USPTO director talks trademark clutter, Uber declares itself a verb, and beware sketchy Chinese licences: 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 our latest edition, we look at Ecuador joining TMClass, the Thai Supreme Court opening up the possibility of trademark family, Uruguay vowing to proceed with tobacco plain packaging, ICANN postponing its data privacy webinar, IP Australia undergoing a “technology upgrade”, and much more. Coverage this time from Trevor Little (TL), Tim Lince (TJL) and Adam Houldsworth (AH).

Market radar:

USPTO director talks trademark clutter and unauthorised practice plans – In his speech at the Intellectual Property Owners Association 46th Annual Meeting this week, USPTO director Andrei Iancu focused heavily on patent operations and policy. However, trademarks did get a look in, with Iancu confirming that the office is considering a new rule that “would require foreign trademark applicants and registrants to be represented by a US licensed attorney to file trademark documents with the USPTO”. The move – which was discussed in an op-ed on WTR in July – is being mulled over as a response to a 1,100% jump in trademark applications from China, which “has presented increased issues with the unauthorized practice of law from individuals outside the US”  He also noted that other options for decluttering the register are under consideration. (TL)

FDA releases compliance guidance on securing medicines supply chain – The US Food and Drug Administration (FDA) has unveiled two new documents to guide industry figures on how to secure medical supply chains. One advises on compliance with new product ID requirements under the Drug Supply Chain Security Act, while the other lays out the FDA’s policy on the so-called grandfathering of medicine packages introduced into the supply chain prior to the law’s deadline of 27 November 2018. It has also produced a draft Q&A document seeking to answer likely questions about the compulsory use of product identifiers under the legislation. “Given the breadth and complexity of the US drug supply chain and its continued expansion and diversification, we recognise the need to ensure greater accountability for manufacturers, repackagers and other intermediaries in the supply chain,” said FDA Commissioner Scott Gottlieb. Improving the traceability of drugs would help protect patients from exposure to counterfeit or contaminated medicines, he added. “The three guidances we are issuing to today will help bring us towards a more secure supply chain to help avoid these types of issues going forward.” (AH)

Uruguay vows to proceed with plain packaging despite suspension – The president of Uruguay, Tabare Vazquez, has vowed to “not back down” on tough anti-smoking policy, including the introduction of plain packaging on tobacco products. The vow comes after a recent judicial decision in the country suspended a presidential decree mandating plain tobacco packaging, according to Xinhau. British American Tobacco, who filed the motion, has claimed that it was “impossible” to implement plain packaging in the six-month period granted by the decree. The Uruguayan government appears to disagree, and has filed a motion to continue its anti-smoking policies. According to Vazquez, who is also a trained oncologist: “No tobacco company should think that this government is going to backtrack. Public health interests are above commercial interests.” (TJL)

Legal radar:

Sanitarium prevails in trademark dispute against British Weetabix – Australasian food company Sanitarium is celebrating after it won a trademark dispute against a New Zealand food exporting company. The dispute was over the sale of popular British breakfast product Weetabix, which Sanitarium argued infringes on its Weet-Bix trademark – the name of the near-identical (and equally popular) product that Weetabix is based on. For that reason, then, Sanitarium had a shipment of 360 Weetabix boxes stopped by New Zealand customs in 2017. As described by local outlet, the New Zealand High Court issued its decision today and ruled that the Weetabix product does infringe the Weetbix trademark and granted a conditional injunction. In it, the importer restricted the sale of British Weetabix to specialist UK product stores and ordered the packaging’s use of the word ‘Weetabix’ to be covered up. Furthermore, due to the seized Weetabix shipment now being past its use-by-date, the judge ordered the destruction of all 360 Weetabix boxes. In response to the decision, Sanitarium stated they were “pleased” with the outcome, while the importer said they are “happy” they can still sell the product (despite needing to cover up the label). It appears then, in this particular dispute, both parties have walked away somewhat satisfied… (TJL)

