USPTO unveils pilot programme, Nike logo implicated in Paradise Papers leak and EUIPO grants BREXIT trademark: 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 a new pilot program launched by the US Patent & Trademark Office, an IP attorney seeking to be Virginia’s next governor, the launch of the world’s first automated trademark assistant, and how Nike’s ‘swoosh’ logo has been implicated in this week’s Paradise Papers leak. Coverage this time from Trevor Little (TL), Tim Lince (TJL), Adam Houldsworth (AH) and Timothy Au (TA).

Legal Radar:

USPTO pilot program unveiled – The USPTO has announced it is launching a two-year Diversion Pilot Program for patent and trademark practitioners. Implemented by the Office of Enrolment and Discipline (OED), the program offers practitioners who engaged in minor misconduct the opportunity to avoid formal discipline by implementing specific remedial measures. The pilot will specifically be available to practitioners whose physical, mental, or emotional health issues (including substance or alcohol abuse) or law practice management issues resulted in minor misconduct and little, if any, harm to a client. In appropriate cases, a practitioner will be offered the opportunity to enter into a diversion agreement with the OED Director, which will require the practitioner to take affirmative steps to rectify the issue which led to the minor misconduct. (TL)

China’s Vice Premier says more must be done in IPR infringement fight – Chinese vice premier Wang Yang said this week that China must make more headway against counterfeit goods and the infringement of IP rights. He went on to say that this is a necessary step to improve the quality of life for people in the country through a modern economy and innovative country, and that, though progress has been made, there remains much to be done. He highlighted the need for regulation of major websites – and the implementation of a system that integrates both online and offline regulation – as well as the need for greater cooperation among regions in China with a focus on information sharing. China’s Ministry of Commerce delivered the same sentiments last month when it announced the beginning of an IP infringement crackdown campaign. (TA)

Increasing number of Indian products receive GI rights – Seven new products have been successfully registered as geographical indications (GIs) in India this year, the New Indian Express reports. The new indications include Banaganapalle mangoes of Andhra Pradesh and Tulapanji rice of West Bengal. As many as 33 GIs were granted in the period 2016-2017, and products that already enjoyed such protection were Darjeeling tea and Nagpur oranges. Interestingly, the country’s Ministry for Commerce and Industry has also launched a competition for designing a common logo and tagline for GI rights in order to promote a greater awareness of this type of IP rights. (AH)

EU trademark granted for BREXIT – A UK-based beverage company is celebrating after being awarded an EU trademark for the term BREXIT. The EUIPO’s Board of Appeal disagreed with an examiner that claimed a trademark for the term BREXIT could not be granted because it is descriptive so “could not function as a trademark clearly indicating the origin of the goods concerned”. Specifically, the Board of Appeal said the word Brexit has no moral connotations, and that the registration of a trademark for that term could not be prevented just because the idea might offend a certain proportion of the public. Indeed, we spoke with another applicant last year who had also secured registered trademark rights in the term, but this time in the UK. Talking just prior to the vote, the applicant said he filed for it “to protect the referendum debate so it couldn't be stifled by someone else potentially registering the term and having an agenda in their enforcement of it” – and admitted he may use it commercially depending on the result of the referendum. Over a year on, the term is one of the most widely used (and divisive) political words in modern history. Clearly some parties are seeing commercial opportunities in that ubiquity. (TJL)

Trademark dispute brews over Mamelodi beer – Two South African breweries are locked in a dispute over the use of the MAMELODI trademark for beer brands. Mamelodi is the name of a township on the outskirts of Pretoria, and both parties in the dispute are local brewers selling beers named after the area. Each claims an exclusive right to the mark. Vusi Beauchamp, owner of Gauteng Breweries, claims to have registered MAMELODI STRONG BEER with the Department of Trade and Industry, while Melusi Hlempu, who sells Mamelodi Lager, says he checked his idea with the Companies and Intellectual Property Commission. Beauchamp is reported to have said that the similarity was “too much of a coincidence”, whereas Hlempu stated that the ideas were not very similar, though he had not time to look into the matter. The dispute seems to have resulted from a confusion over the nature of South African trademark law, which does not – for the most part – allow for exclusive rights to the name of an area. Perhaps, then, it is a reminder of the need for IP knowledge to be more widely disseminated among small and medium businesses. (AH)

