Covfefe, The Slants, The Jenners and Fidget Spinners – all in a one month’s IP round-up! We’re always interested in the latest IP Hot Topics at IP Live. Here are five of the most interesting IP matters that piqued our interest in June 2017.
1. COVFEFE TO YOU TOO!
Is Covfefe registrable as a trade mark? (via IPKat)
When Donald Trump tweeted “Despite the constant negative press covfefe” the internet almost broke. We were interested to see trade mark applications in the US and UK for the word “covfefe” which prompted the discussion “Is covfefe registrable as a trade mark?”
In our view COVFEFE would be registrable in South Africa as it is an original, distinctive mark. Although Donald Trump coined the phrase, he has not used the mark as a trade mark and it is unlikely that he wall, sorry will.
However it may be too late to file the mark in South Africa as the foreign proprietor of the mark could use their foreign filing dates to claim priority in South Africa, provided the South African application is filed within the prescribed six-month period.
2. SPEAKING OF OFFENSIVE TRADE MARKS (SORRY DONALD)
Offensive and disparaging marks are registrable in the USA (via NPR)
A US Punk Rock named The Slants were originally unable to register a trade mark for its name due to the Lanham Act which prohibits any trademark that could “disparage … or bring … into contempt or disrepute any persons, living or dead…” The Supreme Court of the United States earlier this month held that the law prohibiting the registration of offensive and disparaging trade marks is against free speech rights.
The term ‘slants’ is a disparaging term for Asian-Americans in the United States which is something the band wanted to turn around into something positive as they were Asian-Americans:
“We grew up and the notion of having slanted eyes was always considered a negative thing, kids would pull their eyes back in a slant-eyed gesture to make fun of us. … I wanted to change it to something that was powerful, something that was considered beautiful or a point of pride instead.” said Simon Tam from The Slants.
It’s definitely a victory for free speech. You can read a more detailed take on offensive trade marks in this Adams & Adams Post
3. HAD YOUR SPECIAL K THIS MORNING?
The SPECIAL K: Kellogg v Thanasi Kokkinakis (via The Guardian)
An interesting IP dispute is brewing in Australia where Kellogg has taken exception to tennis player Thanasi Kokkinakis trying to commercially leverage his nickname “Special K” by launching a sports brand trading in clothing and tennis wear. This is an interesting matter as SPECIAL K is protecting its status as an internationally well-known trade mark.
The test for primary trade mark infringement involves a consideration of whether the unauthorised use of a registered mark is likely to deceive or cause confusion among consumers. This matter is different – as there is unlikely to be confusion due to the stark differences between the goods – and in South Africa would be argued under the provision in the Trade Marks Act, 1993 which protects against what is referred to as trade mark dilution (Section 34(1)(c). Trade mark dilution involves a consideration of whether the unauthorised use of the mark takes unfair advantage or is detrimental to the distinctive character of a trade mark.
The classic quote on trade mark dilution comes from US Scholar, Frank Isaac Scheckter who argued that:
“If you allow Rolls Royce restaurants, and Rolls Royce cafeterias, and Rolls Royce pants, and Rolls Royce candy, in 10 years you will not have the Rolls Royce mark anymore.”
The approach from Kellogg here is spot-on. Trade mark proprietors ought to be on the look-out for copy-cats adopting your trade mark, even if the mark is not being used for goods or services that you trade in.
4. THE MONEY SPINNER – JUST NOT FOR THE INVENTOR
IP Lessons from the fidget spinner (via IP Live)
With the fidget spinner craze taking over playgrounds and offices around the world, we were interested in learning from the Guardian that the inventor of the fidget spinner, Catherine Hettinger, barely made a dime from her invention.
While Ms Hettinger held a US patent for the invention from 1997 to 2005, she abandoned it after she could not afford the renewal fees.
There are a number of IP lessons that one can learn from the fidget spinner, we did a post here on the IP Live blog which you should read.
5. KENDALL AND KYLIE’s B.I.G. PROBLEM
Kendall and Kylie Jenner pull t-shirt line after receiving legal threats (via The Guardian)
The Jenner sisters brought out a t-shirt line where they super-imposed their faces onto images of famous icons such as the Notorious B.I.G. and Tupac Shakur. This is clearly a flagrant copyright infringement against the owner of the copyright in the photographs but also a violation of the image rights of these artists which belong to their estates.
The t-shirts have been withdrawn from the market and the sisters’ joint statement reads:
“These designs were not well thought out and we deeply apologise to anyone that has been upset and/or offended, especially to the families of the artists. We are huge fans of their music and it was not our intention to disrespect these cultural icons in any way.”
That’s it for June folks!