25 Aug
2020

TikTok sued; first sound trademark in Saudi Arabia; Amazon counterfeits post goes viral – news digest

Every Tuesday and Friday, WTR presents a round-up of news, developments and insights from across the trademark sphere. In our latest round-up, we look at a massive haul of counterfeit golf products seized in China, Singapore rolling out new IP initiatives, CNIPA being asked to invalidate a tobacco company’s trademark for violating the principle of good faith, and much more. Coverage this time from Trevor Little (TL), Bridget Diakun (BD), Joyce Ng (JN), Jonathan Walfisz (JW) and Tim Lince (TJL).

Market radar:

Singapore to roll out new IP initiatives – Singapore’s Minister for Culture, Community and Youth, and Second Minister for Law, Edwin Tong, officially opened Singapore’s annual IP Week event with a pledge to roll out more initiatives to help businesses use intellectual property to thrive during the covid-19 pandemic. Specifically, he  announced new initiatives to speed up registration for trademarks and registered designs; expand the features of IPOS’ trademark registration app (to include search functions for domain names and social media account names) and to build IP mediation experience among youth. He explained:  “Concrete initiatives to empower companies in capturing opportunities through IP are already in place, with more on the way. We are accelerating those in the pipeline to support companies through the pandemic. We want to upskill enterprises’ IP capabilities and help businesses obtain quicker and easier IP protection.” WTR is dialling in to the virtual sessions taking place this week as part of IP Week and will provide full coverage in the coming days. (TL)

Fleet footed CBP seizes fake sneakers – US Customs and Border Protection (CBP) officers assigned to the Los Angeles International Airport cargo operations, in coordination with import specialists at the Apparel, Footwear & Textiles Centre of Excellence and Expertise, have seized 1,755 pairs of Nike and Adidas counterfeit shoes arriving via express air cargo from Hong Kong. The seized items included 597 pairs of counterfeit Nike Air Force One shoes and 918 pairs of other counterfeit Nike shoes, as well as 48 pairs of Adidas Mickey Edition shoes and 192 pairs of other counterfeit Adidas shoes. If genuine, the authorities state that the seized merchandise would have had an estimated manufacturer’s suggested retail price of $207,000. “CBP is using all of its authorities to combat trade fraud by detecting high-risk activity, deterring non-compliance, and disrupting fraudulent behavior,” stated Carlos C Martel, CBP director of field operations in Los Angeles. “CBP continues using all methods at its disposal—including enhanced targeting and inspection of high-risk imports—to ensure a fair and competitive trade environment.” (TL)

TaylorMade commends Chinese police after massive golf counterfeits haul – In what Golf Digest has described as “the largest counterfeit golf equipment seizure in history”, 120,000 fake products related to the golf industry have been seized this week in China. The raid follows collaboration between the US Golf Manufacturers Anti-Counterfeiting Working Group and over 100 local police officers in Shanghai, who raided 10 facilities across the area. It is understood that around 15 people were detained. In subsequent comments to the media, TaylorMade’s legal counsel, trademark and brand protection, Kristin Strojan, said: “We are thrilled that Chinese police were willing to take serious action against online counterfeits even during the pandemic. Counterfeiters have been taking advantage of the current situation, and counterfeit listings have become more rampant on the internet.” (TJL)

The rise of counterfeit podcasts? – Over on Digiday, Max Willens has reported on the rise of ‘podcast counterfeiting’, with Spotify’s Anchor platform the centre of attention. Specifically, Willens notes that podcast creators have been alleging that Anchor, which allows anybody to create and distribute podcasts for free, has been host to dozens of shows with the same names as popular podcasts, including ‘Serial’ and ‘The Joe Rogan Experience’. Willens suggests that the fake shows appear designed to entice listeners with their copycat name and be monetised through adverts automatically inserted by Anchor’s technology. In response, a Spotify spokesperson told the media outlet that it has taken down the shows in question and has multiple detection measures in place to detect, investigate and deal with such activity. It is a reminder, however, that no platform is safe from opportunists seeking to ride the coattails of others. (TL)

