vink has been elected 2022 INTA president and chair of its board of directors, the association has announced. Vink is IP director at MF Brands Group, where he oversees the brands’ global IP function and leads the team responsible for all prosecution, clearance and enforcement work. His one-year term as INTA president will begin on 1 January 2022, as the association begins to implement its 2022-2025 Strategic Plan. INTA CEO Etienne Sanz de Acedo noted: “In addition to his vast experience working with global brands, Zeeger brings a strong interest in the creation and protection of IP as a commercial asset – an area that is of increasing and critical importance. No doubt, this will prove invaluable during the first year of the 2022-2025 Strategic Plan. We are fortunate to have Zeeger leading INTA as we begin a new chapter for our Association and community.” Before joining MF Brands Group in 2010, Vink was in-house counsel at L'Oréal in France. He started his career as an attorney, practising in the Netherlands and the United Kingdom. (TL)

Authentic Brands Group no longer seeking initial public offering – Brand management firm Authentic Brands Group (ABG) has shelved its plans for an initial public offering (IPO) and is instead looking to sell significant equity stakes in its business to private equity firm CVC Capital, hedge fund HPS Investment Partners and other existing stakeholders in a deal valued at roughly $12.7 billion, reports CNBC. ABG first announced its intentions of a US listing in July 2021. At the time, WTR examined the company’s Securities and Exchange Commission paperwork and trademark strategy to provide a rare glimpse into the operations of an exclusive licensing and brand management business. ABG CEO Jamie Salter now says that the company will target an IPO date in 2023 or 2024. “The IPO climate is ridiculous,” said Salter in an interview. “I think we would have gotten a massive valuation… maybe even more than what we sold the business for. But guess what? I’d rather be private.” ABG, which owns Barneys and Sports Illustrated, will continue its acquisition playbook. According to Salter, more purchases will be announced by the end of the year. (BD)

Study reveals $68.9 billion of retail theft – A study by the Retail Industry Leaders Association (RILA) and the Buy Safe America Coalition has revealed the level of theft occurring in retail stores across the United States. The study, which draws on data supplied by retailers, found that as much as $68.9 billion worth of products were stolen from retailers in 2019 (ie, before the covid-19 pandemic).  Additionally, nearly 67% of asset protection managers at leading retailers reported a moderate to considerable increase in organised retail crime, which 80% believe will only get worse in future. RILA has highlighted the findings as part of its efforts to encourage legislation to tackle seller anonymity online. “Organised retail crime is more than petty shoplifting, and the economic impact has become alarming,” stated Michael Hanson, senior executive vice president of public affairs. “Professional thieves and organized criminal rings are building a business model by stealing and reselling products, increasingly online through marketplace platforms like Amazon or Facebook. The lack of transparency online has made it easy to hide behind a screen name and fake business information to peddle stolen products. Washington needs to establish a base level of transparency on e-commerce platforms to make it harder for criminal enterprises to operate in the shadows of the internet.” Steve Francis, executive associate director at Homeland Security Investigations, reflected on the report: “Organised retail crime is leading to more brazen and more violent attacks in retail stores throughout the country. Many of the criminal rings orchestrating these thefts are also involved in other serious criminal activity such as human trafficking, narcotics trafficking, weapon trafficking, and more. Tackling this growing threat is important to the safety of store employees, customers, and communities across the country." (TL)

Agencies team up to warn consumers over fakes – The US Chamber of Commerce and US Customs and Border Protection (CBP) have teamed up to launch the Shop Smart campaign, aimed at protecting consumers and businesses from counterfeit goods during the holiday season. The campaign offers information on identifying fake goods and encourages consumers to report suspected counterfeits via CBP’s e-Allegations Online Reporting System or by calling 1-800-BE-ALERT. Awareness raising is key, and the two organisations are offering guidance on how consumers can avoid falling for scams. “Education is one of the best tools we have in the fight against fakes,” said Tom Quaadman, executive vice president at the US Chamber of Commerce. “You can learn how to avoid counterfeit goods and help teach your friends, family, and colleagues to do the same. That’s why we are sharing our top 10 tips to shop smart to protect consumers and businesses from counterfeit goods.” (TL)

