16 Jun

UKIPO responds to BLACK LIVES MATTER trademark outrage; INTA cancels TMAP meeting; ICANN69 goes virtual – news digest

Every Tuesday and Friday, WTR presents a round-up of news, developments and insights from across the trademark sphere. In our latest edition, we look at Nestlé putting a large portion of its bottled water business up for sale, HGF and Nexus teaming up, IPOPHL warning of a rise in fake goods, and much more. Coverage this time from Trevor Little (TL), Bridget Diakun (BD), Jonathan Walfisz (JW) and Tim Lince (TJL).

Market radar:

UKIPO responds to BLACK LIVES MATTER trademark outrage – The UK Intellectual Property Office (UKIPO) has responded to continued social media outrage at trademark applications related to the Black Lives Matter movement. As WTR exclusively reported last week, two trademark applications were filed at the UKIPO for the terms BLACK LIVES MATTER and I CAN’T BREATHE, terms associated with the ongoing worldwide protests following the death of US citizen George Floyd. The applicant behind the trademarks, Manchester-based businessman Georgios Demetriou, told WTR that he plans to use the terms to launch non-profit organisations to help disadvantaged children – and, if the marks are granted, will seek a royalty fee from any other entities that uses the terms in the UK. However, the applications have caused much outrage, with tweets about the applications getting thousands of retweets and a Change.org petition so far receiving 1,500 signatures. In response, the UKIPO tweeted a lengthy explanation on how it will deal with the applications: "Trademarks and intellectual property touch every part of modern life. Our decisions are important not just for those submitting the application, but for the wider public and communities they affect. While we have a responsibility to examine the validity of applications like these under trade mark law, the consideration we give them will not be without recognition of current and historical injustices. This is also the reason why the registration process has the ability for 'observations' to be submitted by the public. Should these applications reach that stage in the application process the IPO would welcome observations from the public." Such an explanation is unprecedented and represents the emotional response to the applications. Since then, the Daily Mail picked up on the outrage to the applications, which could spur further media coverage in the days and weeks ahead. (TJL)

Nestlé continues portfolio transformation with bottled water sale – Nestlé has put a large portion of its bottled water business up for sale. The company has had a number of problems with the business line, and in recent years it has faced criticism for depleting aquifers, contributing to the proliferation of plastic bottles. The US brands that the multinational food giant is looking to part ways with include Arrowhead, Deer Park, Ozarka, Ice Mountain, Zephyrhills and Poland Springs. Together these brands account for 44% of Nestlé’s overall water sales, but have an operating margin of just 5%. The pruning of its portfolio has been a priority for the company over the past few years, and it has recently sold off other non-core businesses like Buitoni and its US ice cream business (including Häagen Dazs). (BD)

INTA cancels TMAP – INTA has announced that, in light of the ongoing COVID-19 pandemic, it is cancelling the 2020 Trademark Administrators and Practitioners (TMAP) Meeting. The event was scheduled to take place in Arlington, Virginia, on 4-6 October. The association notes: “This is one of several in-person events that we have cancelled due to these unfortunate circumstances. Our priority is the health and safety of our registrants and the community at large.” In terms of content; however, the all-virtual 2020 Annual Meeting & Leadership Meeting, taking place in in November, will include special educational and networking sessions (such as workshops and idea exchanges) that are geared towards the interest of TMAP attendees. The next physical TMAP event is scheduled for Denver on 26-28 September 2021. Registration for the 2020 Annual Meeting & Leadership Meeting is due to open in early July but delegates could get a preview of the potential virtual format when INTA hosts its ‘Brands in Society’ virtual conference next week. (TL)

HGF and Nexus team up – IP firm HGF has announced a new strategic partnership that sees it become the IP Partner for Nexus, the innovation hub at the University of Leeds. The tie-up will see HGF offering access to a variety of support services to Nexus’ members. Andy Camenisch, partner at HGF, commented: “Nexus plays an important role in the Leeds City region in providing support and growing innovative businesses. Our firm is geographically well placed to provide support to the regional innovation ecosystem and is equally invested in the region. We are looking forward to providing Nexus members with our knowledge and expertise across the sector to help facilitate future growth.” (TL)

