26 Mar
2019

Lego prevails, Jaguar Land Rover wins big in China, and IPOS extends mediation scheme: 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 a major new anti-counterfeiting player entering the market, the Hollywood Walk of Fame taking issue with Dubai Stars, results of a study on the health benefits of plain packaging, the Ethiopian IP office beginning a trial of its new online trademark filing system, and much more. Coverage this time from Trevor Little (TL), Adam Houldsworth (AH), Bridget Diakun (BD) and Tim Lince (TJL).

Market radar:

New anti-counterfeiting technology offering gears for market entry –  Our sister title IAM has reported on a new venture established by former RPX CEO John Amster, who left that defensive patent business in early 2017, having built the company he co-founded into a billion dollar outfit. The website for his new outfit, Rowan Technology Enabled Legal Services, outlines three core areas of offering: patents, legal management consulting and anti-counterfeiting. For trademark practitioners and brand professionals, the latter will catch the eye. The field of anti-counterfeiting technology offerings has become more crowded in recent years. In addition to companies wielding particular existing technology types (such as Italy-based Validactor, which launched a QR code-based offering which it claimed has the potential to “kill the fake markets instantly”) there has been a rise in new online brand protection companies and offerings. While not yet ready to speak to the media out the offering, the website offers further detail. As a differentiator from purely online takedown services, Rowan will use software to scan online markets and social media to identify and link entities which are having the most impact on rights holders, then seek to facilitate collaboration among multiple brands to bring joint actions against high volume counterfeiters. This would mean that multiple companies share the cost of enforcement, with the fee for Rowan’s services linked to the cost of each litigation. Collaboration between brands is not a new concept but the facilitation of such efforts by a third-party vendor is a less seen approach. As it stands, there is no further detail on the activation date for the new services, but it is one to watch. (TL)

Hollywood Walk of Fame takes issue with Dubai Stars – The Hollywood Chamber of Commerce, which administers the Walk of Fame (a tourist attraction visited by an estimated 10 million tourists each year) has issued a release noting that it has not approved, nor has any affiliation with, the Dubai Stars project which the creators claim will be a walk of fame in downtown Dubai. The Hollywood Chamber of Commerce holds all rights to trademarks and service marks associated with it, and in 2018 it entered into a trademark license agreement with Milestones SARL to develop a walk of fame project of its own in the United Arab Emirates and wider Middle East region. Chamber President and CEO Rana Ghadban stated: “We acknowledge and respect EMAAR Properties and city of Dubai's right to host the 'Dubai Stars’. But we ask that EMAAR and anyone connected to 'Dubai Stars' refrain from promoting the project in association with, or using any images of, our Hollywood Walk of Fame." The release notes that “when a company seeks to profit by linking its project to images or trademarks associated with the Walk of Fame, it [the Hollywood destination attraction] must be protected”. Its public statement is an attempt to do just that. (TL)

New tool to hide “toxic” comments online – Respondology, a reply-based advertising company, is introducing a product called The Mod, which allows brands to hide comments that are considered spam or ‘trollish’ on brand posts on key social media platforms. The company initially worked to assist brands with responding to messages received on social media, but later saw the need for a tool to mitigate negative comments that were surfacing online. The Mod has two components, the first is an automated keyword detection which flags specific words. Clients are able to choose among a number of categories, such as swearing or racist remarks, as to what they want removed. The flagged content then appears on a dashboard, and brands are able to approve the removal of the comment or have it reinstated. The second aspect of this tool is that it works alongside a group of moderators who are able to monitor the comments which pass detection. These individuals can, at their discretion, remove further comments. Those which are flagged as inappropriate or spam are removed immediately from view, however, it is interesting to note that the user posting such content will still see their comment as if it were still published. Thus, the activity is hidden to the general public, but the account holder responsible for the content is none the wiser. This tool is not intended to eliminate the “worst of the worst” content, as social media platforms are already equipped with their own tools to do so. However, it may prove helpful to clean up social comment streams of “predatory and toxic comments”. (BD)