INTA President’s Award winners unveiled –  INTA has announced the recipients of this year’s President’s Award to be Pravin Anand, managing partner of Anand and Anand Advocates, and Iris Quadrio, a partner at Marval, O’Farrell & Mairal. The award is bestowed on the most distinguished INTA volunteers for a career dedicated to trademarks and IP protection and advancement, as well as contributions that have advanced INTA’s mission and made a lasting impact on the association.  Anand has been a dedicated INTA volunteer for decades, serving on multiple committees, project teams and task forces, as well as INTA’s board of directors from 2006 to 2008. Anand’s accomplishments include several landmark IP cases, which have maintained the protection of creatives and led to the extensive growth of India’s IP jurisprudence. Quadrio has been practising as a partner at the largest firm in Argentina since 1998. She has extensive experience in trademarks, trade dress, copyright and other IP issues, and also served on the board of directors from 2006 to 2008. During her two decades as an INTA volunteer, Quadrio has been awarded both the Volunteer Service Award for the Advancement of the Association and the Volunteer Service Award for Advancement of Committee or Subcommittee Objectives. She has served as chair of the International Amicus Committee and the Treaty Analysis Committee, and as vice chair of the Leadership Development Committee, among other roles. She is currently a member of the Non-traditional Marks Committee, the Programming Advisory Council and the 2021 Presidential Task Force on Diversity, Equity and Inclusion. (TL)

Ireland transposes EU Copyright Directive five months after deadline – The Irish government has signed the EU Copyright in the Digital Single Market Directive into law five months after the 7 June deadline set by the European Commission. The government says that the directive will strengthen the rights of authors, performers and other creators and make Irish copyright law “fit for purpose in a digital age”. The European Commission sent Ireland a letter of formal notice in July, seeking an explanation as to why it had not transposed the directive into law ahead of the June deadline. Tánaiste and Minister for Enterprise, Trade and Employment Leo Varadkar said that the law needed to “catch up” with the fact that the Internet has changed how people create and consume media content. Transposing the Copyright Directive into law is “part of a broader discussion” being held on the future of Irish media, Varadkar said. In 2020 the government set up the Future of Media Commission, an independent body established to examine the future financing of public service broadcasting and the challenges facing the Irish sector amid increasing global competition. “We look forward to acting on the recommendations from the Future of Media Commission. I hope that the transposition of this directive and the updating of our copyright laws is a useful and positive first step,”  Varadkar said. (VA)

Brand radar:

Unilever sells tea business for $5 billion – CVC Capital Partners has agreed to purchase Unilever’s global tea business for $5.1 billion. The business unit, Ekaterra, owns a portfolio of 34 tea brands including Lipton, PG Tips, Pukka Herbs and TAZO. Unilever will retain its India and Indonesia tea operations, says Reuters, as well as its bottled tea joint venture with PepsiCo. The sale concludes a two-year process of reviewing and spinning off the division. (BD)

My 1st Years partners with Peter Rabbit – My 1st Years has teamed up with the World of Peter Rabbit to develop a direct-to-retail range, reports License Global. The deal was executed by Penguin Ventures on behalf of Frederick Warne & Co, owner of the World of Peter Rabbit brand and part of Penguin Random House. This is the first time My 1st Years has worked directly with a licensor on development. “Our direct-to-retail for print on-demand and personalised products with My 1st Years is not only a fantastic addition to The World of Peter Rabbit licensing family, but will provide gifters with a great opportunity to purchase something truly unique for even the littlest of Peter Rabbit rams this Christmas,” said Susan Bolsover, global licensing and consumer products director at Penguin Ventures. “We are proud to support an incredibly entrepreneurial and homegrown business whose extensive experience in the UK baby and infant market means Peter Rabbit is in great hands.” Amy Weaver, head of buying at My 1st Years, commented: “We have been delighted with the response to the Peter Rabbit licensed products that we currently personalise and so decided to grow the range by developing our very own licensed products. As newcomers to the world of licensing, My 1st Years is thrilled to be working with Penguin Ventures on a brand as established and as well-loved as Peter Rabbit. We can’t wait to share the new range which is designed and personalised at our UK studio in Northampton in time for customers this Christmas!” (BD)

Legal radar:

Burberry wins $138,000 in attorney fees from Burberry Jesus – UK fashion company Burberry has been issued almost $138,000 in attorney fees after a default judgment earlier this year found that rapper Marvel Yarbrough’s Burberry Jesus persona infringed its famous BURBERRY trademarks and copyright. Burberry claimed that Yarbrough had gone to “great lengths to create a Burberry-dependent persona”, including using its logo on artwork and wrapping cars in its copyright-protected check design. Burberry claimed to have undertaken “extensive efforts” to resolve the dispute amicably but determined that Yarbrough had "no intention" of complying with its requests. The US District Court for the Northern District of Illinois has now awarded the fashion brand $137,000 in attorney fees and $645 in costs, with small reductions for attorney time spent on administrative tasks and annual registration with the Illinois bar. (VA)

