15 Jan
2019

New Zealand opens GI nominations, INTA 2019 president, and Netflix CYOA dispute: 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 the 2015 EU directive entering into force in the UK and Spain this week, INTA keeping the plain packaging battle alive, cannabis use being legalised in South Africa, a decision on the liability of freight forwarders in Singapore, and much more. Coverage this time from Trevor Little (TL), Adam Houldsworth (AH), Bridget Diakun (BD) and Tim Lince (TJL).

Market radar:

INTA officially unveils 2019 president – This week, INTA announced the election of David Lossignol as the 2019 president of the association and chair of its Board of Directors. Lossignol, head of trademarks, domain names and copyrights for Novartis Pharma AG, commenced his one-year term on 1 January and will now help guide the association through the second year of its 2018–2021 Strategic Plan. In a press release announcing his presidency, the association notes that he plans to advance the protection of intellectual property around the world through various advocacy and educational efforts – with such issues as the proliferation of counterfeiting, growing anti-IP sentiment, brand restrictions, and the future of IP rights under Brexit high on his agenda. He reflects: “I am honored to have this opportunity to lead INTA at a time when brand owners are facing both enormous challenges and exciting changes. I plan to tackle some of these issues through a business-oriented angle and positive approach, including emphasizing how brands can better society.” (TL)

INTA keeps plain packaging battle alive – Earlier this month we opined on the seemingly unstoppable march of plain packaging for tobacco products, and warned of its spread to other sectors. 'Not so fast', says INTA, which has escalated its efforts against plain packaging regimes by submitting an amicus curiae brief to the World Trade Organization (WTO) Appellate Body Secretariat. The document  emphasises the association’s continuing concerns that Australia’s plain packaging tobacco law is inconsistent with the country’s obligations under the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS). We have presented detailed analysis of the flaws inherent in the WTO panel report in the cases brought against Australia’s plain packaging regime and in this latest document INTA urges the WTO Appellate Body to seriously consider the “highly negative effects that the TPPA [Australia's Tobacco Plain Packaging Act 2011] could have not just within the tobacco industry, but potentially across all sectors of consumer goods.” INTA submits that these plain packaging measures erode internationally protected IP rights under Paris Convention and TRIPS, adding: “The panel also erred in not considering that standardizing the packaging of tobacco products will facilitate the spread of counterfeit tobacco products by making them easier to produce and more difficult to detect.” Clearly INTA is intent on keeping the challenge to plain packaging, which represents a potential threat to brands in sectors outside tobacco industry, alive and is a move that will be welcomed by rights holders. The amicus curiae brief is available here. (TL)

Museum announces China partnership – The Museum of Fine Arts, Boston (MFA), has announced that Alfilo Brands will serve as the museum’s exclusive master licensee for the Greater China Region. Alfilo is tasked with building brand awareness and developing new licensing opportunities in the market, with the partnership expanding the MFA’s  licensing and merchandising program, which oversees the development of products including stationery, home textiles and décor, fashion, jewelry and wall art, all inspired by works from the Museum’s encyclopedic collection. WTR recently interviewed the CEO of Alfilo Brands, Yizan He, who provided real-world takeaways from the strategies being employed by cultural institutions as they seek to tap into China’s vast consumer market. In that conversation he emphasised how “Story is key to IP asset development" in China, with museums able to draw on heritage and exploit properties that have a history. As such, MFA will be well-placed to appeal to consumers in the country. (TL)

Legal radar:

Netflix sued over alleged ‘Bandersnatch’ trademark infringement – Netflix recently released an interactive tool for Black Mirror: Bandersnatch, but was sued by Chooseco on January 11 for an alleged trademark infringement. Chooseco, a publisher based in Vermont, owns the trademark rights to Choose Your Own Adventure, which it uses in an interactive children’s book series. The publisher argues that not only did Netflix fail to license the rights to its trademark for the Bandersnatch book, but the “dark” content of the Black Mirror show also disparages its mark. Chooseco is asking for $25 million in damages and legal fees and is seeking injunctive relief. The damages and legal fees have the potential to be tripled as the publisher alleges that Netflix willingly infringed the mark. Chooseco was previously involved in a trademark infringement case with Daimler Chrysler over a Jeep ad which was settled in 2007. (BD)

