15 May
2018

MEME mark refused, Trump trademark snag for Israeli club and WHOIS working group set to disband: 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 a MEME trademark related to serial filer Michael Gleissner, how an Israeli football team adding ‘Trump’ to its name could land the club in trademark hot water, a call for improved IP laws in Nigeria and how the IP portfolio of a UK fashion brand is up for sale. Coverage this time from Trevor Little (TL), Tim Lince (TJL), Adam Houldsworth (AH) and Timothy Au (TA).

Legal radar:

MEME mark falls – A UK trademark application for registration of the term MEME has been refused following an opposition by the company MeMe London. The application was filed by an entity called Meme Partners, and evidence presented by the opponent demonstrated (through a screen print of the business page on UK Companies House) that this entity is owned by multi-millionaire and serial trademark filer Michael Gleissner. Subsequent evidence outlined how Gleissner has registered over 1,100 UK companies, and has filed thousands of trademarks around the world – something widely covered by World Trademark Review (and referenced in the evidence). Analysing the evidence, Comptroller General Teresa Parks concluded: “The applicant has not challenged any of the evidence filed by the opponent and I am left to draw my own conclusions from this. As a result, I find that the opponent has made out a prima facie case that Mr Gleissner was not intending to use the mark in accordance with the essential distinguishing function. The applicant has provided no evidence and/or explanation to counter the prima facie position established by the opponent: neither has it stated that it intends to use the mark, nor has it attempted to explain its rationale for filing the application in response to the opponent’s allegations. Accordingly, the Section 3(6) attack succeeds.” This opposition decision is one of at least four in recent weeks (the others being EASY, PETRUS and WORLD) in which a Gleissner-related entity has been unsuccessful. (TJL)

Marshmallow bounces back with trademark win against Marsh – The UK Intellectual Property Office (UKIPO) has ruled in favour of Marshmallow, an insurtech start-up, after global insurance broking company Marsh claimed the start-up was infringing on its trademark back in 2016. Marsh argued that the only difference between the two names was the word ‘Mallow’, which could “easily be confused by members of the public”. However, the UKIPO disagreed, stating that there was enough of a difference between the associations of the two words – “a soft, sweet food” and “a muddy area of land” – to “offset the moderate degree of visual and aural similarity” between the names. The office added: “[Marshmallow’s] position is even stronger if one compares its trademarks with the actual trademarks upon which the opponent relies.” The founders of the start-up had condemned Marsh’s actions as an attempt to stifle innovation in the insurtech industry, calling the UKIPO’s decision “a sweet victory”. (TA)

Maritime news website threatened over use of 150 year-old icon – A trademark lawsuit has been threatened over the use of a shipping marking, known as the Plimsoll Line, water line or international load line, which is displayed on ships to indicate the maximum depth to which the vessel may be safely immersed when carrying cargo. Plimsoll Gear, a website selling maritime themed clothes, is threatening to sue gCaptain, a Californian maritime news outlet, for selling t-shirts which feature the marking. Lawyers for Plimsoll Gear, which owns a trademark which contains the famous icon, say that the news website is selling “items identical and similar to those sold by our client and protected by Plimsoll Gear’s trademark registrations creates a risk of consumer confusion, regarding the source and sponsorship of those items and potential affiliations between gCaptain and Plimsoll Gear”. But John Konrad, who owns gCaptain is reported to to have described the threatened lawsuit as “crazy”, because the logo in question - which first became mandatory on British merchant ships in 1876 - has been is a “hallmark of safety of the maritime industry since the 1860s”. (AH)

Market radar:

UK smoking rates higher after introduction of plain packaging – A new study from the Tobacco Manufacturers’ Association (TMA) claims that plain packaging of tobacco products in the UK is failing, as smoking rates in England between December 2017 and March 2018 were higher than the same period before the measure was introduced – the TMA states that if the same effect was observed across the whole of the UK, there would be roughly 350,000 additional adult smokers compared to before. As part of the study, a poll was also conducted in which over a quarter of the respondents stated they were more likely to buy untaxed tobacco as a result of plain packaging. Giles Roca, the director general of the TMA, denounced the plain packaging of tobacco products, calling it “a boon to the black market by encouraging smokers to buy from illicit sources”. While some groups have claimed it to be a failure in Australia as well, the effectiveness of plain packaging continues to be a heated topic. It remains to be seen whether this newfound data will have an impact on suggestions that plain packaging should spread to alcohol and products high in fat, salt and sugar. (TA)

Fashion brand IP assets for sale – The intellectual property assets of fashion brand Bench have been put up for sale as part of its ongoing administration process. Bench, founded in the UK in 1989, specialises in streetwear and has stores in the UK, Europe and Canada. It is understood that since entering administration last month, the company is now selling its IP portfolio – with interested parties having until today to submit an offer or seek additional information. (TJL)

Ghanain stakeholders team up in the fights against fakes – A number of organisations in the Brong Ahafo region of Ghana have joined forces in adopting a strategic roadmap to combat the trade of counterfeit goods in the region. Entities including the Ghana’s police, fire, immigration and revenue services, as well as the Use Certfied Electrician Association and Electrical Contractors’ Association have come together under the umbrella of the Brong Ahafo Anti-Counterfeit Electrical Products and Electronic Appliances Stakeholders, which will jointly embark on a large-scale public advocacy project drawing attention to the harm caused by counterfeit electrical goods. Francis Mensah Akpaloo of the Ghana Standards Authority said that, while current counterfeiting activities in the country are overwhelming, there must be collaboration in efforts “to reduce patronage of these counterfeit products”. Favoured strategies include the introduction of anti-fraud approaches into quality programmes and the education of procurement personnel. (AH)

