23 Feb
2018

Brexit update, plain packaging begins in Ireland, and first trademark ruling in Barbados: 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 the latest Brexit developments from a trademark perspective, news on another solicitation scam, Hershey’s hawkish eye over the marijuana industry, and the result from the first ever trademark dispute in Barbados. Coverage this time from Trevor Little (TL), Tim Lince (TJL), Adam Houldsworth (AH) and Timothy Au (TA).

Legal Radar:

A Brexit update – In the same week that the UK’s prime minister and senior cabinet members huddled down at Chequers to hammer out a vision for the country’s post-Brexit relationship with the European Union, the government published its approach to the legal text of the implementation period to be provided for in the withdrawal agreement. Much of the media coverage has focused on the line stating that the transition period should last as long as it takes to “prepare and implement the new processes and new systems”. So what does this mean for the trademark owners? We asked Lee Curtis, a trademark attorney at UK IP firm HGF, who told us: “Although this is a discussion paper by the UK government on their broad stance on the transition agreement, and obviously agreement has not been reached, broadly it appears that the UK government envisages EU IP regulations applying to the UK in the transition period and this would include the European Union trademark and design regulations, as these provisions do not appear to be one the excluded provisions of so-called ‘Union law’’. The paper defines the transition period as lasting as long as it needs to ‘prepare and implement the new processes and new systems’. The UK government seems to be denying in the press this means that the length of the transition period is undefined and could last more than two years, but presumably this stance provides for that possibility.” (TL)

Mixed decision for blockbuster studios in major IP tussle – It has been reported that a copyright claim against Disney, Fox and Paramount in a high-profile IP dispute concerning the ownership of CG characters has been rejected – but claims for patent and trademark infringement will move forward. The lawsuit was filed last year by Rearden, the company that owns MOVA, a motion-capture technology program that has been used in a number of blockbuster films. It had claimed the technology was stolen by a Chinese firm and successfully won an injunction against the firm last year – it has since moved on to target customers of the firm, including Disney, Fox and Paramount, in a far-reaching IP suit. This week, a judge has rejected Rearden’s argument on copyright grounds that a program’s output can be owned by the programmer instead of the user if the software does the “lion’s share” of the work. However, the studios have failed to shake off claims that they have violated Rearden’s patent and trademark rights. With respect to the latter, it was stated that Disney’s use of the MOVA mark in film credits could lead to viewers believing that Rearden has endorsed its movies, while trademark claims regarding what was said about MOVA in commercial advertising and promotion for Fox and Paramount’s films would go ahead as well. The case is in its early stages yet but will be one to keep a close eye on. (TA)

Plain packaging revealed in Ireland – The Republic of Ireland has passed laws dictating that all cigarettes and tobacco products will have to be sold in plain or standardised packaging from September this year. In preparation for that date, some shops have already started selling cigarettes with the new plain packaging, as reported by BreakingNews.ie, and in the process has revealed what the new packaging will look like. Interestingly, the plain packaging design appears to be darker than the one used in Australia, suggesting the “drab green” used there (and in the UK) will not necessarily be used globally. (TJL)

Market Radar:

Proof that the USTR’s notorious markets list has an impact – This week, the management of Canada-based Pacific Mall announced that it will conduct an internal investigation into – and implement “stringent internal measures” to stop – imitation goods being traded or sold in the mall. As part of the campaign, it will issue warnings to all vendors on the legal consequences of selling imitation goods, request store owners to comply with a new code of conduct and commission a private investigator to monitor for such products. Going a step further, it has also established a website to promote consumer awareness of counterfeits and allows them to file a report if they suspect any vendors are selling imitation goods or if they have unknowingly purchased an imitation product in the mall. The move will be welcomed by brand owners and is being characterised by media outlets as a direct response to the mall’s inclusion on the recent USTR list of notorious markets. In that respect, it represents proof positive that the USTR list does have a tangible impact. (TL)

