World Trademark Review (WTR) is the world’s only independent multimedia publication dedicated exclusively to reporting on trademark issues for in-house and private practitioners internationally. The following are a list of blog posts I have written for WTR during my tenure there.
Lessons from litigation – the Ohio State/Skreened dispute and what it means for brand owners
United States – Last week Ohio State University was victorious in a trademark dispute with Columbus-based T-shirt maker Skreened, which centred on the use of trademarks in designs uploaded by consumers. The results of this case should serve as a warning to custom manufacturers and platforms which include content provided by users in end products.
Content provider turns to trademark law in battle against illegal content sharing
United States – While Dallas Buyers Club made waves in the showbiz world when it scooped both the Academy Awards for Best Actor and Best Supporting Actor at this year’s Oscars ceremony, the film is now set to make headlines in the trademark world as the production company responsible for bringing the movie to the big screen uses trademark law as a weapon against illegal downloaders.
Brands hold the key to the future success of the UK’s IP Crime unit
United Kingdom – Whether it relates to fighting illicit trade, or securing funding for the unit or increasing the level of IP crime reporting by brands, the challenges facing the City of London’s Police Intellectual Property Crime Unit (PIPCU) are numerous. Speaking exclusively to World Trademark Review, detective chief inspector Andy Fyfe, head of the unit, has suggested that brand engagement holds the key to the unit’s future success.
Lawyers react to Commission recommendations on groundless threats reform
United Kingdom – The Law Commission has published its proposals for reform of the groundless threats regime, a move which one practitioner feels will help further encourage a ‘negotiate first, sue later’ approach in UK trademark disputes.
When two become one – the complications of joint mark ownership
International – DC Comics and Marvel were in the news this week after a British author complained over a notice opposing the use of ‘Superhero’ in the title of his advice book Business Zero to Superhero. In many respects this is a straight trademark dispute, but it does have an interesting dimension, the joint ownership of trademarks.
Mega Brands responds to criticism over Call of Duty licence agreement
International – Canadian toy maker Mega Brands licensing deal with Activision, the video games publisher behind the widely successful game series Call of Duty has come under fire from advocacy groups and politicians amid concerns that the partnership exposes children to adult content. The company has hit back at the criticism, but the debate highlights some of the issues that can arise when licence strategies become reality.
Problem of brands funding illicit websites persists
International – The UK’s Police Intellectual Property Crime Unit (PIPCU) has launched its Infringing Website List (IWL), which is designed to provide the digital advertising sector with an up-to-date list of copyright infringing sites that they should avoid placing advertising on. The initiative follows other recent efforts to disrupt advertising on websites that infringe copyright and trademark rights, and trademark counsel have a critical role to play in such initiatives.
Coty-Alibaba dispute keeps host liability on the trademark legal agenda
International – Following Alibaba’s recent call for increased brand owner co-operation, World Trademark Review has been contacted by one trademark practitioner who has expressed frustration with the prevalence of counterfeit products on the site and argues that the e-commerce giant should be under certain obligations to filter out fake goods.
Canadian counsel divided over new trademark regime proposals
Canada – While proposals to switch the statutory spelling of ‘trade-mark’ to ‘trademark’ have been welcomed, other aspects of Canada’s new trademark bill are proving more divisive.
Prepare for the non-traditional mark take off
International – While there remain significant obstacles to overcome before registering non-traditional trademarks, given recent legal and technological developments one practitioner suggests that we could soon see non-traditional marks become mainstream marketing tools on both sides of the Atlantic.
Collective brand ownership set to be trademark counsel’s next major challenge
International – Trademarks play an essential role in guaranteeing the origin of goods and services. But what happens when a brand is used by multiple partners and consumer perceptions of ownership becomes blurred? According to one brand expert, trademark counsel need to prepare now for a future in which collective brand ownership becomes an everyday challenge.
Global leader in trademark law is honoured by the IP Hall of Fame
International – The 2014 inductees to the IP Hall of Fame have been official unveiled, and include one of the world’s leading trademark practitioners.
3D printing – balancing the risks against the opportunities
International – The potential threat to trademarks represented by the development of 3D printing technology has been much discussed, with the technology ushering in an era when the copying of goods as diverse as toys, food, fashion and firearms becomes mainstream. However, according to one technology expert, brands should learn from the mistakes of the past and consider the opportunities presented by this revolutionary technology, as well as preparing for the obvious risks.
