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 a number of trademarks that appear to be related to Prince Harry and Meghan Markle, the USPTO unveiling a new resource center, a look at Facebook takedown numbers in the second half of 2017, and how the Toys-R-Us brand is now on the market. Coverage this time from Trevor Little (TL), Tim Lince (TJL), Adam Houldsworth (AH) and Timothy Au (TA).
Apple and Samsung prepare to resume hostilities – This week perhaps the most high profile design-related litigation battle resumed, with Apple reportedly seeking $1 billion in damages from Samsung in the latest development in the long-running smartphone infringement dispute. Bloomberg’s report on the case, which centres on the infringement of three of Apple’s design patents and two utility patents, notes that the question facing the jury in the current retrial is whether Samsung has to pay damages on the whole device or just the components that were infringed. The latter would carry a $28 million penalty. That is not small change but sharply contrasts with the billion dollar payout Apple is pushing for. The case continues and will grab headlines due to the parties involved. In the trademark and designs world it serves as a reminder of just how valuable designs can be. (TL)
Trademark world catches royal wedding fever – As some (or most) readers will be aware, Prince Harry of the British royal family is marrying actress Meghan Markle at the weekend. For the eager monarchists attending the INTA Annual Meeting at the same time, there may be bleary eyes on Saturday as the wedding will be broadcast live on TV at 4am Seattle time. But, as with any highly-publicised event, there are some entities hoping to take advantage of the occasion. There are various brand promotions leveraging the royal wedding (with some of the strangest collated by Inc, including Dunkin’ Donuts’ limited edition heart-shaped doughnut), and IPKat published a handy guide to IP rights and brand protection around the event. Not to be outdone, the UK Intellectual Property Office (UKIPO) posted a blog on “the ‘perfect’ wedding dress”, warning brides to avoid too-good-to-be-true wedding dresses: “Unfortunately for some brides, their dreams of a fairy-tale ending turn into a nightmare, with counterfeiters producing copies of famous designer dresses and passing them off as genuine.” Outside of awareness campaigns, the royal wedding also appears to have spurred a flurry of related trademarks applications. For example, a mark was filed in the UK a couple of weeks ago for the term THE MARKLE, while a UK mark for MEGHAN MARKLE was withdrawn in January (with an identical mark still live at the EUIPO). Elsewhere, a couple of weeks after the announcement of the engagement, an application for the term MARKLE was filed at the USPTO, covering various clothing goods. This particular mark was initially refused in March because it “may falsely suggest a connection with Meghan Markle”, adding that the actress is “so well-known that consumers would presume a connection”. The examining attorney went on to present a range of evidence linked to a Google search of ‘Markle’, and stated that it “shows that Meghan Markle is well recognised as the fiancé of Prince Harry, and that [she] is recognised for her fashion choices”. However, on Wednesday the applicant – China resident Li Chunhua – responded to the office action by clarifying that “Meghan Markle hasn't any connection with the applicant's goods” and that “the name(s), portrait(s), and/or signature(s) shown in the mark does not identify a particular living individual”. The ball is now back in the examining attorney’s court… But it isn’t just Markle that has had trademark applications filed in their name in recent months. A trademark in India for the term PRINCE HARRY, for example, was registered in June last year by cigarette company Ganapati Tobacco. We searched for any ‘Prince Harry’ brand cigarettes being sold in India but couldn’t find any – but if the mark is in relation to the soon-to-be-wedded prince, Ganapati Tobacco should be aware that he reportedly “quit smoking” in March. It appears, then, that when it comes to brand protection, the happy couple have had no honeymoon period. (TJL)
India unveils IP mascot – The Indian government’s commerce and industry minister Suresh Prabhu has launched the country’s first intellectual property mascot – called IP Nani – at a conference on national IP rights policy. Furthermore, he showed an anti-piracy video featuring actor Amitabh Bachchan. At the event, Prabhu suggested that “mere legal provisions are not sufficient for protection of IP rights”. (TJL)
Man arrested for purchasing infringing Olympic medals – It has been reported that a man has been arrested in Tokyo for the possession of fake commemorative medals of the upcoming Tokyo 2020 Olympic and Paralympic games. The offender had supposedly bought up to 80 medals through a Chinese online shopping platform with the intention of reselling the infringing goods. The medals featured the chequered patterns of the Tokyo games logo, which had been previously registered as trademarks in January. A number of the medals were resold before the arrest, averaging at around 4,000 yen (approximately $36) per medal. (TA)
Israel added to TMview – The European Union Intellectual Property Office (EUIPO) had announced that, as of 14 May, the Israel Patent Office (ILPO) has made its trademark data available to the TMview search tool. With the addition of ILPO, TMview now contains data from 66 participating offices and more than 50.2 million trademarks in total. (TJL)
