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 Hasbro being granted a registered mark for the smell of Play-Doh, a Kenyan lawyer blasting proposed anti-counterfeiting legislation, a UK company obtaining a mark for BITCOIN, and media coverage of trademarks from China linked to Ivanka Trump. Coverage this time from Trevor Little (TL), Tim Lince (TJL), Adam Houldsworth (AH) and Timothy Au (TA).
Kogan faces CATCH AdWords suit – Online retailer Kogan is being accused of violating Australian Consumer Law and misleading consumers by fellow ecommerce organisation Catch Group, which claims its CATCH mark was used on Google AdWords links to attract visitors to Kogan’s ‘catchmobile.com.au’ website. In a statement made to the Australian federal court, the plaintiff also claimed that Kogan had recently registered several other domain names featuring its branding, including ‘catchinsurance.com.au’ and ‘catchloans.com.au’, and alleges that it is passing its platforms off as being affiliated with the Catch Group. Though more details are likely to emerge as the case progresses, it is a reminder that AdWord-related litigation continues to rumble on. (AH)
Hasbro registers the smell of Play-Doh – American multinational toy company Hasbro has been granted a registered trademark by the USPTO for a rare type of non-traditional mark: a smell, specifically of its iconic toy product Play-Doh. In a press release the company described the smell as “a unique scent formed through the combination of a sweet, slightly musky, vanilla fragrance, with slight overtones of cherry, combined with the natural smell of a salted, wheat-based dough”. Jonathan Berkowitz, senior vice president of global marketing for the Play-Doh brand labelled the smell “synonymous with childhood and fun” and that the registered mark will allow the company to “protect an invaluable point of connection between the brand and fans”. (TA)
UK company registers and enforces BITCOIN trademark – It has been reported that a UK company that obtained a registered trademark for the term “bitcoin” has sent a cease-and-desist letter to a small business owner selling bitcoin-themed shirts on Etsy. The letter requests that the seller stop selling and dealing with the goods in question, as well as any other products that refer to the BITCOIN mark, and notes that failure to do so within 14 days will lead to legal proceedings being brought against them. It is worth noting, though, that the filing is only registered under classes 25, 32 and 33, covering clothing, beers and other non-alcoholic beverages and alcoholic beverages. Unsurprisingly, the mark – and the fact it is being used to enforce against products – has caused outrage in some cryptocurrency communities. For example, the top-voted comment regarding the story on a Bitcoin community on Reddit claimed the applicant is “obviously someone with no morals and with pure greed”, while another argued that ‘Bitcoin’ should be “public domain”. (TA)
OnePlus in trademark tussle with Amazon over Dash Charge branding – Technology company OnePlus has reportedly dropped the Dash Charge brand, a term used for its fast-charging products, after a trademark challenge from Amazon. According to Android Police, OnePlus sought registered trademark protection for the term in the United States and the EU. The EUIPO denied its application in March following two oppositions, one of which was by Amazon. According to the opposition, Amazon claimed the Dash trademark is “in relation to its Dash Replenishment service, an API that allows developers to set up their internet-connected devices to automatically order items from Amazon”. It appears the phone company isn’t ditching the technology that is the bedrock of the Dash Charge brand. On the contrary, the company’s website in Canada refers to the charging cables as “Fast Charge” (although the UK store still references Dash Charge). So rather than hastily coming up with a new brand and logo, it appears the company may quietly drop the branding and reference its technology in generic terms. (TJL)
IP Australia unveils examiner tools – IP Australia has announced the rollout of a Smart Assessment Toolkit for examiners. The toolkit, which utilises advanced machine learning technology, contains a suite of decision-support tools that are intended to streamline the examination of trademark applications. The toolkit includes a smart search (which automatically compares new plain word trademark applications with earlier registered marks to produce a list of hits based on similarities of goods and services), word analysis (analysing a plain word trademark to identify and match problematic terms) and an ownership module that retrieves and analyses ownership information against other data such as the Australian Securities and Investments Commission. Patricia Kelly, director general, IP Australia, proclaimed: “This is a game changer for trademark examiners. We’re embracing advanced machine learning technology to provide leading-edge tools to our staff and improve our service to customers. This technology helps examiners focus on more complex and value-added tasks, allowing better use of our skilled staff and improved quality of administration.” (TL)
SnapDragon “Swoops” – Legal tech company SnapDragon has launched Swoop, an automated brand monitoring platform for designers, manufacturers and retailers. The Swoop software is aimed at companies of all sizes, the company stating that the marketplace policing service’s offering in SaaS (software as a service) format “gives all companies access to a world-class, robust, brand protection strategy”. The online brand protection services industry is a competitive one, and SnapDragon has clearly identified growth in the price-sensitive SME market as it seeks to increase its marketshare. (TL)