Alibaba needs your help in the fight against fakes
International – Online marketplace Alibaba has been the focus of increased counterfeit policing for many trademark counsel – in this year’s Global Benchmarking Survey (the results of which will be analysed in the next issue of World Trademark Review), the site was most frequently cited when counsel were asked which sites are the biggest enforcement concerns. However, the Chinese site’s corporate counsel this week outlined how it is fighting back against the sellers of fakes – and crucially called for more help from brand owners.
When infringement becomes an opportunity
International – Fashion designer Jeremy Scott is never far from controversy. Having previously been criticised for designing adidas trainers featuring rubber shackles, and accused of plagiarising designs from Santa Cruz Skateboards, his latest runway collection plays homage to iconic American brands, re-styling trademarks such as McDonalds’ into desirable wearables. The move has led some to question how far the move dilutes the marks in question. An equally valid question is how great an opportunity it provides for brand owners to celebrate their famous marks.
The logic in King’s Candy Crush trademark strategy
United States – Following a wave of media coverage and a developer community outcry over its attempts to prevent others from using CANDY with respect to online games, King, publishers of the popular gameCandy Crush Saga, has filed to abandon its CANDY trademark at the USPTO. While the move is being characterised as the prevailing of common sense, for King there are some distinct pluses to come out of the furore.
Law scholar slams universities over misuse of trademark law
United States – For decades universities, like their commercial counterparts, have been expanding their trademark portfolios, with the $4.6 billion industry for licensed merchandise an important revenue stream. However, one academic sector voice has accused such higher education institutions of misusing trademark law, going too far in a bid to create licensing revenue.
Lessons in market expansion as Tesco prepares to drop brand in China
China – UK supermarket chain Tesco Plc is reportedly dropping its brand in China and entering into a joint venture with domestic retailer China Resources Enterprise (CRE). For those seeking to exploit the Chinese market, there are a number of strategies that can be employed – with the correct treatment of IP critical to success.
James Dean Twitter dispute tackles rights of publicity in social media
United States – Celebrity rights licensing agency CMG Worldwide has sued Twitter for allowing one of its users to tweet under the name of deceased silver screen icon James Dean. While disputes over Twitter handles are not new, its argument that the account violates the estate’s rights of publicity is noteworthy.
Taking on a goliath: WTR talks to The Glee Club about its dispute with Fox
United Kingdom – A trademark battle between a UK comedy club and an international entertainment studio has been ruled on by the High Court of England and Wales. While initially daunted by the prospect of taking on such a battle, the comedy club owner told WTR that confusion on social media proved important when evidencing confusion.
LEGO, the porn star and lessons in brand protection
Denmark – When an adult film star announced a contest via Twitter offering sexual gratification for anyone who built her the best LEGO creation, it was perhaps no surprise that the competition received many submissions from fans wishing to meet Christy Mack. Equally unsurprising is that LEGO’s trademark team quickly swung into action. The dispute shows the benefit of taking a bespoke approach to social media brand protection.
Copyright and trademarks: the perfect marriage in China?
China – The latest official statistics show that 2013 was a record year for copyright protection in China with more than 845,000 publications registered – a 23% year-on-year rise in copyright registrations. This increase can be attributed to a number of factors but one question is whether IP owners are now choosing to protect their logos through copyright registration instead of through trademark protection. If this is a trend, is it a strategy that counsel should consider when looking to protect their marks in China?
The undiscussed trademark implications of 3D printing
International – Much has been written about 3D printing in both mainstream media and the IP press, with WTR previously identifying the rise in 3D printing technology as a trend for trademark counsel to monitor. To date, much of the discussion has centred on the reproduction – and potential counterfeiting – of such goods as sneakers, spare parts and firearms. However, the news that confectionary products have been successfully printed illustrates that those in the food and pharmaceutical sectors should be paying close attention to this new technology.
Johnny Football’s trademark challenges illustrate the value of expert advice
United States – Late last year WTR highlighted the case of college football sensation Johnny Manziel and the difficulties facing student athletes when attempting to prepare their brand for future commercialisation. With Manziel announcing himself available for the NFL draft, he will finally be able to profit from his name and likeness, and his future brand strategy should prove an interesting case study as it concerns a brand that has already been commercialised by others.