Lego comments on being recognised as ‘well-known’ in China – The Lego Group has issued a press release commenting on the Beijing Higher Court ruling in July that the Lego logo and name in Chinese are well-known trademarks in China. The company’s vice president of legal affairs, Peter Thorslund Kjær, said that the ruling “is very important” as it “reflects the significant effort and investment put into marketing the LEGO brand and products towards the Chinese consumers”, adding: “We see this as a recognition of our status in China as a known and loved brand by parents and children, and we appreciate the support from the Chinese government and authorities to ensure the continued protection of millions of Chinese consumers as well as our unique trademark and logo. We are now in a better legal position acting against infringement of LEGO trademarks and defending our trademark portfolio.” In an analysis on an interconnected brick toys blog, the author suggests the move will not speed up the demise of Chinese clone Lepin – and is sceptical that the two brands are actually similar. With both manufacturing similar goods and having logos with a red background and bold white text, I’m sure some readers will disagree… (TJL)

IP attorney seeks US governor seat – According to The Gazette-Virginian, a trademark expert is seeking to be governor of the US state of Virginia. Clifford D. Hyra is running as the Libertarian candidate, and this is his first endeavour into the political realm. He is currently a partner at Symbus Law Group, and focuses on domestic and international trademark prosecution, opinions, appeals and enforcement. Prior to Symbus, he started his own IP law practice, Hyra IP, and he is a current member of the International Trademark Association (INTA). On his campaign website, Hyra promises his governorship will involve “innovating”, with promises to fully legalise marijuana and to implement extensive criminal justice reform. It appears he has also been ruffling feathers; last week he called on the other candidates in the governor race – Republican Ed Gillespie and Democrat Ralph S. Northam – to “grow up” (update: Northam won the race for governor, with Hyra receiving 30,240 votes (1.2%)). (TJL)

IP services company achieves ISO 27001 certification – IP management and analytics software company Anaqua has attained ISO 27001 certification, the international standard for measures information security management systems. The company had to demonstrate a systematic and ongoing approach to managing sensitive company and customer information in order to qualify for certification. In July we reported on the announcement that Anaqua and Lecorpio were to merge, with Anaqua CEO Bob Romeo telling World Trademark Review about how the combined company will “provide something that has never before been done in our space”. Reflecting on the security certification, Romeo contends: “This security endorsement is a major milestone for our company as it assures our customers across the globe that we can protect the confidentiality, integrity and availability of their most coveted information assets.” In an increasingly competitive marketplace, the company is also betting on it proving a compelling benefit to existing and prospective customers. (TL)

Robots could cause job plunge in legal sector – According to a new report from the Law Society, the body that represents solicitors in England and Wales, there could be a steep decline in legal sector jobs due to the increased use of artificial intelligence. It is estimated that, by 2038, the number of legal sector jobs could be 20% lower than what it would be “if the profession was not embracing automation”, suggests an article in The Times. That translates to around 67,000 full-time jobs, although the decline “will be partially offset by a continuing increase in demand for services”. The report was released on the same day that UK legal technology company LawPanel launched Aila, dubbed “the world's first automated trademark assistant”. The company claims to use “ground-breaking artificial intelligence” to offer IP advice – including running trademark searches – in a chat room setting. Indeed, we gave Aila a try and while the search function is only limited to the EUIPO, USPTO and UKIPO, it appears to work effectively (and, like with Apple’s similar Siri software, it has charming Easter egg responses too – asking Aila for the meaning of life, for example, elicits the response “ask a philosopher, I’m on a schedule here”). Whether these AI-driven trademark tools will take-off in any significant way, though, remains to be seen. (TJL)

Market radar:

