19 Nov
2019

Russia and Syria IP cooperation, Alibaba and JD.com spat, and OK BOOMER trademarks: 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 Chile IP Office urging electronic usage following mailbox damage, a St Andrews trademark dispute heating up, an update on the Bentley case, Amazon and ISC unveiling an anti-counterfeiting collaboration, Ecuador joining DesignView, and much more. Coverage this time from Trevor Little (TL), Bridget Diakun (BD), Jonathan Walfisz (JW)  and Tim Lince (TJL).

Market radar:

ICE HSI New Orleans makes huge pre-holiday counterfeit seizure – A month-long operation that covered Halloween, as well as the holiday shopping season, run by US Immigration and Customs Enforcement (ICE) and Homeland Security Investigations (HSI) New Orleans, resulted in the seizure of 33,000 counterfeit goods. The value of this confiscation was more than $8 million. The HSI-led operation took place in Louisiana, Arkansas and Mississippi. This counterfeit haul significantly exceeded the HSI New Orleans 2018 totals, which resulted in the seizure of 6,800 items valued at $800,000. Special agents began conducting surveillance of business locations in the week before Halloween. In the second phase of the operation they turned their focus to holiday gifts, intercepting items such as cell phones and wallets. During FY 2019 HSI as a whole has made more than 350 criminal arrests relating to IPR enforcement operations and has seized over $800 million in counterfeit goods. (BD)

Coty takes a majority stake in Kylie Jenner’s beauty brands – Coty has shelled out $600 million to up its stake in Kylie Jenner’s make-up and skincare businesses, according to a press release. Coty is an established name in the cosmetics industry and is hoping to combine its global distribution with Jenner’s social media reach. Jenner initially launched a makeup line in 2015 and saw immediate success, and in 2018 cosmetics sales raked in $360 million. Social media has allowed celebrities and other influencers to gain traction in the market to compete with more traditional cosmetics brands. Other brands such as Glossier, Jessica Alba’s Honest Beauty and Huda Beauty all rely on social media to drive sales and have each achieved a valuation of about $1 billion. This deal is a reminder to age-old brands that social media is an extremely valuable tool for engaging with consumers, and one that should not be ignored. (BD)  

Amazon and ISC unveil anti-counterfeiting collaboration – The Imaging Supplies Coalition for Intellectual Property Protection (ISC) and Amazon have signed a memorandum of understanding (MOU) that they state will “will initiate a new era of collaboration and intellectual property protection efforts between Amazon and ISC members”. Under the agreement, the ISC and Amazon will form a task force to facilitate knowledge sharing, enforcement against bad actors, and improvement of processes and tools. “All of the stakeholders of the imaging supplies industry and its customers are negatively affected by IPR infringing and misrepresented products,” reflected Allen Westerfield, president, ISC – adding: “Online shoppers can be particularly vulnerable and Amazon continues to be the most proactive and collaborative of marketplaces when it comes to fighting infringement. We have a common commitment to create safe and trusted online shopping experiences and we are excited and committed to expand our relationship with Amazon through this new and worthwhile endeavor.” Dharmesh Mehta, vice president, customer trust & partner support, Amazon, added: “We believe that collaboration is critical to successfully preventing infringement and partners like the Imaging Supplies Coalition provide effective forums that coalesce industry learnings so we can improve our tools while also educating brands about how best to use them.” (TL)

BlackBoiler issued patents for AI-assisted contract review tool – BlackBoiler, an AI-based pre-execution contract company, has been issued four patents from the USPTO for its AI-assisted review product. The company’s technology offerings are aimed at reducing the amount of time that legal professionals spend reviewing and marking up documents such as NDAs, service agreements, and other high-volume contracts. One of the approved patents, a “method and system for suggesting revisions to an electronic document,” is a component of BlackBoiler’s pre-execution technology for contract analysis, the patent  “suggesting edits to an electronic document” in instances “where the suggested revisions are similar to past revisions of similar documents.” The second, for “systems, methods, and computer program products for a clause library” relates to BlackBoiler’s smart clause library, which houses and manages an organisation’s standard negotiation clauses and organizes them by contract domain. Dan Broderick, co-founder and CEO of BlackBoiler, stated: “We believe our technology has the potential to drastically reduce inefficiency in the contract review process within law departments and law firms, and to actually improve the way attorneys handle this type of work.” (TL)