Freight forwarders not liable for counterfeits in transit, says Singapore Supreme Court – The Supreme Court of Singapore has dismissed an appeal by Burberry and Louis Vuitton in a trademark dispute with freight forwarder Megastar Shipping. The plaintiffs accused the shipping company of trademark infringement following the April 2013 discovery by Singaporean customs officials of 436 cartons of Chinese-manufactured fake goods on a shipment being transferred between China and Indonesia by a Megastar vessel, according to Securing Industry. The affected brand owners argued that the freight forwarder was liable  for infringement. But, as WTR reported, a court found in late-2017 that Megastar, as a ‘middleman’, had not infringed. The Supreme Court’s recent decision upholds this interpretation, noting liability lies with “the importer or exporter of was the person who brought the goods or caused the goods to be brought into or out of Singapore, respectively”. Proof of intention was needed for Megastar to be held liable, it said. The decision underscores the importance of voluntary cooperation between brand owners and freight forwarders in the fight against fakes. (AH)

2015 EU trade marks directive enters into force in the UK – UK trademark law has seen a number of changes after the EU Trade Marks Directive 2015 came into force yesterday. These changes will have an impact on the UK trademark system regardless of the outcome of Brexit. Some of the most significant changes, but not an exhaustive list, are detailed below. Applicants will no longer need to provide a visual representation of their trademark, unless the UK application is filed under the Madrid system as an international mark. Trademark owners will be able to apply to restore their marks if they are not renewed on time, with the UKIPO now considering if whether or not the failure to renew was “unintentional”. If a mark has been registered for more than five years but not used and the owner uses the mark as a basis of opposition there is less of a chance of success, as the five year period now ends on the date the application was made rather than the date of publication. Trademark invalidation proceedings and infringement proceedings can be now considered during the same court proceeding. Trademark owners are able to take action against licensees who fail to comply with certain terms of their trademark license, under trademark law as well as contract law. Licensees can now directly intervene in infringement proceedings brought by trademark owners to obtain compensation for any loss they may have suffered. (BD)

Office radar:

Spanish IP Office puts trademark law changes into production – According to a post from the Spanish IP Office (OEPM), the registry has also implemented new processes to incorporate changes from the 2015 EU Trade Marks Directive. From this week, both digital and paper trademark applications have been changed to include new formats of audio and video type (with MP3 and MP4 the preferred file type for such marks) and an option to indicate a claim of distinctive character by use. Furthermore, a new numbering system has been implemented to distinguish applications submitted under the new legislation, starting with the 4,000,000 number for trademarks and 400,000 for commercial names. (TJL)

New Zealand opens up nominations (and objections) for GIs – The Intellectual Property Office of New Zealand (IPONZ) has posted a blog about the launch of a consultation on geographical indications (GIs) possibly being introduced in New Zealand. It follows formal negotiations beginning between New Zealand and the European Union on a free trade agreement, which started in June 2018. Unsurprisingly, the EU is looking for New Zealand to recognise and protect a list of EU GIs, while also giving an opportunity for New Zealand to provide the EU with a list of New Zealand product names for consideration as GIs for protection in the EU. Therefore, New Zealand’s Ministry of Foreign Affairs and Trade is seeking two things: (1) nominations from New Zealand-based agricultural, wine, spirits, aquaculture and food producers (and also producer groups) for their product names to be proposed to the EU for GI registration and protection in the EU; and (2) objections to the list of GIs the EU proposes for GI recognition and protection in New Zealand. For any rights holders interested in submitting nominations or objections, they have until 19 March to contact New Zealand’s Ministry of Foreign Affairs and Trade. (TJL)