Beware the China licensing scam (which is not actually a scam) – An important piece on the China Law Blog has warned companies against being enticed by licensing deals that could result in the loss of IP control. Dan Harris reports a number of instances where clients – usually smaller companies not yet active in the Chinese market– have been approached and offered a ‘no risk’ deal in which the licensee will handle market expansion and marketing. However, while in traditional deals the licensor creates the contract, in these instances the licensee offers a long, well-written contract that – on closer inspection – “ridiculously favours the Chinese company”. He expands: “One would have given the Chinese company exclusive and perpetual worldwide rights to the licensor’s IP and product for just 10 percent of sales proceeds no matter how the Chinese licensee company did with sales. In other words, once the agreement is signed, the foreign licensor no longer has any real rights left in its IP or its product and even if the Chinese company does not make a single sale (or even try to make a single sale), the foreign company cannot terminate the contract.” The one-sided deals are not technically scams, Harris noting that there is no fraud at play here. However, he concludes: “Scam or no scam, these horrifically lopsided China licensing agreements that have been springing up of late highlight the complexity of cross-border licensing and the need for professional help before signing any China contract.” (TL)

Thai Supreme Court “opens up possibility” of trademark family – In a blog post from Tilleke & Gibbins, it has been reported that a recent Supreme Court judgment in Thailand has, for the first time, “opened the possibility of allowing a trademark owner to claim exclusive rights over the common elements of such a family of marks in Thailand for the first time”. Specifically, Valentino’s group of marks – many of which are pictured in the blog – have been recognised by consumers for the “common characteristic word ‘Valentino’ as well as device marks and other composite marks”. This means, then, that a third party could infringe on Valentino’s rights by being similar “based on the trademark family principle”. According to the post: “This is the first lawsuit in which Thailand’s Supreme Court has explicitly accepted the concept of ‘trademark family’ – and this new approach brings about considerable benefit to traders seeking to develop their trademarks”. (TJL)

Registry radar:

IP Australia to undergo “large technology upgrade” on digital trademark systems – A new blog post from IP Australia has revealed that the registry will undergo “a large technology upgrade for trademarks” in mid-November. While most of the changes will be on internal systems, according to the blog, there will be changes that will affect users. For example, the time between submitting a new trademark application  and receiving the notice of filing will significantly improve to less than 24 hours, while attorney codes will no longer be required. Furthermore, the Australian trademark search system will launch a new version will will “modernise to meet the requirements for future data management and tools”. Some of the changes include improved trademark statuses, history information, and additional dates being provided. Finally, the eServices menu for trademarks will be improved to improve navigation. (TJL)

Bulgarian registry improves digital trademark and design offering – The Bulgarian Patent Office, in collaboration with the EUIPO, has announced that it has launched a new, improved version of its IP digital front office. In what it describes as “a major technological modernization of the existing electronic services for the registration of trademarks and designs”, the registry now offers six new e-services related to brands (including the ability to change brand representative and correspondence address). The full list of changes can be viewed here. (TJL)

Ecuador joins TMClass – The EUIPO has announced that Ecuador’s National Service of Intellectual Rights (SENADI) will join TMClass, the tool that allows users to search for trademark goods and services. This brings the total number of national and regional registries involved in the tool to 72. According to the press release, “the integration of SENADI in TMclass is a result of the IP Key Latin America programme directed by the European Commission and executed by the EUIPO”. (TJL)

Domain name radar:

ICANN postpones data privacy webinar – At a time when all eyes are on efforts to develop a GDPR compliant approach to the treatment of WHOIS data, the clamour for up to date information is intense. This week, however, ICANN has announced the postponement of a planned webinar that was due to provide an update on data protection and privacy on 26 September. The organisation stated: “ICANN is taking this step to allow for the community to continue its focused discussions planned for this week, including the Expedited Policy Development Process' scheduled face-to-face meeting in Los Angeles the week of 24 September.” As we reported last week, those efforts are moving slowly so perhaps the postponement should not be a surprise. Whether this week’s meetings provide a breakthrough remains to be seen. (TL)