Legal radar:

JD.com looks to escalate spat with Alibaba over Singles Day mark – Caixin Global reports that e-commerce group JD.com is escalating its trademark battle with Alibaba over the rights to the name of China’s biggest shopping event, Singles Day. The outlet reports that, in 2017, China’s former Trademark Review and Adjudication Board found that five trademarks registered by JD.com were found to be too similar to trademarks Alibaba had previously registered, specifically its ‘Double 11’ marks (related to the Singles Day shopping event, which occurs on November 11). JD.com appealed, and late last week an open court hearing commenced in the Beijing Intellectual Property Court on the matter. In the hearing, JD.com reportedly argued that the trademarks, should be regarded as the common names of the shopping event, referring to the date it falls on. As we reported last week, this week’s Singles Day festival was a record-breaker, illustrating why capitalising on the shopping extravaganza is so crucial. (TL)

St Andrews dispute heats up – The University of St Andrews in Scotland has reportedly accused a retailer of selling trademark infringing replicas of their red graduation gowns. According to The Tab, the university has demanded that Churchill Gowns stop selling its red gowns, which are £60 cheaper than the original, and accused it of “infringing the St Andrews’ trademark”. The university further claims that the “main issue with Churchill Gowns” is its claim to be “official agents” that are “endorsed or affiliated with the university”. This is not the first time that a trademark profile featuring St Andrews has hit the headlines – earlier this year, WTR reported on St Andrews Links being accused of “aggressive enforcement” of its trademarks. (TJL)

Bentley case update – Earlier this month, we reported on the long-running trademark clash between Bentley Motors and Bentley Clothing. It followed the UK family-run fashion business prevailing at the UK High Court, with the company’s owner telling WTR that he believed Bentley Motors wanted to “make the litigation as lengthy and expensive for us as possible”. Last week, at a High Court hearing, the court ordered that Bentley Motors (and their agents) “must cease to infringe Bentley Clothing's trademarks by using the sign BENTLEY (where used alone as a sign) and/or the combination sign in relation to clothing or headgear in the UK”. Furthermore, the motor company was ordered to pay £412,943 to Bentley Clothing's solicitors “within 28 days” – although it will be held pending the resolution of any appeal or until permission to appeal is refused by the Court of Appeal. (TJL)

Office radar:

Ecuador joins DesignView – The EU Intellectual Property Office (EUIPO) has confirmed that Ecuador’s National Service of Intellectual Rights (SENADI) has added its data to the DesignView search tool. The addition of this data, totalling 2,600 designs, means that DesignView now has 14.8 million designs as part of its vast searchable database. According to the registry, “the integration of SENADI in DesignView is an activity of the IP Key Latin America programme directed by the European Commission and executed by the EUIPO”. (TJL)

Russia and Syria to cooperate on IP – The Russian Intellectual Property Office (Rospatent) has announced it has signed a memorandum of understanding with Syria’s Ministry of Internal Trade and Consumer Protection to cooperate in the field of IP. It followed a visit to Syrian capital Damascus by Rospatent head Grigory Ivliev. “The two parties will cooperate in the field of examination of industrial property objects, in particular with regard to the classification of industrial property objects, conducting a search to determine the level of technology, registering rights, resolving disputes, and exchange information regarding data processing systems, automated search systems electronic tools applied to classification systems, and a number of other issues,” Rospatent confirmed. (TJL)

INAPI urges electronic usage following mailbox damage – The Chilean Intellectual Property Office (INAPI) has confirmed that its mailbox and horofechador clock are not available for some IP rights requests due to damage that the registry’s institutional building recently suffered. For that reason, then, Chile’s Exempt Resolution has been modified to extend deadlines. However, the office primarily wanted to urge users to send correspondence using digital means. “We suggest using our electronic channels that are 100% enabled for all services,” the registry notes. “These measures aim to facilitate the processing of users who have been affected by recent events in the country.” The development comes weeks after INAPI extended all deadlines in the wake of a state of emergency in Chile following nationwide protests. (TJL)

