9 Oct
2018

Victory for Chanel, Samoa moves closer to Madrid, and how Google+ shutdown could affect brand owners: news round-up

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 the EUIPO celebrating the power of designs, MaxxOil hitting back against “baseless” media reports, the Saudi IP office pledging more international cooperation, Rospatent planning electronic signatures for filings, and much more. Coverage this time from Trevor Little (TL), Adam Houldsworth (AH) and Tim Lince (TJL).

Market radar:

How Google+ shutdown could affect policing strategies – News broke yesterday that Google is to sunset its Google+ social network for consumers, with the platform due to continue for companies using it for internal corporate purposes. The announcement came after it emerged that user data had been left exposed on the network, making the personal details of up to 500,000 users potentially available to third parties. The phasing out of consumer use of the platform could also have a knock-on for trademark professionals tasked with policing social media networks. In our recent Global Trademark Benchmarking Survey, when asked how they rated social media platforms with respect to the challenges faced when protecting brands, respondents rated Google+ as more of a challenge than WeChat, Pinterest and WhatsApp. As the consumer offering is shut down, the necessity to continue policing the site will likely lessen – or potentially cease. For now, though, it should remain on the radar of brand protection professionals. (TL)

EUIPO celebrates the power of designs – The EUIPO has unveiled the finalists in the Industry and Small and Emerging Companies categories of this year’s DesignEuropa Awards, as well as the winner of the Lifetime Achievement Award. The awards celebrate excellence in design and design management among Registered Community Design (RCD) holders, with the winners announced at a ceremony in Warsaw on 27 November. The finalists for the industry category are the ARTIS pheno robotic C-arm angiography system, Docks modular outdoor furniture, Intercom smart video doorbell and an Origami folding radiator. Meanwhile, in the running for the small and emerging companies award are the Air.Go.2.0 automatic bag drop solution for airports, Braster in-home breast examination system, Loclock bicycle parking system and Nico Less chair (details of all finalists are available here). The Lifetime Achievement Award will be presented to Hartmut Esslinger, a German industrial designer with a global career spanning five decades and perhaps best known for his creation of the ‘Snow White’ design language for Apple in the 1980s. (TL)

Legal radar:

Luxury reseller taken to task by Chanel – Chanel has scored a victory in its battle against luxury item reseller What Goes Around Comes Around (WGACA), which it accused of improperly using its trademarks. In a lawsuit filed earlier this year, Chanel said WGACA’s use of its name was “designed to suggest that (it has) an affiliation or relationship with Chanel”, and that the reseller was “piggybacking on (its) reputation”. Seeking to dismiss the case, WGACA argued that “the lawsuit is an impermissible attempt by Chanel to bar the legitimate resale of its products, and that WGACA use the Chanel trademarks simply to identify its products, and does not claim any affiliation or sponsorship by Chanel.” A judge in the Southern District of New York recently declined the defendant’s motion to dismiss, stating that the luxury brand had made sufficiently compelling allegations that WGACA has misused Chanel branding and that the use of the #WGACACHANEL may have caused consumer confusion. Judge Louis Stanton also opined that WGACA is not protected by the ‘first sale’ doctrine, which allows purchasers to re-sell “a trademarked article under a producer’s trademark, and nothing more.” The judge did, however, reject Chanel’s unfair competition accusations, commenting that it had failed to demonstrate bad faith on WGACA’s part. As The Fashion Law comments, the lawsuit, which will now proceed, potentially has significant implications for the $25 billion luxury resale market. (AH)

Samoa moves closer to Madrid – The Samoan government has pushed ahead with plans to enable the country to join the Madrid Protocol. According to local media, the government has introduced a bill – the Intellectual Property Amendment Bill 2018 – which will seek to amend the similarly named bill from 2011 to allow Samoa to sign up to the international trademark system. The bill entered the Samoan Parliament last Friday and was considered under a “certificate of urgency” – this saw it rapidly proceed to the second and third readings. The amendment, after it is passed, will then ensure that Samoa has all the legislation required to accede to the Madrid Protocol. (TJL)