Reality star mugged off by ‘tashin’ on’ trademark – UK reality TV show star Vicky Pattison has detailed her dissatisfaction registering a trademark for the phrase ‘tashin’ on’, reports the Metro. The phrase – which means ‘to kiss’ – was a mainstay of her dialogue in the show Geordie Shore. Speaking on the podcast ‘The Secret To’, Pattison explained that she was advised to seek registration for the phrase by her agents. However, she characterises the move as the “worst two grand I ever spent, I’ve never f***ing used it”. She explained she “had terrible agents and … was poorly advised as a youth”. The podcast host quipped that she’d “start using it now, so you get your two grand’s worth”, with Pattison outlining her hope to bring out a line of cosmetics. (JW)

Law firm warns of IP Australia fee rises – Davies Collison Cave has posted a blog warning rights holders to “act now” to avoid upcoming fee changes at IP Australia. In the blog, a firm representative explains that various fee rises for patents, trademarks and designs are due to be introduced from 1 October 2020. From a trademarks point of view, some of the fee increases include an application fee increase of $70 (from $330 to $400 per class) and a $200 fee rise for attending an oral hearing. “We recommend taking the following actions before 1 October 2020: pay any upcoming standard patent renewal/maintenance fees, particularly for extended pharmaceutical patents; file any trademark applications not using the IP Australia pick list of goods and services; and pay any upcoming design renewals,” the firm states. (TJL)

Legal radar:

The Terrible Mask accused of terrible trademark infringement – The Eamon Foundation has accused the owners of ‘The Terrible Mask’ of trademark infringement against its brand ‘The Terrible Towel’. The foundation’s brand was created over 40 years ago by American sports journalist Myron Cope. The rights to The Terrible Towel were passed on to the Allegheny Valley School in 1996, a non-profit school that provides homes and in-home care to intellectually and developmentally disabled people. The school was renamed as the Eamon Foundation in 2016. The suit claims that Terrible Mask manager, Charles Goldberg, is infringing upon its trademarks. However, Goldberg claims he has a written non-interference agreement from Cope in 1978 which allowed him to sell goods bearing the word ‘terrible’. (JW)

TikTok sued over alleged copyright infringment – VNG, a Vietnamese technology firm, has sued TikTok arguing that the company does not have the proper licences for the songs being used in its video, reports Reuters. Further, the company alleges that TikTok has used audio tracks that are owned by its subsidiary Zing without its consent. The legal document filed by VNG at the People’s Court of Ho Chi Minh City says, “VNG requests TikTok remove all music segments taken from Zing records from both the TikTok application and website, and an indemnification for damages of over 221 billion dob ($9.5 million)”. There have been complaints in the past by music rights holders who have said that TikTok does not have sufficient licenses for the songs it uses in its video. The Vietnam Music Association told reporters from Reuters, “Notably, TikTok has introduced a very complicated business model to avoid copyright compliance in Vietnam.” (BD)

Office radar:

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

First sound mark registered in Saudi Arabia – The first sound trademark has been registered by the Saudi Authority for Intellectual Property (SAIP). Saudi Arabia first brought in legislation that would allow sound marks, alongside other non-traditional marks, in 2016 with the Gulf Cooperation Council (GCC) Trademark Law. At the time, it was the third country to adopt the GCC Trademark Law after Bahrain and Kuwait. They have since been joined by Oman, Qatar and the UAE. (JW)

Media Watch:

CNIPA asked to invalidate tobacco company’s trademark for violating the principle of good faith – The Chinese Association on Tobacco Control (CATC) has appealed to the China National Intellectual Property Office (CNIPA) to invalidate a Chinese tobacco company’s trademark for 天眼 (TIANYAN or ‘sky eye’), which is the nickname for the country’s five-hundred-meter Aperture Spherical Radio Telescope (FAST) operated by the National Astronomical Observatories (NAOC). Since registering the trademark in 2017, the Hongyunhonghe Tobacco Group in Yunnan Province has been producing cigarettes branded with ‘Tianyan’ and ‘FAST’, while featuring an image of the telescope against a backdrop of planets and stars on the packaging. The CATC claims that the tobacco company is violating the principle of good faith in Chinese trademark law and using the telescope’s reputation to mislead and deceive customers. National pride is another issue, as the project is a national achievement and the world’s largest single-dish radio observatory. According to IPR Daily, there are 49 TIANYAN word marks and 119 TIANYAN-related trademark registrations and applications in China, among which the tobacco company has three successful applications in class 34 (and four rejected, including TIANYAN and TIANYAN FAST), while the NAOC has two in class 34 for CHINA TIANYAN and FAST. In a comment to Sixth Tone, Beijing-based lawyer Li Enze says that the tobacco company may have violated trademark law, because symbols of national entities and symbols that mislead consumers about a product’s quality or place of origin cannot be registered as trademarks, though IP lawyer Zhang Bo points out to Global Times that trademark law has not set limits on using the names of China’s national major science and technology projects. (JN)