EUIPO enters virtual reality – The EUIPO’s Brussels Liaison Office is hosting an IP roundtable this week on “Augmented and Virtual Reality: Most advanced IP rights issues.” According to the event page, it will be focused on “extensive developments in the technological field of augmented and virtual reality over the past years” and the “challenges intellectual property protection is facing in view of this new technology”. For counsel interested about or working on this cutting edge tech, this could be an event worth following – either by attending or watching the live stream. (TJL)

Domain name radar:

WHOIS working group set to disband – This week we reported on the publication of ICANN’s working draft of a Temporary Specification for gTLD Registration Data, part of its efforts to ensure WHOIS compliance with the European Union's General Data Protection Regulation (GDPR). With the focus of the ICANN community firmly directed at the future of WHOIS, Domain Incite’s Kevin Murphy notes that an ICANN working group devoted to WHOIS policy is looking “increasingly dead after being trumped by incoming European Union privacy law”. Murphy reports that Registration Data Services PDP working group chair Chuck Gomes resigned from the group last week, one of his final acts being the cancellation of proposed meetings scheduled for the Panama ICANN meeting in June. With a vote on the Temporary specification expected this week, potentially giving ICANN a year to formulate a longer term policy for WHOIS access, Murphy concludes: “There’s an open question about whether the RDS WG could be re-purposed to take on this task, but it’s my sense it’s more likely that a new group would be formed. [But] It may prove more challenging to recruit volunteers to such a group given the experiences of the RDS crowd.” (TL)

Trademarkinfringement.sucks launched to raise awareness – Vox Populi, the domain name registry for the ‘.sucks’ new gTLD, has announced the launch of trademarkinfringement.sucks, just ahead of INTA, to raise awareness about the threat domain names can pose to a brand. Christina Beavis, chief operating officer of Vox Populi, said: “We want to help educate our users about what can be an overlooked threat to brands, so they can ensure that they purchase…before it’s too late. Not only that, but it’s an amazing opportunity to own a TLD that provides brands with a unique opportunity to get creative and highly transparent in how they own their imperfections.” This marks a different approach to the one Vox Populi took during INTA 2015 to raise awareness of the .SUCKS domain, which saw it brandish INTA.SUCKS at the conference itself. (TA)

Media watch:

Israel football team adds ‘Trump’ to name, runs into brand and trademark woes? – A football team based in Israel has changed its name from ‘Beitar Jerusalem’ to ‘Beitar Trump Jerusalem’ in honour of US president Donald Trump. The move came hours before the opening of the American embassy in Jerusalem, and the club seemed to suggest in its announcement that the name change was certain. However, as reported by Mediaite, the club could face “legal woes and branding issues” related to the name change. First of all, the rebrand will need to be approved by Israel Football Association, something that is far from certain. Secondly, and perhaps more significantly, are issues related to trademark rights. “Donald Trump has been a registered trademark in Israel since 2008, and should Beitar try to add it to its name, it may be sued, as it hasn’t received permission to use it,” according to JPost. Indeed, in theory, if the name change is not authorised by the owner of the TRUMP trademarks in Israel (of which there are numerous), it could be infringement and require legal action. Time will tell whether a trademark battle will ensue… (TJL)

Brexit energy drink which caused trademark spat seen on sale – Last month, we wrote about how the British press were up in arms following the discovery that two Polish businessmen had taken the “extraordinary step” to file an EU trademark for the term BREXIT. The mark was related to a proposed energy drink product which the entrepreneurs cheekily claimed was developed “because we all need energy to deal with Brexit”. Now, a few weeks later, the Brexit energy drink website was launched and at least one person has spotted the product being sold in the UK. It appears, then, that the goods in the EU trademark are now in commercial use. (TJL)

Calls for IP law review in Nigeria – A number of experts have called on an “immediate review” of intellectual property laws in Nigeria, with claims that the country’s ongoing socio-economic crisis “cannot be resolved with weak laws”. Talking to New Telegraph Online, IP lawyer Anthony Adekola was fierce on his criticism on laws in the country. “Most of the existing laws that protect intellectual property rights in Nigeria are inherited from colonial masters and have therefore become obsolete and inept,” he stated, adding: “It is unfortunate that Nigeria is not making much progress when it comes to intellectual property rights enforcement. The laws do not think of internet users. It is obsolete and outdated.” We’ve written about developments in Nigeria relevant to rights holders previously, including proposed life sentences for counterfeiters. But it appears that some legal representatives on the ground are not happy with the IP laws currently in place. (TJL)

On the move:

US firm adds expert – Panitch Schwarze Belisario & Nadel has announced that Elizabeth Ann ‘Betty’ Morgan has joined the firm. Recently relocated to Philadelphia, Morgan focuses her practice in trademark law, and mediation and arbitration of intellectual property matters. Boasting jury trial experience in federal court, including patent, trademark, copyright and trade secret matters, she has handled more than 100 matters before the Trademark Trial and Appeal Board. (TL)

And finally…

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 INTA’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)

Adam Houldsworth

Author | Reporter

ahouldsworth@GlobeBMG.com

Adam Houldsworth