Corsearch unveils new partnerships at INTA’s annual meeting – Trademark clearance and protection service provider Corsearch has revealed two new partnerships, aimed at boosting its online brand protection offerings. Specifically, the organisation has struck cooperation deals with INCOPRO, an internet IP and brand protection company, and Key-Systems, a major domain name administrator. The former will see Corsearch offer a law firm edition of INCOPRO’s brand protection technology, while the Key-Systems Partnership will allow Corsearch to provide firms an interface to manage the domain portfolios of their clients. With the online space growing in importance from a brand enforcement point of view, Corsearch – like other service providers – is clearly seeking partners with specialist expertise and systems. (AH)
Media decries Ivanka Trump marks – There were reports over the weekend about trademarks linked to Ivanka Trump, daughter of the US president, that were approved a few days before Donald Trump confirmed that he was reversing policy related to Chinese telecom company ZTE. Some of the articles suggest a possible link between the approval of the marks and Donald Trump’s ZTE move, with the New York Times stating: “Coincidence? Well, probably. Still, the remarkable timing is raising familiar questions about the Trump family’s businesses and its patriarch’s status as commander in chief.” However, experts on the ground doubt there is any direct connection between trademarks owned by Ivanka Trump and the recent actions of the US president. For instance, some commentators have suggested the trademarks were approved more quickly than average – with some of the recently approved marks applied for in March 2017 (with a wait time of “up to 18 months” typical in China). But Laura Young, a trademark lawyer at Wang & Wang, told NY Magazine that quicker registration isn’t unusual for public figures. “When a person is famous, and the examiners say: ‘Oh, I’ve heard of this person,’ it can be decided more quickly than if the examiner is not sure and has to consult others or go to a committee,” Young said. While there are still arguably ethical questions around obtaining the trademarks (specifically around the blurring of Trump’s business and political roles), the suggestion of a direct link between the recent decisions and the ZTE about-face seem tenuous at best. (TJL)
Top Kenyan trademark lawyer blasts proposed anti-counterfeiting legislation – While remarking that Kenya has become “the Wimbledon Stadium for counterfeiters”, IP lawyer William Maema has voiced in a recent blog how he is unimpressed by the country’s proposed new anti-counterfeiting laws. The Statute Law (Miscellaneous Amendment) Bill 2018 – which, if passed, will amend Kenya’s 2008 Counterfeit Act – promises to rename the country’s Anti-Counterfeiting Agency to the Anti-Counterfeiting Authority. It also seeks to make it an offence to import any goods bearing a brand that have not been registered with the new authority. Maema describes the change of name “vainglorious” and comments that the proposed amendments will “hurt brand owners more than the counterfeiters it is seeking to rein in”. By creating another layer of brand registration, it would create additional costs for rights holders, and usurping the role of the Kenya Industrial Property Institute by “dilut(ing) the sanctity of trademark registration in Kenya”; he claims that the new requirement would provide a new defence for counterfeiters. (AH)
On the move:
Scott J Palmer joins forces with Perkins Coie – International law firm Perkins Coie has announced that Scott J Palmer has joined the IP practice at its Beijing office as a partner. Palmer joins the firm along with James Zimmerman, who will join the business practice. Both attorneys come on board from US law firm Sheppard Mullin and specialise in advising US companies in China. Palmer’s practice focuses on in-bound China IP enforcement matters, especially in relation to trademark, copyright, trade dress, patent and unfair competition matters involving IP. (TA)
New Global Head of Intellectual Property – Hogan Lovells has appointed Burkhart Goebel as the new global head of the firm's intellectual property practice. He takes over the role from Andreas von Falck (who has headed the practice since 2003 and will remain at the firm) on July 1 and commented: “The intellectual property of a global brand has never been more critical to business growth, innovation and survival; this is an exciting time to be leading the team and we are grateful to Andreas for his leadership, passion and commitment over the last 15 years." (TL)
Ward joins Thorntons – Scottish IP firm Thorntons has announced the hire of Corinne Ward as a solicitor in the firm’s intellectual property team. She joins from Dentons, and has extensive experience in IP dispute resolution, the commercialisation of IP and drafting contracts. She has also conducted corporate transactions, including the purchase of intellectual property. (TJL)
New free-to-view anti-counterfeiting guide – World Trademark Review is pleased to announce the publication of the 2018 edition of Anti-counterfeiting – A Global Guide, which provides trademark and brand protection professionals with critical guidance on anti-counterfeiting laws, procedures and strategies in key jurisdictions around the world. Now available to view online, this indispensable publication analyses the anti-counterfeiting frameworks in place in 21 jurisdictions, with two regional chapters identifying wider trends and best practices in the European Union and the Western Balkans. In addition, an industry insight section offers guidance on the creation of global anti-counterfeiting programmes, analysis of the liability of physical intermediaries and an exploration of best practice in working with online platform operators. There is also tailored strategic advice for those operating in the fashion and luxury sector. You an access the guide here.