USPTO unveils new resource center – The USPTO has announced the grand opening of the newest Patent and Trademark Resource Center (PTRC) at the Durango Public Library in Durango, Colorado. Taking place next Tuesday (22 May), the opening will be celebrated with the presentation of a new free public program titled Researching patent and trademark information: essential information you need to protect your intellectual property”. The second PTRC in the State of Colorado, the library is designed to support entrepreneurs throughout the region seeking patent and trademark protection for their intellectual property. USPTO-trained librarians will assist patrons using the agency’s patent and trademark databases. (TL)
Facebook takedown numbers rise in second half of 2017 – Facebook removed over 3.4 million items of IP-infringing content between July and December 2017, having received 463,000 complaints, it has been reported. According to the social network’s six-month Transparency Report, which is the second of its kind, it received more reports of copyright infringement (254,865) than for any other type of IP; 40,791 complaints over trademark infringement were received, with 18,903 reports about counterfeits. Instagram, which is owned by Facebook, received a further 119,069 reports of copyright infringement, as well as 20,381 trademark infringement claims; and 9,777 counterfeiting-related reports. The 2.35 million infringing items taken down from facebook, and 1.1million removed from Instagram, in this period, exceed the number taken down in the first six months of 2017 (a total of 3 million pieces). Following pressure on online platforms to adopt proactive measures against IP infringement, the company has described its transparency reports as a “first step” to build more trust regarding its enforcement efforts. (AH)
Toys-R-Us up for grabs – On Tuesday’s round-up, we wrote about the IP portfolio of fashion brand Bench being put up for sale. A couple of days later and the rights of an even more well-known brand are now on the market. Toys-R-Us, which went into administration in February, is set to sell all of its intellectual property in order to pay its creditors in what Retail Gazette claims is “one of the most valuable brands ever sold by a failed company”. As well as the trademark for its own name, the toy retailer is reportedly selling the Babies-R-Us brand, its Geoffrey the Giraffe logo and a range of domain names including ‘lodges-r-us.com’, ‘bistros-r-us.com’, ‘recipes-r-us.com’, ‘burgers-r-us.com’, ‘cigars-r-us.com’ and the racy ‘sex-toys-r-us.com’. According to brand specialist Bob Phibbs, who spoke about the sale to Reuters, the domains demonstrate that the trademark is particularly strong: “It shows the power of the brand: The ‘R’ Us is the key to the brand, not the Toys.” (TJL)
On the move:
Law professor heads to Golden Gate University – Golden Gate University has announced that David Franklyn, a law professor with particular expertise on intellectual property and technology law, is joining the faculty. Since 2000, he has been director of the McCarthy Institute for IP and Technology Law at the University of San Francisco. At GGU, he has a joint appointment between the School of Law and the Ageno School of Business, which will allow students to take classes that integrate legal and business principles. Elena Grimme, assistant general counsel, consumer and devices sales, Microsoft Corporation, comments: “This is a great opportunity for the students of Golden Gate University. In the past years I’ve experienced David’s expertise and passion for the intersection of intellectual property law and the tech business. I believe he will be a superb addition to the Golden Gate University tenured faculty and an invaluable asset for students seeking careers in the tech industry.” (TL)
Every Friday in our new round-up we will provide a quick rundown of the news, analysis and intelligence posted on World Trademark Review that week. Over the past week we:
- Reported on the latest data from CompuMark, which reveals that the number of Chinese trademark applications to foreign registers has doubled over the past two years, with Huawei Technologies leading the charge;
- Examined a new study which revealed that legal contract reviews conducted by an artificial intelligence platform can now reach an accuracy rate surpassing experienced lawyers.
- Assessed ICANN’s temporary specification plan for ensuring WHOIS compliance with the European Union's General Data Protection Regulation;
- Took a deep data dive into the apparel sector, illustrating how the leading brands have remained robust, analysing how filing patterns have changed, and revealing that Chinese brands have failed to make the cut in the list of the world’s leading fashion brands;
- We took a look at the trademark portfolios of the leading football clubs in the world;
- An exclusive pre-Annual Meeting interview with INTA president Tish Berard, who talks Brexit, GDPR and the need to embrace technological innovation.
Heading to Seattle? Come and say hello to the World Trademark Review team – The World Trademark Review team is heading to Seattle later this week for the INTA year’s Annual Meeting. If you are in town, then visit us in the exhibition hall at stands 213 to meet the team, demo the World Trademark Review platform and pick up some of our latest hard copy publications (while stocks last). Throughout the INTA Annual Meeting, we will be posting regular news updates and you’ll be able to keep up-to-date on all things INTA via our Twitter feed. (TL)