IPOPHL warns of rise in fakes – The IP Office of the Philippines (IPOPHL) is warning of an increase in counterfeit products due to e-commerce trade going “full blast” during the covid-19 lockdown period. According to IPOPHL director general Rowel Barba, counterfeit goods are proliferating on online marketplace platforms, as well as social media websites, due to an increase in online purchasing. He has therefore urged the Philippines government to look at a recent report which called for the “swift adoption of best practices by e-commerce platforms that operate third party marketplaces and other third-party intermediaries”. (TJL)

Legal radar:

Mayfair 101 settles ‘platinum’ dispute – London investment bank Mayfair 101 has agreed to cease use of its Mayfair Platinum brand. The bank reached a settlement with Platinum Asset Management and will dispense with the brand name from 30 June. Platinum Investment Management Limited commenced proceedings in the US Federal Court in December last year alleging trademark infringement for the use of ‘platinum’ in Mayfair’s branding. A Mayfair 101 spokesperson said: “We have held the strong view that ‘platinum’ is a descriptive word and should never have been allowed to be trademarked. That said, Platinum Asset management holds a leading position in the funds management industry in Australia and we are respectful of the work Kerr Neilson and his team have put into developing their brand.” The group’s managing director James Mawhinney added: “We are glad to put this matter behind us and wish Platinum continued success with their brand.” (JW)

Louis Vuitton’s Damier mark has acquired distinctiveness, EGC rules – Louis Vuitton’s blue and beige checkerboard Damier pattern has “acquired distinctiveness” according to the EU’s General Court (EGC), reports The Fashion Law. The mark was originally disputed in 2015 when it was first registered with the EUIPO. Individual Norbert Wisniewski filled invalidation proceedings claiming the mark lacked the necessary distinctiveness to operate as a trademark. The EGC ruling fundamentally agreed with the claim – that the Damier mark is not inherently distinctive. However, the court also sided with Louis Vuitton and granted them the right to the mark on the grounds of its acquired distinctiveness. Louis Vuitton was found to have filed extensive evidence to show that the Damier mark had acquired distinctive character through use throughout the EU. (JW)

Office radar:

(For more of the latest coronavirus-related updates from national IP offices, please read our dedicated article which is being continuously updated)

BOIP offers to help protect ideas – There is still time to take advantage of the Benelux Office of Intellectual Property’s offering of free use of i-DEPOTs (a date-stamping service which is eIDAS compliant and thus not territorially limited) in June. The office notes that current conditions have prompted innovators to conceive new solutions to the challenges faced around the world. By using the service, within minutes users receive an official i-DEPOT certificate, providing legal, date-stamped proof of your idea. The office states: “We are running this promotion to give entrepreneurs heart, and because we believe that new ideas are much needed in these extraordinary times. Through this promotion, the Benelux Office for Intellectual Property, is providing its heartfelt support to all those who are devising new ideas.” (TL)

IPOS reveals IP week plans – In April we reported that the IP Office of Singapore (IPOS) was postponing IP Week @ SG 2020 Conference for approximately 12 months, while aiming to still celebrate IP Week “electronically”. It has now announced its plans for a digital gathering on 25-26 August, noting: [email protected] will focus on the increased prominence of intellectual property and intangible assets supporting business and economic growth in the new economy impacted by COVID-19. Various IP and IAs such as technology, medicine, manufacturing, supply chains, access to cultural and research materials and innovation continue to dominate the global conversation and is expected to continue as established business models are challenged. Achieving a balance between protecting one’s IP and IA against the need for collaboration, open access and open innovation will be the new normal.” The programme will include  sessions on monetising and protecting IP and innovation in an economy impacted by COVID-19, the annual IP Awards and access to past Global Forum on IP (GFIP) sessions. Initial details are available here. (TL)