Hostess and Ferrero fight to acquire Kellogg’s business units – Ferrero and Hostess are currently competing to purchase Keebler, Famous Amos and the fruit snacks from Kellogg. This deal would value the brands at about $1.5 billion. The food industry is shifting in nature and a number of companies are seeking to streamline their brand portfolios to focus on more promising products. At the same time, businesses like Ferrero and Hostess are hoping to capitalise on divestitures and revive these brands through investment. Both companies put forward offers on Thursday, but the deal is unlikely to close this week. Other companies currently looking to sell off parts of their portfolios include Kraft Heinz and General Mills. (BD)

Legal radar:

Big win for Jaguar Land Rover in China – In what the company describes as a ‘first’ for the global car industry, Jaguar Land Rover (JLR) has won a significant case in the Chinese courts against a company that produced a copy of its Range Rover Evoque. We have previously covered the long-running battle between JLR and Jiangling Motor Corporation, with the latest decision – issued by the Beijing Chaoyang District Court – decreeing that the Evoque has five unique features that were copied directly in the Landwind X7 built by Jiangling and that the similarity of the two vehicles has led to widespread consumer confusion. In a release welcoming the decision, JLR notes that the court determined that all sales, manufacturing and marketing of the Landwind vehicle must cease immediately, with compensation also to be paid. A JLR statement declared: “We welcome this decision of the Beijing Court, which further strengthens our confidence in investing in China and in the fairness of intellectual property adjudication in the Chinese courts. This ruling is a clear sign of the law being implemented appropriately to protect consumers and uphold their rights so that they are not confused or misled, whilst protecting business investment in design and innovation.” (TL)

Lego gets imitator’s trademark cancelled – The famous toy brand Lego has scored a victory before the UKIPO, winning cancellation proceedings against a ‘Lepin’ mark being used to sell “almost identical” building block products to its own. The trademark was owned by Longjun Toys, which makes sets named Lepin Star Wars, Lepin City, Lepin Creator Expert and Lepin Technician. The IP office held that consumers would likely be confused by use of the brand, especially given the similar colours used by Lepin and Lego. The Danish toymaker has also been awarded its £3,100 legal fees. (AH)

Korean court approves seizure of Mitsubishi Heavy Industries’ trademarks and patentsThe Japan Times has reported on a Korean court’s approval of a request to seize Mitsubishi Heavy Industries’ assets in the country after it refused to compensate Koreans who had won a case against it over wartime forced labour. The move, the report notes, follows an earlier Supreme Court ruling that ordered the major Japanese manufacturer to compensate those forced to work for the firm during World War II. The request relates to asset seizure of two trademarks and six patents owner by the company in South Korea and, notes The Japan Times, is likely to draw criticism from the Japanese government, which maintains that the issue of claims stemming from Japan’s colonial rule of the Korean Peninsula has already been settled as part of a 1965 treaty that established diplomatic ties with Korea. (TL)

California winery goes to battle over use of “To Kalon” – Constellation Brands, a beer, wine and spirits company, is being challenged in US federal court over its claim to have exclusive rights to the mark TO KALON, referring to the To Kalon vineyards in Napa Valley, northern California. Boutique winery The Vineyard House, which is located in the Napa Valley, launched legal proceedings after receiving a cease and desist notice from Constellation brands relating to its use of ‘To Kalon’ on its Cabernet Sauvignon. Constellation bought the mark from Robert Mondavi in 2004 and owns 188 acres of the original 527-acre To Kalon estate, a small part of which is now owned by The Vineyard House. The complaint to the District Court for the Northern District of California claims that the Robert Mondavi Corporation obtained the mark fraudulently and its current owners have been using it deceptively, implying that it owns the entire To Kalon estate and using the mark to label products produced on other Constellation Brands properties. (AH)

Research finds health benefit of plain packaging – A new study has added weight to the health benefit claims of plain packaging on tobacco products. According to the Nursing Times, researchers in the UK have conducted one of the first studies to explore how smokers respond to standardised/plain packaging. The study found that the respondents were more likely to have noticed health warnings “often” or “very often” on standardised packaging compared to previous branded packaging. Lead study author Dr Crawford Moodie commented: “Consistent with the broad objectives of standardised packaging, our research found that it was associated with increased warning salience, and thoughts about risks and quitting. The findings provide some support for standardised packaging and are consistent with research in Australia.” Of course, a primary criticism of plain packaging on tobacco products is that it severely restricts the use of intellectual property by not allowing logos and branding on packaging. But as more research is released claiming health benefits, it increases the chances that plain packaging could spread to other industries. (TJL)