The game is afoot in Sherlock trademark dispute
United Kingdom – Sir Arthur Conan Doyle’s Sherlock Holmes has arguably never been more popular. From CBS’s Elementary, to recent Hollywood blockbusters and the BBC’s hugely successful Sherlock, the world has gone mad for the fictional super sleuth. However, a recent dispute over the SHERLOCK trademark is one that counsel and rights owners should follow with interest if considering whether to trademark a title.
Despite Pinterest’s trademark dilemma, counsel now have more reason to watch the site
European Union – Content-sharing social network Pinterest begins 2014 with the prospect of being forced to change its name in Europe in order to resolve a trademark dispute with British start-up Premium Interest. Whatever the outcome of its dispute, it remains a site for trademark counsel to monitor, especially given its latest acquisition.
Was “lazy” Australian accent really the key to fashion designer’s trademark victory?
Australia – It has been reported by several media outlets that the key to fashion designer Stella McCartney’s victory in a trademark dispute against a Chatswood-based cosmetics company – and subsidiary of Melilea International – was that the mark would cause confusion when said in a “lazy” Australian accent. While this is perhaps a novel argument, according to one commentator it is a bit of a red herring.
Following the scent to brand differentiation is not without difficulties
International – Major fashion labels such as H&M, Calvin Klein and Jimmy Choo are among a list of global brands using ‘olfactive logos’ in an attempt to heighten consumer connections, increase revenue and enhance brand loyalty. While research shows that scents can be more memorable than other stimuli and therefore a clear choice for branding, there are still significant obstacles for brands to overcome before they utilise these non-traditional trademarks.
Ferrari adopts tailored approach to prevent fan prancing with trademark
Italy – Iconic luxury car maker Ferrari’s recent victory in a trademark dispute against a group of car enthusiasts, while notable as a landmark one in Italian trademark law, also provides pointers for trademark counsel on how they should approach enforcement when the infringement is by fans.
Infringement of pharmaceutical trademarks is not what the doctor ordered
United States – Kitson, a Los Angeles boutique, has found itself in the crosshairs of a pharmaceutical giant for using a trademarked prescription drug name, Vicodin, on its clothing designs. This case raises interesting questions on whether the parody or commentary of a registered trademark can triumph over a brand owner’s duty to act on public health grounds against alleged infringers.
Could latest trademark battle put AdWord disputes back on the litigation agenda?
United Kingdom – AdWords returned as a trademark battleground this week with UK cosmetics company Lush taking Amazon to the High Court of England and Wales, claiming trademark infringement. Following the Interflora ruling earlier this year, the issue of keyword use remains a live topic in the UK courts.
Burberry plots next move in bid to avoid trademark checkmate
China – A decision by the Trademark Office of the State Administration for Industry and Commerce of the People’s Republic may result in the UK’s largest luxury-goods maker, Burberry, losing the exclusive rights to its iconic tartan, known as the ‘Haymarket Check’, in China. However, the brand is not out of moves yet.
Lessons from ABG’s expanded portfolio of iconic celebrity brands
United States – This week the Authentic Brands Group (ABG) completed the purchase of the iconic Elvis Presley and Muhammad Ali brand portfolios, adding to the Marilyn Monroe brand it already owns to create one of the most valuable celebrity portfolios. While celebrity brands can be very lucrative for their owners, trademark counsel should remain vigilant to their challenges of protection and enforcement; after all iconic brands are not merely trademarks.
gTLDs set to make social networks redundant for brands?
International – New research from registry services provider Afilias has suggested that the launch of branded generic top-level domains (gTLDs) may start a decline in the number of brands relying on external social networks. However, the policing challenge will remain the same, if not increase.
Starbucks falls prey to accusations of bullying in trademark dispute
Thailand – Damrong Maslae and his brother Damras are two independent Thai coffee vendors who have recently become caught up in what has been labelled a ‘David vs Goliath’ battle after their company Starbung was sued by Starbucks for trademark infringement. While the case has now been settled, it highlights the difficulties facing trademark counsel who are concerned that certain enforcement actions could lead to negative publicity.
