Every Tuesday and Friday, World Trademark Review presents a round-up of news, developments and insights from across the trademark sphere. In today’s edition, we look at the European Commission beginning a public consultation for its global counterfeit and piracy watch-list, another new innovation in anti-counterfeiting, a flurry of trademark activity related to the Super Bowl, and an initiative by INTA which helped homeless people in New York. Coverage this time from Trevor Little (TL), Tim Lince (TJL), Adam Houldsworth (AH), and Timothy Au (TA).

Legal Radar:

Grumpy Cat owner wins huge payout in meme trademark dispute – A California jury last week awarded the owner of the GRUMPY CAT trademark and copyright over $700,000 in damages. Tabatha Bundesen registered the rights after an image of her cat went viral in 2012. Having entered into a deal with the Grenade Beverage Company to use the branding for a Grumpy Cat Grumpuccino coffee product in 2013, Ms Bundesen took the company to court in 2015, alleging that its use of the image for a roasted coffee brand and T-shirts were not covered by the agreement, and that it had therefore infringed her trademark and copyright. After the decision in her favour, Bundesen’s counsel David B Jonelis said that the verdict set an important precedent confirming that “memes have rights too”. (AH)

Blow for Whole Foods as Ninth Circuit reverses win – A Ninth Circuit panel in the United States has reversed a lower court’s ruling in favour of retailer Whole Foods against Eat Right Foods Ltd regarding use of the EATRIGHT trademark. As reported by Reuters, the Ninth Circuit found the case had been unfairly tossed due to Eat Right's delay in bringing a complaint, and has been moved back to the district court. The full decision goes into detail in explaining laches and acquiescence affirmative defences in relation to trademark infringement. (TJL)

Elvis Presley estate loses BREWDOG ELVIS JUICE appeal – Scottish craft beer brewery BrewDog has won a partial victory in a UKIPO appeal against the Elvis Presley estate, which had opposed its registration of ELVIS JUICE and BREWDOG ELVIS JUICE. The estate enjoyed success initially, persuading the office that the applications would be confused with its own ELVIS trademark, and being awarded £1,500 in costs. But the UKIPO has now partially reversed its decision, granting permission to BrewDog to register BREWDOG ELVIS JUICE – though not ELVIS JUICE – and cancelling the costs award. Explaining the latest finding, Phillip Johnson stated: “On balance I do not think that the hearing officer was entitled to take judicial notice that beer consumers who see the word Elvis will always think of Elvis Presley. It is well beyond day-to-day knowledge and is based on supposition. Such a finding would therefore require evidence... The two marks are too different for there to be direct confusion. Even with imperfect recollection, the average consumer will not mistake Brewdog Elvis Juice for Elvis.” Accounting for the decision to grant one application and not the other, he said: “In general, consumers are more likely to remember the first word of a mark.” (AH)

Supreme celebrates Italian counterfeits legal win – Trendy fashion brand Supreme is celebrating recent wins in Milan and San Marino courts related to the sale of counterfeits in Italy. According to Hyperbeast, Supreme has become increasingly popular in Italy due to recent collaborations with Louis Vuitton and Nike. As so often happens, this rise in popularity led to a parallel increase in the sale of counterfeit goods. However, after taking the issue to court, approximately 120,000 fake goods were seized (although there’s no information on whether Supreme were awarded any monetary damages). The New York streetwear company is an expert in branding, so much so it was able to sell a brick with its logo on for $30, with resales reaching $1,000 on eBay. That prestige is only made possible, of course, from stringent trademark enforcement. (TJL)

Market Radar:

Flurry of trademark activity ahead of the Super Bowl – In the run-up to the Super Bowl, a whole host of teams, players and, increasingly, fans are all scrambling for a slew of rights to various symbols, slogans, images and numbers. This is unsurprising as the event often goes hand in hand with trademark activity; but, as noted by Philly.com, more fans than ever are now trying to profit from their own trademark endeavours – most recently with attempts to profit off Eagles-themed gear and the use of Eagles quarterback Carson Wentz’s image and name. Conor Corcoran, a Philadelphia trial lawyer who focuses on IP law, believes that Eagles fans are “wasting their time” trying to trademark football slogans, since their value is fleeting and the chances of profiting from them are very low. The NFL itself also frequently makes the headlines at this time of the year for its strict trademark enforcement policy concerning its rights to the Super Bowl event. In a strongly-worded piece from Timothy Geigner over at Techdirt, the site’s readers are told that “the NFL is completely full of crap when it comes to how it enforces its supposed trademark rights for the Super Bowl”, as “[it pretends] it can somehow prohibit any company from even mentioning the Super Bowl in any context, up to and including simple factual statements”. We’ve written much about ambush marketing in the past, and the often cunning ways brands have capitalized on sporting events without being a sponsor – many of which demonstrate why the NFL takes such effort to enforce its rights during the lead-up to the Super Bowl. Meanwhile, those readers not enamoured by a football game can alternatively enjoy the /r/Superbowl forum on Reddit – a collection of thousands of photos of ‘superb owls’. (TA)

EU takes steps to establish counterfeit and piracy watch-list – The European Commission has started a public consultation this week to provide the basis for a global counterfeit and piracy watch-list. The watch-list will form part of broader efforts to tackle IP-related crime across the world by identifying and monitoring the most problematic marketplaces – both physical and online – and the actions taken by relevant authorities to fight counterfeiting and piracy. The consultation ends on March 31, and is designed to collect information to help decide what will be contained in the initial watch-list. The initiative is thought to be modelled on the USTR’s Notorious Markets list. (AH)

SAP tops first BrandZ German brands rankings – Kantar Millward Brown and WPP recently published the first BrandZ annual report on the top 50 most valuable German brands. With a brand that was estimated to be worth $48.9B, SAP was ranked as the most valuable brand in Germany. It was followed by Deutsche Telekom ($39.2bn), BMW ($24.6bn), Mercedes-Benz ($23.6bn) and DHL ($18.3bn). Meanwhile, 8th place Adidas was deemed to be Germany’s most innovative brand. The collective brand value of all 50 brands that were ranked is $305.7bn – which is noticeably higher than the same figures from the UK and French BrandZ rankings, clearly demonstrating Germany’s position as an economic and branding powerhouse within Europe. (TA)

Brand investment is the biggest hurdle for Malaysia SMEs – A new survey report from BIZSPHERE Brand & Marketing Group has revealed that brand investment is the number one concern and challenge for SMEs operating in Malaysia. The survey found that 53% of respondents voted “insufficient funds for brand and marketing” as the top internal challenge; 52% also voted “high cost in brand communication” as the leading external challenge. The report also found that SMEs are increasingly turning to digital communications to spread and promote their brands. (TA)

IP litigator speaks at crpyto event – Marta Belcher, an intellectual property litigation associate at Ropes & Gray, spoke at the World Economic Forum earlier this week on the subject of cryptocurrency. The event, hosted at Davos in Switzerland, is attended by CEOs, business executives, and high-ranking political figures. The panel looked at the laws and regulations surrounding cryptocurrencies, including IP issues. It comes in the same week that technology pioneer John McAfee told RT that “half the world will be using cryptocurrencies in 5 years”. If true, it’s another reminder that brands should be aware of the possible trademark issues related to digital currencies – including, as we reported earlier this month, cybersquatting of domains related to brand names and cryptocurrencies. (TJL)

On the move:

William Honaker becomes Chair CPR IP Disputes Committee – William Honaker, a lawyer at Dickinson Wright’s Troy Michigan branch, has been appointed as Chair of the Intellectual Property Disputes Committee of the International Institute for Conflict Prevention and Resolution (CPR). An experienced litigator and adviser across the IP spectrum, Honaker will guide the Committee’s efforts to understand how and when alternative dispute resolution methods are best employed in IP conflicts. (AH)

DLA Piper bulks up media, sport and entertainment group – Global law firm DLA Piper has announced the additions of Michael Garfinkel and Miles Cooley to its media, sport and entertainment practice in Los Angeles. Garfinkel was previously the firm-wide chair of Perkins Coie’s media and entertainment litigation group and possesses over 25 years of experience as an entertainment industry litigator. Cooley comes on board from Kelley Drye & Warren; his expertise lies in litigation for major corporations, entrepreneurs and thought innovators in the sports, entertainment and media industries. Following its merger with Los Angeles-based Liner LLP in October, DLA Piper has continued to expand its presence in the region in recent months. (TA)