Office radar:

IPOS extends mediation scheme – As was covered previously on WTR in 2016, to encourage parties in Intellectual Property Office of Singapore (IPOS) proceedings to choose mediation as an avenue for dispute resolution, IPOS launched a mediation promotion scheme (MPS). The scheme funded the administration and mediator fees incurred by parties during mediation up to a combined total of S$5,500 per mediation case. The MPS was be available from 1 April 2016 to 31 March 2019 for an estimated 30 cases and, this week, the office announced the extension of the scheme for three further years. Effective 1 April 2019, the scheme will also see an increase in funding (from S$5,500 to either S$10,000 or S$12,000 for each mediation case) and allow parties to claim for mediation-related agent fees.” (TL)

Ethiopian IPO opens pilot for online filing – The Ethiopian Intellectual Property Office (EIPO) has launched a pilot workshop for local IP agents to get insights on its new online trademark filing system. Partnering with the World IP Organisation (WIPO), the new filing system is currently in beta and will be fully operational by the end of 2019. Right now, agents can file a trademark application and upload documents through the system, with more features promises later in the year. The development of digital filings in Ethiopia will be welcomed by both domestic and international rights holders. (TJL)

Media watch:

Brands mock BA for destination mistake – Reports yesterday that a British Airways flight from London to Germany landed in Scotland by mistake has led to a slew of responses from other brands. According to articles, the mistake occurred due to “botched paperwork” that led staff – including the pilot and air traffic controllers – to believe that the flight was bound for Edinburgh rather than Düsseldorf. Nonetheless, passengers arrived in Germany a few hours later and the story has been treated in a lighthearted manner. Indeed, it led to companies poking fun at BA on social media. For example, budget airline Ryanair tweeted that they “have a present” for BA – and added a “Geography for Dummies” book image. Arguably the best response was from optician Specsavers, which tweeted a link to an article with the caption “Should've gone to Düsseldorf? #Shouldve”. The canny response references the famous slogan of the company, which it successfully attained registered trademark rights for in 2016 – with Specsavers principal IP counsel Antony Douglass telling us at the time that there had been widespread “inaccurate commentary” surrounding the trademark application. Even before Specsavers own tweet, reaction to yesterday’s BA blunder had numerous references to the famous slogan (eg, 1, 2, 3) – representing, perhaps, just how well-known the slogan is. (TJL)

On the move:

Scottish IP firm establishes Brexit partnership with German firm – Scottish law firm Cameron Intellectual Property has announced it has established a partnership with German-based Richter Gerbaulet Thielemann Hofmann to “mitigate the uncertainty posed by Brexit”. According to the press release, the partnership between the firms will ensure a “seamless service across the EU regardless of the outcome of Brexit”. Firm founder Stewart Cameron commented: “Although patents will not be affected by Brexit at all, since they are not EU rights, some uncertainty remains regarding how Brexit will affect trademark and design rights since they are EU rights and are therefore unlikely to cover the UK post-Brexit. Whilst this is a potential threat, it is also a potential opportunity since UK national trademarks and designs, which have perhaps become less popular over recent years, will once again become more important and potentially crucial to many businesses.” (TJL)

And finally…

Accessing litigation know-how WTR recently published the third edition of Trademark Litigation: A Global Guide 2019, which helps rights holders navigate the litigation regimes in key jurisdictions. The third edition of the guide serves as an invaluable reference guide to the litigation regimes in 15 key jurisdictions, each chapter examining critical issues such as the availability of alternative dispute resolution mechanisms, defences to trademark infringement or dilution, the use of survey evidence and expert witnesses, and the intricacies of the appeals process. The full publication is available and free to access here. (TL)

Adam Houldsworth

Life sciences reporter

[email protected]