News digest | World Trademark Review

News digest | World Trademark Review

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 new online trademark and designs service launched by the Swedish IP Office, the Babybel wax-coating trademark being invalidated, Malaysia’s deputy health minister praising plain packaging, scammers filing “fake trademarks” to hijack Instagram accounts, and much more. Coverage this time from Trevor Little (TL), Adam Houldsworth (AH), Bridget Diakun (BD) and Tim Lince (TJL).

Market radar:

Conspiracy? Problems raised in registered marks in Venezuela – An article in local Venezuelan media has detailed the ongoing challenges that US companies are having in registering their brands in Venezuela. According to one unnamed lawyer: “The majority of our clients are US-based companies, and they have to pay taxes there. They can’t pay anything in petros, directly or indirectly, because doing so could be considered ‘conspiracy’ under US law so, in practice, you can’t use them to register trademarks and patents. For the moment, we have no solution for this.” The article claims that, for IP firms in Venezuela, most clients are international due to the current domestic crisis in the country. The issue began following a March 2018 order from US President Donald Trump, which prohibitted US purchases of the Venezuelan cryptocurrency (the currency required to file at the local IP office). Furthermore, due to these question marks about how US companies can protect their brands in Venezuela, the International Trademark Association is “carrying out meetings to discuss possible solutions”. For rights holders, this is one to watch out for. (TJL)

Quarter of British people purchased fakes in last year New research from Incopro has found that 25% of UK consumers “have admitted to knowingly buying at least one counterfeit product in the last 12 months”. According to a summary of the findings, just 20% of people state that they have reported to an online marketplace if they unknowingly purchased fake goods – suggesting more work needs to go into raising awareness about the reporting function on e-retailers. (TJL)

Malaysia could implement plain packaging – Just a week after nation neighbour Singapore passed a plain packaging bill for tobacco products, Malaysia is reportedly considering implementing a similar measure. According to Free Malaysia Today, the country’s Deputy Health Minister Dr Lee Boon Chye spoke about how plain packaging could curb smoking in Malaysia. “This has been done in countries like Australia, and the results can be seen,” he said. “[Industry players] will cite reasons like the cost of the exercise and how it will affect their business or the intellectual property rights of tobacco companies. We are considering it. There is no timeline set. We have to study the matter and hold talks with stakeholders.” It appears, then, that the dominoes are continuing to fall when it comes to tobacco plain packaging. (TJL)

Scammers filings “fake trademarks” in bid to hijack Instagram accounts – In an article on Vice, reports of shady behaviour to take over Instagram have been reported. Specifically, scammers are reportedly “creating fake companies and trademarks to convince Instagram they should be the legitimate owner of a username in question”. This technique is being used to obtain control over potentially valuable Instagram accounts, and this activity is apparently ongoing and discussed on Instagram account trademark forums. For both Instagram and the USPTO (where a majority of these so-called ‘fake trademarks; are being filed), suggestions of fraudulent activity should be a concern. (TJL)

Legal radar:

Butlers in the Buff stops rival firm using its brand – UK company Butlers in the Buff, well-known for providing semi-naked men to serve food and drink at hen parties and other events, has struck a favourable settlement with competitor company Bufflers Entertainment over the use of its trademark. As well as agreeing to pay damages and costs, Bufflers has said it will reference to “Butlers in the Buff” from its website and marketing materials, it has been reported. Its CEO Adam Davey said the company had not been aware that the name had been trademarked and had complied with the rights holder every step of the way. (AH)

Babybel’s wax-coating mark invalidated – The UKIPO has cancelled Babybel’s trademark for the wax-coating of its cheese product. This follows a challenge by supermarket chain Sainsbury, which argued that the colours displayed in the application’s pictorial representation of the mark (which shows the colours white and fuschia) do not correspond to its verbal description (of a red mark) meaning that the overall representation of the trademark is not clear, precise or intelligible. Head of Trademarks Tribunal Allan James opined that in this case, in which the colour of the mark is important, “defining the colour with the broad description ‘red’ is insufficiently precise to satisfy the requirement for a graphical representation of the trade mark”. (AH)