New IP partners boost Honigman team in Grand Rapids – Tim Flory and Peter Cummings have joined Honigman Miller Schwartz and Cohn as IP-focused partners. Taking up their positions at the firm’s fast-growing Grand Rapids outpost, Flory and Cummings will focus on registering patent rights and design patents across a number of industry sectors. They join a team of 34 IP professionals in west Michigan alone. (AH)

US law firm offers tips on handling trademark auditing – Ladas & Parry lawyers Matthew Asbel and John Heinbockel have penned this piece answering some of the frequently asked questions surrounding the US trademark auditing process – introduced in 2017 to check that brand rights are not being maintained for goods and services for which the marks are no longer being used. As well as explaining what the auditing process is and who is responsible for it, they offer tips on how best to respond to auditing requests/decisions, and how to minimise the chances of being audited in the first place. Their advice includes proving use by using photographs of the marks on the goods or packaging – preferably at the point of sale – rather than submitting tags or labels not attached to the products; retaining documents to prove the history of use is also recommended. (AH)

Another innovation claims it could “put an end to counterfeit goods” – We often report on new innovations in the anti-counterfeiting space, and today is no different. What is unique this time, though, is that this newly-developed technology uses patterns of sand to mark goods as being authentic. Developed by scientists at the University of Copenhagen, the optical authentication system uses sand doped with three rare earth lanthanides – europium, terbium and dysprosium – each of which glows under a different wavelength of light. In theory, a manufacturer could attach such a marking to an item and it could not be replicated, the scientists explained in a research paper: “The probability of two products having the same ‘fingerprints’ – the same digital key – is so minuscule, that in practice, it can only be described as non-existent,” the academics claim. “It corresponds to a one out of an enormous number composed of a 6 followed by 104 zeros.” The scientists also claim the innovation “could potentially put an end to counterfeit goods” – an impressive comment, but one that one commentator told us last year “ignores the reality on the ground”. (TJL)

Canada’s road map to joining Madrid and Nice explained - Canada is set to join the Madrid Protocol and Nice Classification system in early 2019, in accordance with amendments to the country’s Trademarks Act in 2014. This article by Gowling WLG partner Robert MacDonald explains the steps that will have to be taken between now and then, based on a recent speech given Mesmin Pierre, Director General of the Canadian Trademarks Branch. Firstly, it suggests, the new regulations will have to be published in the Canada Gazette for public consultation in February this year, and again following any amendments in October 2018. Meanwhile, a new Examination Manual and Practice Notices will be prepared. And finally, instruments of accession to the Madrid Protocol and Nice Treaty will be deposited in late 2018, ready for accession in the early months of 2019. Major changes envisaged in 2019 include the elimination of “use” as a requirement for trademark registration, and a shift to a per class fee structure. (AH)

INTA fills backpacks for people in need – The International Trademark Association (INTA) tweeted images of staff holding backpacks last week, representing an initiative the organisation has introduced wherein the bags were filled with winter necessities – including hats, gloves, and socks – and donated to Care 4 the Homeless, a non-profit helping homeless people in NYC. It’s a commendable effort from all involved, and hopefully an inspiration to others. (TJL)

And finally…

New edition of WTR 1000 is released – As we reported last week, the full 2018 edition of the WTR 1000 is now available online. The research directory focuses exclusively on trademark practices and practitioners, and it has firmly established itself as the definitive go-to resource for those seeking world-class legal trademark expertise. As with previous editions, to arrive at the 2018 rankings, World Trademark Review undertook an exhaustive qualitative research project to identify the firms and individuals that are deemed outstanding in this critical area of practice. When identifying the leading firms, factors such as depth of expertise, market presence and the level of work on which they are typically instructed were all taken into account, alongside positive peer and client feedback. In all, the results cover 70 jurisdictions, with the United States section boasting 18 state-specific chapters, and serve as a one-stop source of reference for anyone seeking trademark legal services. (TL)