A fake bottle of the world’s most expensive scotch – It has been reported that Zhang Wei, a Chinese author from Beijing, was reimbursed after spending roughly $10,500 for a shot of the world’s most expensive scotch – after it turned out to be fake. The bottle was sold in a hotel in Switzerland and was supposed to be an 1878 Macallan single-malt whisky, which would have been valued at 330,000 Swiss francs, but suspicions were raised when experts examined the bottle’s label. Further analysis suggested the spirit is very likely to have been created between 1970 and 1972. The hotel manager stated that he was unaware the bottle was a fake and that it was purchased by his father, the previous manager of the hotel, 25 years ago. Even the rarest and most expensive alcohols, it seems, are susceptible to the rampant and dangerous counterfeiting of food and beverages. (TA)

Media watch:

Nike logo implicated in Paradise Papers leak – A number of high profile corporations and public figures are being accused of shifting profits and business assets into tax havens. In what is being claimed as the “biggest ever leak of secret documents”, the so-called Paradise Papers amounts to 13.4 million emails, bank statements, court documents and client records that reveal the financial strategies of various political, celebrity and business figures. One of those focused on is Nike, with Australia’s Four Corners programme looking at how the rights to Nike’s well-known ‘swoosh’ logo and shoe designs were held in companies registered in low tax Bermuda. With more leaks set to be revealed in future days and weeks, there’s a suggestion more intangible models could be in the spotlight, with the International Consortium of Investigative Journalists stating that the leaks will “show how big corporations cut their taxes by creating offshore shell companies to hold intangible assets such as the design of Nike’s 'Swoosh' logo and the creative rights to silicone breast implants”. One thing is clear – IP rights being held in holding companies is increasingly common (indeed, we’ve written about it in the magazine before), so rights holders should brace for further exposure. (TJL)

Delving into nation brandingThe Guardian published a feature-length article today on “the booming business of nation branding”, and it’s full of interesting insights about how “these days countries have to perform as if they were nothing much more than products in a marketplace". It looks at how countries and cities are using strategies similar to how corporate brands shape their identity through logos, slogans and visuals; for example, New York’s “I ❤ NY” slogan is known across the world, so too is Las Vegas tagline “What happens here, stays here”. While these strategies are implemented in a bid to change perceptions or increase foreign investment or tourism, we’ve written before about how nation brands can also be inextricably linked to corporate brands: “A nation’s core values and a strong reputation for particular industries are often by association extended to the brands originating in the country – Swiss watches and Italian fashion brands, for example, retain a certain cachet and desirability, enabling a premium to be attached to them.” However, the Guardian article suggests that most nation branding exercises are more likely to fail than those of corporate or product brands. “The calculations of politics enter into it, or a newly elected government rolls back its predecessor’s ideas, or the venture relies on superficial advertising,” the article states. “Citizens may not feel a connection to a campaign, or may even rebel against it.” Nonetheless, the concept of ‘nation branding’ is becoming increasingly popular, and this could mean opportunities for trademark practitioners. “The eagerness to hire brand experts is, in a way, a reaction to [a] perceived threat of irrelevance – an attempt by nations and regions to regroup, to define themselves anew. An attempt to insist that they still matter.” (TJL)

On the move:

Dennemeyer & Associates welcomes new IP partners – Senior IP professionals Steven Shape and Lauren Stevens – with over 30 and 25 years of experience in IP law respectively – have joined the Chicago office of global IP law firm Dennemeyer & Associates. Both practitioners are principally focused on patent work, but Shape has significant experience handling both trademark prosecution and Lanham Act claims. He will also be serving as the managing partner of the office. (TA)

And finally…

WTR 1000 2018 rankings released to subscribers this week – Subscribers to World Trademark Review will receive exclusive early access to the 2018 rankings tables for the World Trademark Review 1000 – The World’s Leading Trademark Professionals later this week. The release is part of a number of changes being made to enhance the value of our offering to subscribers. In addition to increased intelligence moving to the subscriber area, our recently expanded editorial team will be delivering unique new data and research reports that will explore the key trademark trends, concerns and players in specific industries and jurisdictions. To view this brand new material, current subscribers don’t need to do anything, however non-subscribers will lose access to some content once the first changes take place and will not have automatic access to the new material on offer. Details on how to become a full subscriber – and benefit from unrestricted access to the latest market intelligence, legal analysis and cutting-edge insight – are available here. (TL)

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