Amazon counterfeiting post goes viral – A Reddit thread on why Amazon “has a serious problem with counterfeit goods” has gone viral in the past 24 hours, with over 62,000 upvotes and appearing on the social network’s homepage. The post focuses on Amazon’s ‘commingled inventory’, wherein Amazon holds third-party products in its warehouses to ship to buyers. The issue, the user states, is that “Amazon treats all items with the same SKU as identical”, expanding: “If you go and buy something from Amazon, you'll be sent a product that literally anyone could've sent in. It's basically become a big flea market with no accountability, and even Amazon themselves don't keep track of who sent in what. It doesn't matter if you buy it directly from Amazon, or a third-party seller with 5 star reviews, or a third-party seller with 1 star reviews.” Furthermore, the user claims that they’ve noticed complaints about counterfeits are appearing on a significant proportion of product listings on Amazon – including claims that users are posting reviews with photos of “fake products, items with needle-punctures in the safety seals, etc”. Of course, the issue of commingling has been covered on WTR before, while Amazon continues to expand its anti-counterfeiting offerings. However, the issue of fakes continues to blight Amazon and viral threads like this only spread awareness of the problem for the e-retail giant. (TJL)

On the move:

Spruson & Ferguson appoints principals –  Spruson & Ferguson has announced the appointment of four new principals across the firm as part of the 2020 promotions. The appointments have been made in the firm’s Sydney, Melbourne, Singapore, and Hong Kong offices and were part of a broader group of ten promotions made firm-wide.  Alongside the four principal appointments, four senior associate and two associate promotions were announced – with trademark attorney Rhiannan Solomon elevated to senior associate. (TL)

David Stein joins Brown Rudnick – Brown Rudnick has appointed David Stein to partner within the firm’s Orange County office. He is now a member of the firm’s intellectual property and commercial litigaiton practice groups. Stein has over 20 years of experience and has handled over 100 patent litigation cases. (BD)

Two attorneys join Ulmer & Berne’s IP team – Courtney J Miller and Dougls A Gastright have joined Ulmer & Berne’s intellectual property and technology practice group as counsel and associate, respectively. Miller will be working out of the firm’s Columbus office and Gastright in the Cincinnati office. Miller is a registered patent attorney who focuses his practice on patent procurement, IP portfolio management, patent opinions, technology development and commercialisation, technology transactions as well as regulatory issues involving medical devices. Gastright focuses primarily on patent law but he is also experienced in licensing, contract and transactional law. He further handles the preparation and prosecution of patent applications across technology fields. (BD)

And finally...

How WTR is connecting trademark leaders this October – WTR recently unveiled the first  participants for WTR Connect, a series of high-level online events taking place across two weeks in October. Experts from companies including Abercrombie & Fitch, Burberry, Novartis, Starbucks, Under Armour and Walmart joining the roster, with Christian Archambeau, executive director at the EUIPO, confirmed to deliver a keynote. The ground-breaking digital concept offers a series of individual interactive digital sessions organised around major themes. Comprised of a series of hubs, each session is designed to facilitate discussion, benchmarking and the sharing of best practice around key topic areas and challenges facing trademark and brand leaders. Each day will start with a keynote address from a major industry figure. This will be followed by live breakout discussions lasting for a maximum of 60 minutes. These will be in a variety of formats including masterclasses, open discussion forums, solution rooms and closed-door, invite-only boardrooms. To find out more and to secure your place at WTR Connect, click here.

Jonathan Walfisz

Author | Reporter

[email protected]

Jonathan Walfisz