OBS Project and Streamlabs in bitter trademark dispute – The social media account of the OBS Project, a free and open source software for video recording, has accused streaming platform Streamlabs (which was acquired by Logitech in 2019) of copying its name and using its trademark. OBS Project claims in a Twitter thread that Streamlabs reached out to the company to use the OBS name for a new product. OBS Project states that it “kindly asked them not to”, but “they did so anyway [with its product Streamlabs OBS] and followed up by filing a trademark”. OBS Project therefore claims that it has “tried to sort this out in private and they have been uncooperative at every turn”. In further comments, OBS claims: “We’re often faced with confused users and even companies who do not understand the difference between the two apps. Support volunteers are sometimes met with angry users demanding refunds. We've had interactions with several companies who did not realize our apps were separate. Despite these actions by Streamlabs, the OBS Project will continue to provide free, open software and tools for everybody.” Streamlabs has responded, stating that it is “taking immediate action to remove OBS from our name” and “takes responsibility for our actions and will support the community”. The dispute has gone viral on Reddit with more than 25,000 up-votes and 1,200 comments. Many users state that they were confused as they presumed that the two organisations were cooperating on the product. “This Reddit thread is proving how confusing this whole name usage is,” one highly up-voted comment states. “I think a lot of us thought it was a partnership.” (TJL)

Office radar:

(For the latest coronavirus-related updates from national IP offices, please read our dedicated article, which is being continuously updated.)

US Copyright Office extends public comment period for initiating CCB proceedings – The US Copyright Office has expanded the public comment period for submitting written comments on a wide range of proceedings governing the initial stages of small claims (ie, claims seeking no more than $30,000 in total relief) brought before the Copyright Claims Board (CCB). The public comment period has now been expanded to 30 November for initial comments and 15 December for reply moments, according to a notice of proposed rulemaking issued in the Federal Register. The CCB was established in December 2020 as a voluntary alternative to federal court for copyright disputes. (VA)

Law firm radar:

Rouse retains IP industry veteran to work with data offering – Rouse has retained the services of Flavio Mascetti to further develop and promote its enforcement data solution CHORUS, the firm has announced. CHORUS provides data for brand protection teams to utilise in their enforcement programmes. Mascetti was lead adviser in the Richemont anti-counterfeiting team for more than a decade. “We are delighted that Flavio is going to be working with us,” said Nick Redfearn, who leads Rouse’s global enforcement team and the initiative that develops technology solutions within Rouse. “He has invaluable in-house anti-counterfeiting experience and is very well respected in the IP industry. We are looking forward to learning from him.” (TL)

Steptoe & Johnson unveils promotion class – Steptoe & Johnson has announced a promotions class comprising 16 lawyers effective 1 January 2022. In the IP field, Washington’s Kate Cappaert has been promoted to partner. Her practice helps clients to navigate all aspects of IP disputes, from pre-suit analysis and due diligence to fact and expert discovery, claim construction hearings and trial.  Also based in Washington, Hui Shen has been elevated to of counsel. Shen represents technology companies in complex IP disputes involving trade secret misappropriation and patent and copyright infringement. In congratulating the promoted lawyers, Steptoe chair Phil West commented: "For the third consecutive year, we have promoted a large and diverse class, reflecting the strong growth of our firm, our deep and rich talent base, our expanding practices, and our deep appreciation for the work Steptoe lawyers perform every day. Congratulations to an extraordinary group of lawyers. We are honored by your contributions to the firm.” (TL)

And finally...

WTR’s latest Special Report explores how to manage the brand balance sheet – The ability to measure and record brand value is crucial for a host of business reasons: to gain a 360-degree insight into an enterprise’s worth; to measure a company’s health or product offerings; to calculate licensing royalties; to determine potential reputational hits and damages in dispute scenarios; to underpin M&A decision making. The list goes on. WTR’s latest Special Report takes a deep dive into brand valuation, the reporting of intangibles and strategic best practice for brand leaders. As well as tracking recent developments in the industry and presenting a guide to the fundamentals of valuation practice, we focus in on key trends, the companies that own the most valuable brands and their financial performance. In addition, we present a rundown of the most valuable brand acquisitions since 2000. WTR subscribers can access “Managing the brand balance sheet” here.

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