Office radar:

IP Australia’s AI platform “more than just a chatbot” – The director of digital services, innovation and technology at IP Australia, Craig Stokes, spoke at an event this week about the huge success of its AI-powered chatbot ‘Alex’. Launched 2.5 years ago, the bot answers customer queries on the IP Australia website and is also able to perform more advanced functions. In an article on ZDNet, Stokes revealed that Alex now answers 40% of all of IP Australia’s customer interactions, reducing the staff need to answer such queries. Indeed, even more impressively, it has drastically reduced the number of phone enquiries that the office receives – from 12,000 calls a month in 2016 to 5,000 a month now “and still dropping”. He further explained: “I’m not saying Alex was the only intervention we had, but it was one of the main ones. The value for money and return on investment is quite good.” As well as reducing phone queries, Stokes spoke of other advantages as well: “One of the biggest values out of having a chatbot is that it shows off where you don’t have information, where processes are broken, what you’re doing wrong. Even if the chatbot can’t answer it, you’ve captured that data, you can analyse it, and go back to it.” It appears, then, that IP Australia is seeing real advantages from having an AI-powered chatbot on its website. Surprisingly, relatively few other IP offices have such a tool implemented (the Finnish IP office launched one late last year) – but evidence suggests that an investment in a chatbot could be worth considering for registries. (TJL)

Sweden launches new trademark and designs online service – The Swedish Patent and Registration Office (PRV) has launched a new service that allows users to file trademark and design oppositions online. The new digital is part of the Software Package Front Office, a tool developed under the auspices of the European Cooperation Fund, and it is the 15th new e-service the PRV has launched in the past 12 months in cooperation with the EUIPO. According to a blog from the EUIPO, the PRV’s online services platform is expected to serve around 13,000 applications per year. (TJL)

On the move:

Potter Clarkson appoints new managing partner – Potter Clarkson has appointed Steve Smith to the position of managing partner, according to a recent press release. Smith has been with the firm since 1998, becoming partner in 2007. He replaces Colin Baker, who was in the role for five years. Potter Clarkson has undergone a recent expansion, opening up three new offices in 2018 (London, Stockholm and Copenhagen). (BD)

Krieg DeVault names new IP partner – US general practice firm Krieg DeVault has appointed Daniel Tychonievich to its business, acquisitions and securities practice group as a partner. An IP law specialist, Tychonievich is experienced in both patent and trademark portfolio management – including oppositions/cancellations and prosecution – as well as litigation. He is based in the firm’s South Bend, Indiana office. (AH)

Friday catch-up:

Every Friday in our news round-up we will provide a quick rundown of the latest news, analysis and intelligence posted on World Trademark Review. Over the past week we:

  • Published an exclusive interview with Alica Del Valle, lead counsel for IP, marketing, PR and content at Airbnb, who expanded on the Silicon Valley company’s fast-changing trademark strategy, what it demands from law firm partners and the creation;
  • second exclusive interview was published, this time with Batur Oktay, who leads Starbucks’ IP committee, who explained how the company is working with Chinese authorities to tackle counterfeiting and provides insights into its changing prosecution strategy;
  • Looked at a letter from MARQUES, which wrote to ICANN calling for a data-led review of the UDRP when the process kicks off, stating that “there should be no changes to the UDRP unless such changes are based upon fact”;
  • Our Tuesday digest looked at numerous stories including plain packaging being passed in Singapore, a discussion about cat photo trademarks and a new report showing 70% of Kenyans use counterfeit goods;
  • Analysed a new report which found Jones Day is the strongest law firm brand in the United States for the third year running. However, on this year’s Acritas US Law Firm Brand Index, Skadden is rapidly closing the gap;
  • Spoke about the wider implications of the news that IP solutions provider Anaqua has received a significant investment from European private equity firm Astorg – a move the company says will “accelerate Anaqua’s growth in the rapidly expanding IP management space”;
  • Looked at how Toys “R” Us officially emerged as a new company, and how this development serves as an illustration of the power that resides in strong brands; even those that have gone through troubled times.

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