Malaysia demands individual fee for international designations at WIPO – The government of Malaysia has made the declaration to receive an individual fee when designated in an international registration, according to a WIPO press release. From 27 December 2019 onwards, applications or subsequent designations for each class will cost 259 Swiss francs. Renewals for each class of goods or services will cost 236 Swiss francs. (JW)

Media watch:

Could Disney+ and others be leading to a growth in torrenting? – The plethora of streaming services now available to the public has given rise to a resurgence of torrenting, according to a Vice article. The number of streaming options has grown to include: HBO, Apple TV+, Disney+, CBS All-Access, Amazon Prime, Hulu, and Netflix with at least another platform to be launched by NBC. Each one of these streaming services has flagship shows, for example, the new Star Wars spinoff The Mandalorian on Disney+ to Netflix’s Stranger Things. According to the article, a subscription to every single one of the platforms would set you back $60.93 a month or $731.16 a year. Compared to the music streaming model, where a single service such as Spotify would largely cover all of your needs for a fraction of the price, it seems that for many, having comprehensive legal access to television will be prohibitively expensive. It is perhaps unsurprising, then, that there has been an uptick in torrenting in the last year. In the years prior, pirating content had declined, which was largely thought to be due to the cost effectiveness and ease of Netflix. Between 2011 and 2015, Bittorrent’s share of upstream traffic on North American broadband networks dropped from 52.01% to 26.83%. Visits to piracy websites dropped from 206 billion in 2017 to 190 billion in 2018. With this change reversing, questions are being raised as to the effectiveness of overcrowding in the streaming market. (JW)

OK BOOMER trademark filings roll in – Over on Twitter, Erik Pelton of Erik M Pelton & Associates has been keeping a close watch on USPTO trademark filings for variations of the term OK BOOMER. The phrase was most famously uttered by 25-year-old New Zealand lawmaker Chlöe Swarbrick to dismiss an older member of parliament for heckling her. As of today, the filing figure was up to five – the most notorious of which being an application from media company FOX – with one user replying to Pelton that their “guess on the final submission count [for] this year will be 15”. Outside of the United States, WTR has identified at least four more OK BOOMER trademarks around the world – two in the UK (here and here), one in Germany, and one at the EUIPO. It’s another reminder that any phrase that goes viral – from OK BOOMER to ‘Je suis Charlie’ back in 2015 – will almost always lead to a flurry of trademark applications around the world. (TJL)

On the move:

Quarles & Brady expands IP team Stephanie Vavra has been appointed to senior counsel within Quarles & Brady’s IP group. Vavra handles patent prosecution, portfolio development and portfolio management. She will be working out of the firm’s Milwaukee office. (BD)

Arnall Golden Gregory LLP expands its IP and FDA team – Arnall Golden Gregory LLP (AGG) has announced seven new attorneys joining its intellectual property and Food and Drug Administration (FDA) group. AGG’s Washington DC office will welcome partners, Kevin M Bell, Richard J Oparil, Scott AM Chambers, and of counsels, B Dell Chism, Caroline C Maxwell, and Carolina M Wirth. On the FDA side, they are also joined by Robert Durkin, former deputy director of the Office of Dietary Supplement Programs (ODSP) in the FDA’s Center for Food Safety and Applied Nutrition (CFSAN). (JW)

And finally...

Managing Trademark Assets returns to London Following the success of this year’s event, WTR’s  Managing Trademark Assets Europe will be returning to London on 28 January 2020. The event provides an opportunity for attendees to hear best practice and insight from leading in-house counsel from the world’s biggest brands as they discuss their approaches to critical areas, as well as share their own insights with peers and colleagues. For the upcoming event we are also increasing the interactive nature of the programme, introducing informal, small-group discussions on dispute resolution scenarios - allowing participants to workshop possible responses with their peers and colleagues. Among the other areas to be explored are budget management, dispute negotiation tactics, best practices around diversity and team building, and how to fight counterfeits on a finite budget. The current registration rate for the event is £395 (excluding VAT). To sign up to attend Managing Trademark Assets Europe, click here. (TL)

Jonathan Walfisz

Author | Reporter

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Jonathan Walfisz