Every Tuesday and Friday, World Trademark Review presents a round-up of news, developments and insights from across the trademark sphere. In our latest edition, we look at the Advocate General’s latest Kit Kat decision, INTA’s call for more research on illicit trade, Liverpool Football Club embroiled in a dispute, a strong start for the ‘.app’ new gTLD, and advice on building a fashion retail brand in 2018. Coverage this time from Trevor Little (TL), Tim Lince (TJL), Adam Houldsworth (AH) and Timothy Au (TA).

Legal Radar:

Advocate General delivers blow to Nestlé – The advocate general of the European Court of Justice has stated that EUIPO must re-examine whether the three-dimensional shape of the ‘Kit Kat 4 fingers’ product can be maintained as an EU trademark. In 2012, the EUIPO rejected an application for a declaration of invalidity of Nestlé’s three-dimensional sign for the Kit Kat fingers which it markets, taking the view that Nestlé’s mark had acquired distinctive character through the use that had been made of it in the EU. On 15 December 2016, the General Court annulled EUIPO’s decision, considering that the EUIPO had erred in law in finding that the mark at issue had acquired distinctive character through use in the EU, when such acquisition had been proved only for part of the territory of the EU. Nestlé, Mondelez and EUIPO appealed to the Court of Justice. In yesterday’s opinion, Advocate General Melchior Wathelet considered that Mondelez’s appeal is manifestly inadmissible and must be dismissed, before turning his attention to the appeals of Nestlé and EUIPO. On this, he stated that account must be taken of the geographical size and the distribution of the regions in which acquired distinctive character has been positively established, in order to ensure that the evidence from which an extrapolation is made for the whole of the European Union relates to a quantitatively and geographically representative sample. In this case, he observed that, while Nestlé provided market research for a number of member states, the information provided for Belgium, Ireland, Greece and Portugal was not sufficient to establish that the relevant public in those countries identified Nestlé as the commercial origin of the product covered by the trademark at issue. He added that Nestlé confirmed at the hearing that it had not included in the case file evidence seeking to establish that the evidence provided for the Danish, German, Spanish, French, Italian, Netherlands, Austrian, Finnish, Swedish and UK markets also applied to the Belgian, Irish, Greek, Luxembourg and Portuguese markets or could act as a basis for extrapolating the acquisition, by the trademark at issue, of distinctive character through use in those five countries. In the absence of such evidence, the Advocate General concludes that the General Court had to annul EUIPO’s decision and proposes that the court dismisses the appeals. While some media headlines have proclaimed that Kit Kat has lost its protected trademark status, the ECJ has yet to confirm whether it will follow the advocate general’s reasoning. For its part, Nestlé has contended that, for the most part, the opinion follows the company’s own argument, diverging only in the final conclusion which it argues is based on “incorrect factual findings” – arguing that it did submit sufficient evidence to prove acquired distinctiveness of its iconic Kit Kat four fingers shape to meet the proposed comparability threshold, including in the few countries where evidence was challenged. We now await the court’s decision on the dispute. (TL)

Liverpool Football Club accuses Utah youth team of infringement – World-famous football team Liverpool FC has found itself in a non-sporting contest with a youth club from Salt Lake County, Utah. The Red Slopes Soccer Foundation and Red Slopes Soccer LLC are alleged to have used the Merseyside club’s logo, trade dress and crest without permission, thereby infringing its trademark rights. The Utah club previously had a licensing agreement with Liverpool FC, establishing its as part of the Premier League club’s youth network; but, it is claimed, this arrangement was terminated following Red Slopes’ failure to make timely payments as part of the deal. Liverpool FC is hoping a US District Court in the Eastern District of Texas will grant it an injunction and damages. Despite the potential for the Premier League team to appear like a ‘trademark bully’ in the case a provincial US youth team, Dr Thomas Baker, a professor of sports law at the University of Georgia, argues in Forbes that the club’s “arguments seemingly fit the primary purpose of trademark law – brand protection and consumer protection.” (AH)

Gucci’s nine-year dispute over interlocking ‘G’ trademark ends – Gucci and Guess have concluded a nine-year long trademark fight after coming to an agreement which will “[end] all pending intellectual property litigations and trademark office matters worldwide”. The scuffle began in 2009 when Gucci filed suit against Guess, accusing the company of infringing its iconic interlocking ‘G’ print trademarks. Although Gucci managed to secure a permanent injunction in the US against the use of three of four designs by Guess, the Italian luxury brand was only awarded $450,000 in damages (it had initially sought damages of $221 million). Gucci had filed suits on the same grounds in Italy, China, Australia and France, and initiated proceedings with the EUIPO, but Guess came out on top in Italy and France, while the EU General Court also ruled in its favour. The terms of the agreement between the two parties were not disclosed. (TA)