Media watch:

Cannabis use legalized in South Africa, but don’t register your trademarks just yet – Following the recent decision of South Africa’s Constitutional Court to make legal the private use of cannabis, Kisch IP has written a blog, suggesting that companies hoping to move into the country’s marijuana market should hold off from registering their brands for the time being. At present, only private and commercial uses of cannabis have decriminalised, it reminds readers. As such, trademarks filed by for use in the production or distribution of cannabis are precluded. However, further amendments to the law may be on the cards, so potential applications should keep an eye on further developments in the country. (AH)

On the move:

Duane Morris welcomes IP partner − Kevin P Anderson has joined Duane Morris as a partner in the firm’s intellectual property practice group based in Washington DC. Anderson assists clients in developing, protecting and capitalising on their intellectual property. He has extensive experience in patent litigation, counseling and licensing, copyrights for technology and computer-related companies, and trademark/trade dress infringement. He regularly represents clients in the wireless communications industry and the computer industries, ranging from Fortune 100 companies to innovators and entrepreneurs. He  joins from Wiley Rein, where he was a partner and had been chair of that firm’s patent litigation practice. (TL)

Guerra IP adds seasoned lawyer – Heidi Gorenstein Nigri has joined the professional team of Guerra IP. A graduate of the National Law School of the Federal University of Rio de Janeiro – UFRJ, she has been practicing in the IP arena for more than 18 years, managing intangible assets portfolios owned by large to small domestic and international companies operating in different markets. Her expertise involves IP strategy, prevention, dispute mediation and resolution in the fields of trademarks, trade names, domain names, copyright, trade dress, unfair competition and related non-litigation measures. (TL)

Wolf makes moves – Wolf, Greenfield & Sacks has announced the promotion of Hunter D Keeton and Christina M. Licursi to the position of shareholder, effective 1 January 2019. Keeton focuses his practice on litigation in the areas of patent, trademark, trade dress, copyright, domain name disputes and internet cases, and boasts extensive experience representing clients in federal district court and state court, and before the International Trade Commission. Licursi focuses her practice on trademark prosecution and litigation, including representing clients before the TTAB and in federal courts across the country. In addition to trademark matters, she also handles various copyright issues, domain name portfolio management and related disputes, and social media and Internet matters. (TL)

Patterson and Sheridan recruits former DA to head new office – IP law specialists Patterson & Sheridan have announced that its new office in Waco, Texas, is to be headed by a former District Attorney, Abel Reyna. Reyna, who spent 8 years as a Criminal District Attorney, has joined the firm as as an Of Counsel. (AH)

Kilpatrick heads east – Kilpatrick Townsend & Stockton has announced the opening of an office in Beijing, which will operate as a trademark agency and will primarily support the strategic client needs of US and European-based brands in the China market. Christopher Woods, a co-leader of Kilpatrick Townsend's Asia practice team and head of the China brands practice, will serve as the Beijing office managing partner. Shuang Yu, associate, and Qunfan Chen, trademark agent, will also serve as senior members of the office. (TL)

And finally…

Obtain high-level trademark management and brand protection insights – WTR is hosting two events, on consecutive days, in Chicago in March. The Brand Protection Online: Strategies for Ethical Enforcement and Managing Trademark Assets USA events will deliver high-level insight and practical takeaways for those tasked with managing, protecting and monetising brands. On 5 March 2019, Brand Protection Online event will take a deep dive into practical strategies for fighting infringement on ecommerce sites, navigating the changing domain landscape and managing reputation online. Taking place at the same venue the next day, the fourth annual Managing Trademark Assets USA will again focus on the cost-effective management of international portfolios, and comes at a time when it is more important than ever for brand owners to ensure they are integrating innovative and disruptive strategies into their trademark operations. To register for Brand Protection Online (or both events) click here. To register for Managing Trademark Assets USA (or both events) click here. (TL)

Adam Houldsworth

Life sciences reporter

[email protected]