Hublot settles “red gold” watch dispute – Swiss luxury watch brand Hublot has brought its trademark dispute with independent jeweller Chris Aire to an end. American watchmaker Aire acquired a trademark for RED GOLD in 2003 and claims the phrase as distinctive branding for his red-tinted luxury timepieces which are popular with several A-list celebrities. He has been seeking to prevent Hublot from using the mark for the past seven years. Hublot, which claims that the phrase is descriptive, persuaded a US District Court judge in 2015 that “red gold” had been a commonly used phrase prior to Aire’s commercial use of the expression. That ruling was reversed on appeal last year on the grounds that important linguistic elements had been ignored. The case was due to be heard by a Los Angeles jury at the end of this month, but the two parties have decided to settle the matter instead. Despite the longevity of the case, the out-of-court settlement is not entirely surprising given the unpredictability of jury trials and the potential for millions of dollars in damages. The terms of the agreement have not been disclosed. (AH)

Office radar:

Saudi IP office pledges more international cooperation – At its fifth board meeting, the Saudi Intellectual Property Authority (SIPA) has pledged to develop more cooperation programs with international IP offices. The meeting was chaired by Majid Al-Qassabi, Saudi Arabia’s minister of commerce and investment, who commended SIPA for its recent signing of memorandums of understanding with the USPTO and the South Korean IP Office (KIPO). The expectation, then, is that SIPA will be seeking better relationships with more IP offices around the world – which should subsequently benefit rights holders. (TJL)

Portuguese IP office receives visit from Iceland – The Portuguese Trademark and Patent Office (INPI) has notified users that it hosted a visit of a delegation from the Icelandic Patent Office in the past few days. Beginning on 4 October, the two institutions presented their respective organisational structures, then sought ways to improve operations. According to a press release about the visit, the INPI presented various activities it has developed, including those related to the assignment of trademark and design rights, as well as the spreading of IP awareness at local universities, companies and the general public. According to the INPI, the two parties found “several issues of common interest related to bilateral cooperation”. (TJL)

Rospatent plans electronic signature for faster filing process – In two announcements on its website yesterday, the Russian Patent Office (Rospatent) has explained that it plans to allow users to apply for IP using a “simple electronic signature”. The ability to use such a signature is part of a bill supported by Rospatent, which claims the move will “reduce the costs of applicants”. It is understood an electronic signature could be used on inventions, utility models, industrial designs, and trademarks. According to the head of Rospatent, Grigory Ivliev, the practice will see many benefits. “The introduction of a simple electronic signature, we believe, will improve the accessibility of Rospatent, remove administrative barriers, especially for individual entrepreneurs, small and medium-sized businesses, which, in conditions of limited resources often can not afford the procedure of registration of the qualified electronic signature,” he claimed. (TJL)

Media watch:

MaxxOil hits back against “baseless” media reports – Recent articles in Malaysia have focused on a trademark infringement case between MaxxOil and Maxcare Success, with the latter having a product called Maxoil. According to a press release from MaxxOil, “there has been a lot of hubbub surrounding the case”, with local media outlets claiming that the company has been ordered “to pay special damages, general, legal costs, and a 5% interest per annum among other reliefs” following the infringement case. However, according to MaxxOil, the opposite has occurred. “Many of these reports are based on rumours, but the court dismissed Maxcare Success' claims, as they failed to prove the existence of a trademark violation, as well as dismissing the claim that the registration and trademark is unlawful,” the press release claims. Furthermore, it quotes the entire board of directors from MaxxOil’s parent company, Shift Holdings, who say: “We find the media reports very misleading, as the Court did not mention any wrongful doings by the defendant.” The press release is a strong rebuttal against what is obviously seen as incorrect reporting – time will tell whether such articles correct their course. (TJL)

On the move:

Duane Morris adds IP partner Boris Zelkind has joined Duane Morris’ San Diego office as a partner in the firm’s intellectual property practice group. Most recently a partner at Knobbe Martens, his practice is focused on IP litigation, including patent infringement, trade secrets, trademark, copyrights and unfair competition cases. (TL)

And finally…

Get the inside track on cost-effectively managing trademark portfolios WTR is pleased to announce that Managing Trademark Assets Europe will be heading to London on 28 January 2019. The event will present cutting-edge strategies for the creation, protection and monetisation of strong brands, with attendees hearing senior in-house counsel across a range of industries discuss how best to manage risk, ensure continued brand protection coverage and communicate the value of brands to the business in a bid to secure multi-stakeholder support. Delegate places cost just £795 but registrants using the code ONLINEEB before 7 December can save £200 on this rate. Click here to register. (TL)

Adam Houldsworth

Reporter

ahouldsworth@GlobeBMG.com

Adam Houldsworth