Taiwan IPO updates classifications – The Taiwan IP Office (TIPO) has announced an update to its classification of goods and services on trademark applications. In total, 469 new items were added to the classification list, 14 items were deleted, and 16 new groups and sub-categories were added. The changes will be implemented from 1 July 2020. (TJL)

Domain Radar:

ICANN69 goes virtual  – ICANN has announced that the ICANN69 Annual General Meeting (AGM), which was to be held in Hamburg, Germany, will not proceed as an in-person meeting. The meeting, scheduled for 17-22 October, will be the third time ICANN will hold a virtual public meeting as a result of the COVID-19 pandemic, following previously planned gatherings in Mexico and Malaysia. Maarten Botterman, ICANN board chair, states: "As of right now, there are still too many uncertainties involved with hosting a face-to-face meeting. The board believes that this is the right decision, and it gives us ample time to plan a successful Annual General Meeting. There's a great deal of work to be done, so let's continue to focus on getting it done, together." More information, including details about the meeting's time zone, language interpretation options, and final schedule will be provided at a later date. (TL)

On the move:

Reed Smith expands Paris office with IP hire – Thierry Lautier has joined Reed Smith’s Paris office as a partner within the firm’s IP, tech and data group. Lautier’s practice focuses on domestic and cross-border patent litigation, but he also handles patent drafting, prosecution, management of patent portfolios, as well as opposition proceedings before the EPO. Of his appointment, Marianne Schaffner, head of the IP team in Paris and of the patent practice in Europe, said: “Thierry is well known in the French market as one of the most promising litigators. His arrival is an important milestone as we continue to develop our IP offering across our European footprint.” (BD)

Dickinson Wright unveils swathe of new attorneys Dickinson Wright has boosted its intellectual property practice with the addition of a group of IP attorneys from the former Ann Arbor office of IP boutique Brinks Gilson & Lione.  Joining Dickinson Wright are James Cleland (who litigates patent, trademark, copyright, trade secret and unfair competition cases), patent specialist Gerlinde (Linda) Nattler,  Steven Oberholtzer (who focuses his practice on the development and implementation of corporate intellectual property policies, intellectual asset management, litigation, and technology licensing), patent and trademark procurement expert Michael Spink, Keith Weiss (as Of Counsel) and patent-focused Sungwook (Sung) Lee. The attorneys joined Dickinson Wright in February, but a broader announcement was delayed. Speaking this week, Phil Rettig, division director of the firm’s IP practice, said: “This is an exceptional group of IP attorneys, with the depth and breadth of knowledge to serve our clients in all industries and service sectors. They bring a varied suite of intellectual property experiences that complement Dickinson Wright’s national IP team, which is now more than 100 attorneys strong.” (TL)

Lewis Roca Rothberger Christie adds two patent attorneys to Phoenix team – Lewis Roca Rothberger Christie has appointed Ralph Selitto and John Kim as partners within the firm’s IP group at the Phoenix office. Selitto is a registered patent attorney with a broad range of IP experience. He advises clients on the development of global patent, trademark and copyright portfolios, and also counsels them on the commercialisation and valuation of their holdings. In addition to handling prosecution and licensing matters, Selitto represents clients in lawsuits involving patents, trademarks and copyrights. John Kim has a wide-ranging practice, and is highly experienced in prosecution and litigation matters involving patents, trademarks and copyrights. (BD)

And finally...

Free-to-view anti-counterfeiting intelligence now availableWTR has published the 12th edition of Anti-counterfeiting: A Global Guide, which provides comprehensive guidance on anti-counterfeiting laws, procedures and strategies in key jurisdictions around the world. Presented in a simple, easy-to-use format, this indispensable publication analyses the anti-counterfeiting frameworks in place in 18 jurisdictions, with a regional chapter identifying wider trends and best practices in the Western Balkans. In addition, an industry insight section offers guidance on protecting brands in the digital world, as well as industry-focused pieces offering insight into anti-counterfeiting strategies and best practice in the electronics and consumables, and luxury goods sectors. To access the new edition, click here.

Jonathan Walfisz

Author | Reporter

[email protected]

Jonathan Walfisz