UK top-ranked jurisdiction for trademarks in Taylor Wessing Global IP Index
United Kingdom – The United Kingdom has been ranked as the top jurisdiction for trademark rights in law firm Taylor Wessing’s fourth Global IP Index (GIPI), which was released in London this week. The GIPI survey provides a comprehensive assessment of how the IP regimes of 36 key jurisdictions compare with each other, measuring their attractiveness for obtaining, exploiting, enforcing and attacking various IP rights.
Zynga’s scramble for protection illustrates financial importance of IP
International – The UK High Court’s decision that Zynga’s ‘Scramble With Friends’ word game for mobile devices does not infringe the SCRABBLE trademarks of the world’s largest toy manufacturer is the latest court victory for the social games company. Zynga appears to be aggressively policing its trademark rights and its increased proactivity has coincided with a rally in the company’s share price. While a clear link between the two is hard to evidence, the relationship between IP protection and business success should not be underestimated.
Proposals to donate counterfeit goods without trademark owner consent stir debate
Slovakia – (This article has been updated – the new information is italicised below) The donation of seized counterfeit goods to charity is a much-debated topic and the discussion has stepped up following the announcement of the Slovak Republic’s proposed new customs legislation, which would allow for the donation of seized counterfeit goods to charitable organisations without the consent of trademark owners.
Spoof cease and desist letter highlights public cynicism towards trademarks
United States – A satirical cease and desist letter sent by the American Mustache Institute (AMI) to the Boston Red Sox’s baseball team – which currently feature a high number of facial hair-sporting members – has gone viral after several major news agencies ran the story. While the agencies all appear to get the joke, comments made by members of the public suggest some believe otherwise – is trademark law really viewed that cynically?
Shaping the perception of the battle: the role of PR in trademark disputes
United States – Harper Lee, the author of “To Kill a Mockingbird” has sued her hometown’s museum or the unauthorised commercial “use of the protected names and trademarks of ‘Harper Lee’ and ‘To Kill a Mockingbird’”. The museum claims to be exercising freedom of expression, and celebrating Harper Lee and her novel, which was set in a fictional town based on the town where the museum is now located. A number of factors make the dispute noteworthy, beyond the headline-grabbing appeal of the Pulitzer Prize-winning author’s name – not least the way that concerns over public perception can influence litigation tactics.
Time for a legal overhaul or business as usual?
United Kingdom – This month two iconic brands, Cadbury and Scrabble, lost cases centred on the registrability of non-traditional trademarks in the UK’s Court of Appeal. While the two decisions are consistent with each other, one commentator believes that these cases show the complicated nature of trademark law (with even specialist judges finding it hard to interpret it), and has called for a new statute-based law to be implemented.
Fame and infamy: the trademark challenges
International – Last month the government of Colombia denied the request of family members to register a trademark for the name (alongside the fingerprint and signature) of the notorious criminal and head of the Medellin drug cartel, Pablo Escobar. For families looking to protect or profit from the name of an (in)famous relative, there is a delicate balancing act between the right of publicity and registering a mark that offends morality.
The dangers of disparagement when seeking trademark protection
United States – Islamophobia and Islamisation are hot-button topics and a group that has previously ran provocative advertisements in the New York City subway has hit out at the USPTO after it concluded that its trademark was disparaging to American Muslims. The dispute highlights the ever-developing issue of immoral,
scandalous and disparaging trademarks.
Lessons in brand protection from college football’s biggest name
United States – Last week WTR outlined commercialisation strategies for personal brands in light of soccer star Gareth Bale’s world record transfer to Real Madrid. For companies wanting to establish commercial relationships with sport personalities, the key is to establish relationships as early as possible. Yet when it comes to student athletes in the US, additional barriers exist. College football sensation Johnny Manziel – or ’Johnny Football’ as he is more popularly known – is at the center of several trademark infringement lawsuits which highlight the difficulties facing student athletes and the brands wishing to work with them.
How do you manage a global brand like Bale?
International – WTR has previously tackled the advantages and pitfalls of working with celebrities in product endorsement deals. But what of the celebrity perspective? In the week that soccer’s former Tottenham midfielder Gareth Bale broke the world transfer record following his £85.3 million (€100 million) move to Spanish La Liga side Real Madrid, WTR considers how best to commercialise a brand like Bale.