US IP firm receives diversity awardBrinks Gilson & Lione has received The Chicago Committee’s Diversity Award for Most Partners of Colour in Firm Management. The award recognizes Brinks’ commitment to fostering and improving diversity, inclusion, and the promotion of women and attorneys of colour to leadership and governance positions at the firm. Recently elected firm president Gus Siller, the first minority and Hispanic attorney to lead Brinks, accepted the award and commented: “We are honoured to receive this award and believe it reflects the important work we are doing to build and maintain a diverse and inclusive firm. It’s essential to our firm’s success and integrity that we maintain an inclusive environment in which our many talented, diverse attorneys can flourish.  It remains our mission to create and impart inclusion initiatives that address the challenges facing our profession while also contributing to the growth and development of our lawyers.” (TL)

Internet is Kazakhstan’s largest counterfeit supply channel – At a roundtable on combating the distribution of counterfeits, it was found that most counterfeit products sold in Kazakhstan are advertised on the internet. The Kazakh state revenue committee investigation department found that most infringements are related to DVD-ROMs, including the distribution of fake video games, and computer programs for accountants. Following the meeting, the Ministry of Justice’s intellectual property rights department deputy director, Beket Aligozhin, added: “We have already confiscated counterfeit products for more than 16 million tenge ($50,158)… falsified products come from China, our main supplier. Therefore, we take measures not only in the state, but also abroad.” (TA)

Yet another trademark scam… – It’s that time of the week when the latest trademark solicitation scam is revealed. Ever vigilant, and working to alert the community to such campaigns on his law firm blog, attorney Erik Pelton warns of a mailer (with an invoice) being sent by an entity called ITR, in which it offers ‘trademark publication’ in its database for $1,380. Pelton observes: “I have never met a trademark professional who relies on any such private directories for anything. They are incomplete and unofficial. They do not add to your trademark’s protection in any meaningful way.” Importantly, he urges recipients to not merely file the ‘invoice’ in the nearest wastepaper basket, but to report it to the TFC and USPTO. (TL)

Hershey’s hawkish eye over the marijuana industry – The Hershey Co. has been known for the vigorous defence of its trademarks across industries, and the cannabis sector is not an exception. Although it had sued two cannabis businesses back in 2014, the company had since been inconspicuous on this front – but, as noted by Marijuana Business Daily, it has ramped up its efforts in this field over the last year. The confectionary giant had sent cease-and-desist letters to at least two companies last year, including one to Harborside, insisting that the Oakland-based dispensary cease their sales of Jolly Meds cannabis-infused products. After requesting $20,000 in damages and an agreement with a confidentiality clause, Harborside responded by preparing for litigation and the case was dismissed in early 2018. Amanda Conley, an attorney whose client also received a cease-and-desist letter from Hershey in 2014, notes that the Harborside case seems to be “a ramping up, based on [her] limited experience with the company”. And, despite dispensaries victory, she warned that there will only be more cannabis-related trademark disputes as the industry continues to grow. (TA)

First Barbados trademark ruling, could have knock-on effect for local businesses – The first trademark infringement dispute in Barbados has concluded, with local business Ouch Boutique being found guilty of selling fake Rihanna Puma products. In the wake of the decision, the defendant’s attorney said that the decision would have a knock-on effect for many other Barbadian businesses, local press is reporting. Satcha Kissoon claimed that many of the country’s entrepreneurs were in the habit of trusting in their supplier’s integrity. “The court seems to be suggesting that retailers must now go behind the supplier, go in the backroom and sit down with the manager and find out through some form of documentation to prove the authenticity of the items. To my mind this cannot be a very helpful or realistic exercise”, he said. Puma’s counsel has, of course, taken a different view, emphasising the ‘buyer beware’ contract law principle. (AH)

Media Watch:

Children should be taught more about IP – Teaching young people in the UK more about copyright and trademark law is an important part of ensuring the future competitiveness of the country’s economy, argues Richard Gibbs of Marks & Clerk in a recent blog. He calls for school children to be taught how they could protect their own creations, but also about what constitutes the infringement of others’ IP rights. In an increasingly digitised world, “it is vital that children not only understand how to protect their unique creations but also that they appreciate the often delicate balance between deriving inspiration and IP rights infringement”, he opines. In this regard, Gibbs commends the UKIPO for its newly-launched education campaign which seeks to engage primary schools pupils in the otherwise dry topic of online IP infringement through the use of cartoon characters. (AH)

Canada especially vulnerable to bad faith multi-class applications – In a recent blog, Cynthia Rowden of Bereskin & Parr addresses the phenomenon - widely covered by World Trademark Review - of large number of trademark applications being filed by a small number of applicants. She argues that when large numbers of trademarks are registered across all 45 classes, the aim is likely to take financial advantage of the filings “or to exact remuneration for consent to use or register identical or similar marks”. Canada, Rowden claims, is particularly vulnerable to this type of strategy, because its IP system – unlike most others – charges a flat fee of $250 for a filing, regardless of the number of classes applied for. She explains that while fees per class are set to be introduced in Canada in 2019, current filing costs are currently a “bargain”. Rowden also points out that Canada plans to drop its trademark use requirement; combined with the country’s fee structure, this has, she argues, created a “perfect storm” for applications “that appear to be filed fraudulently”. Opposition and expungement proceedings should not be relied upon to counter this problem; CIPO, it suggested, should undertake “early and aggressive” examinations of such applications, and a body of law should developed around the intent needed for a valid trademark registration. (AH)

Friday catch-up:

Every Friday in our news round-up we will be providing a quick rundown of the news, analysis and intelligence posted on World Trademark Review that week.

  • We serialised the findings of the second IP Office Innovation Ranking, our exclusive research project designed to identify the offices leading the way in terms of non-core tools and services for users. Having examined digital offerings, value-added propositions and trademark knowledge and public outreach efforts, our analysis culminated in the publication of the full ranking table, with the EUIPO named as the world’s most innovative office. However, a number of other organisations have upped their game over the past year, with South Korea just missing out on the top spot.
  • We presented a data-led report on the trademark landscape in France, revealing how the country’s flourishing tech start-up scene is set to outpace that of the United Kingdom.
  • Turning to the enforcement world, we featured a guest post warning that that cybercriminals “anywhere in the world” could soon become the biggest fans of the EU General Data Protection Regulation.
  • Following the publication of INTA’s 2017 Annual Report, we also examined the association’s membership demographics, which are undergoing a significant transformation.
  • We reported on reaction to ICANN's latest proposed model for GDPR compliance for the WHOIS function, with intellectual property experts cautioning that it could create significant roadblocks to effective enforcement efforts
  • We posted a warning that cybercriminals “anywhere in the world” could become fans of the European Union's GDPR legislation, with a call for stakeholders to be aware of the substance (and potential consequence) of the law's protections
  • We published a guest post that laid out a bold plan for IP offices to adopt universal standards in trademark data and electronics filings.
  • Finally, we looked at a ground-breaking study which revealed that over 81% of all common words in American English are registered as single-word marks at the USPTO.

And finally…

Final chance to have your say on the state of the industry World Trademark Review is currently inviting industry practitioners to participate in the Global Trademark Benchmarking Survey, which measures the pulse of the industry, tracks industry trends and identifies how practice is evolving to counter new threats and embrace fresh opportunities. Participation in the survey is free of charge and designed to give counsel – both in-house and in private practice – the opportunity to have their say on the state of the trademark industry. The survey window closes on Monday and the survey form for in-house/corporate counsel is available here. The survey form for law firm practitioners is available here. (TL)

Adam Houldsworth

Author | Reporter

ahouldsworth@GlobeBMG.com

Adam Houldsworth