Media watch:

Uber declares itself a verb – Earlier this month, Uber CEO Dara Khosrowshahi declared that his company’s name has become a verb, indicating the act of taking a ride-sharing taxi. Celebrating this, he said “very few brands become verbs; for Uber to have achieved this shows how we’ve captured imaginations and become an important part of our customers’ lives”. But, as The Fashion Law points out, this development is dangerous from a trademark perspective. The use of a mark to identify products or services other than those offered by the trademark owners can lead to the loss of the IP right’s use as a source-identifying agent, and therefore its ‘genericide’. So, the blog notes, brands are usually at pains to counter the broader use of their marks as verbs or adjectives, especially given how they have to lose if their rights become unprotectable or unenforceable. A prime example of this approach is that adopted by Chanel, which has periodically run magazine advertisements encouraging people not to use its trademarks in a descriptive manner. However, The Fashion Law suggests, Uber’s approach may reflect its more nuanced understanding of genericide, which (according to a US Ninth Circuit Court of Appeals’ May 2017 judgment) also requires consumers to forget that a term represents a particular brand. The use of trademarks as nouns, adjectives or verbs, the court said, was not itself evidence that consumers have no brand in mind when doing so. (AH)

Professor speaks out on cultural theft – Over the past week, social media users have been up in arms over a US kava bar’s registration of the BULA mark (‘Bula’, which translates to ‘life’, being a common form of greeting in Fiji) – with one Facebook user proclaiming: “I believe this whole debacle also speaks to a broader issue of entitlement that white people have over indigenous cultures and the selective way they pick and choose when they want to exploit our culture and intellectual property.” Reflecting on this, The Fiji Times reports on comments made by Tongan professor Tēvita ‘Ō Ka’ili, who warned Pacific countries of what he has described as a clear pattern of cultural theft and predicted that Tongan greeting Mālō E Lelei could be a future target. Whether that comes to pass remains to be seen but potential applicants can expect a similar backlash should they move to register the term. (TL)

University enforcement efforts under scrutiny – Over on IP Watchdog, Steve Brachmann has authored a piece looking at the wave of recent media reports focused on colleges and universities engaging in trademark enforcement campaigns to protect either logos or standard character marks registered by academic institutions. Brachmann writes: “This activity has drawn a lot of attention and some commentators have gone so far as to decry these actions as ‘trademark bullying’ carried out by powerful university interests and detrimental to the prospects of small businesses.” However, quoting Josh Gerben of Gerben Law Firm, he notes that not every trademark enforcement campaign by a university constitutes bullying. Additionally, his piece notes that, “while recent news articles on university trademark enforcement paint the issue as one that has been rising in recent months, Gerben said that university trademark policing has always been at a relatively high level”. We wrote an opinion piece about this same phenomena earlier this month, making the point that the bullying narrative is an easy one for the media to buy into, which can lead to the misperception that an industry is over-reaching. For those in the spotlight, though, the reality is that such articles are here to stay, meaning that enforcement efforts need to pass both legal and perception considerations before being launched. (TL)

And finally…

Your free trademark toolkit – WTR is please to announce that the 11th edition of the World Trademark Review Yearbook is now available to view online. Firmly established as an essential guide to trademark law, the free-to-view publication provides legal professionals worldwide with a simple, easy-to use digest of the structure of trademark regulation in key jurisdictions across the globe. In this latest edition we present in-depth analysis of trademark law in 23 key jurisdictions, as well as regional focuses exploring the strategic considerations when protecting and enforcing brands in Latin America and assessing the key decisions from the US federal courts in 2017. Elsewhere, we also feature an examination of social media trends and threats, consideration of registration issues surrounding works of art in the public domain and eight strategic tips for managing a global trademark portfolio. You can access the guide here

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