Comey trademark abandoned – As James Comey dominates the US news agenda this week following the release of his explosive memoir, a related trademark has been abandoned. Specifically, a US trademark application was filed in June 2017 for the term COMEY FOR PRESIDENT by a New Jersey resident, just over a month after US President Donald Trump fired James Comey. There is no indication that the mark is related to the former FBI director or if he is even aware of it. However, just days before he released his book, the COMEY FOR PRESIDENT mark was given a notice of abandonment. It followed an initial refusal, with the examining attorney citing the the mark “may falsely suggest a connection with James Comey”. (TJL)

Market Radar:

INTA calls for more research on illicit trade in Malaysia – INTA has stated that more research needs to be conducted on the trade of counterfeit goods in Malaysia in order to help combat the issue. The trademark association’s Asia Pacific chief representative, Seth Hays, added that the Malaysian government should be encouraging local enterprises to maximise the value of their IP through branding and by improving the IP regulatory framework, while noting that most companies in the country still lack awareness regarding the importance of IP. (TA)

Canada hopes for summer pass of plain packaging bill – In an interview with the Hill Times, Canada’s health minister Ginette Petitpas Taylor says she wants “a heavily-lobbied bill that proposes to standardise plain packaging for cigarettes” to be passed by the summer. It follows nearly two years of study by legislators in Canada, and an extensive campaign by tobacco companies against the measure. If passed, it would be another fall of the domino for tobacco products being sold in plain packaging. (TJL)

Russian IP office pledges support to blockchain technology – The head of the Russian IP Office (Rospatent), Grigory Ivliev, has publicly voiced his support for blockchain technology at an event in Moscow this week. According to Cryptovest, Ivliev commented at the event: “We see that, with the help of blockchain technologies, it is possible to protect intellectual rights and that the quality of reliability and speed of processes is significantly increased.” Other experts have suggested that IP offices could make use of blockchain technology, including one blockchain database founder who told us last month that registries could play a role in their adoption. (TJL)

Domain name radar:

‘.app’ gets off to a strong start – Over on Domain Name Wire, Andrew Allemann reports that over 2,000 ‘.app’ domains have been registered during the sunrise period. Of the 2,225 domains he analysed, Apple has been most active, registering 75 ‘.app’ domain names, while Microsoft had 41. Reflecting on his findings, Allemann states: “I suspect that companies realize this is one of the better top level domain names and are also concerned about phishing and fake apps that could be distributed at these domains.” The ‘.app’ string has long been mooted as one of the ‘blockbusters’ and if appears to be off to a strong start. (TL)

Media Watch:

Building a fashion retail brand in 2018 – In an interesting article in the Financial Times, numerous experts talk about how to build a successful fashion retail brand in the modern age. It begins by suggesting that, in 2018, the number one rule in brand building is: there are no rules. “Before millennials, retail was about playing safe. Catwalks were filled with colour, but stores still bought the version in black,” the article states, with Helen David, chief merchant at Harrods, adding: “For traditional retailers, what was thought of in the past as safe is actually the most unsafe thing to order for your store because it’s boring and nobody wants it.” There are a host of other tips – including the need for brands to collaborate – that are well worth a read for those in the industry (or are considering entering it). (TJL)

On the move:

Honigman adds attorneys – Honigman has added two new partners to its intellectual property department. John Chau joins the firm’s patent practice group in Bloomfield Hills, while Mary Hyde enters the intellectual property litigation practice group in Ann Arbor. Hyde represents clients in all types of trademark, marketing and advertising and copyright matters and joins from Jones Day. Additionally, Cristina Almendarez – who focuses her practice on patent infringement, trademark and false advertising litigation – joins as an associate in the firm’s Chicago office. (TL)

Brinks Gilson & Lione expands biopharma practice – Brinks Gilson & Lione has announced that Kenton W Walker has joined the firm’s biopharma practice group in Salt Lake City. As a registered patent attorney and pharmacist with more than 15 years’ experience litigating trademark and commercial disputes, Walker focuses his practice on the pharmaceutical and biotech industries. Along with representing clients in the pharmaceutical sector, Walker also advises companies in the medical device, nutritional supplement, apparel and software industries. (TL)

Friday catch-up:

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

  • Spoke exclusively to David Lossignol, INTA’s president-elect and global head of trademarks for Sandoz, about the challenges of managing pharmaceutical brand rights and the growing threat of IP restrictions.
  • Reported on the establishment of a new brand safety network that will enable agencies to share information when brands appear next to objectional content.
  • Presented the takeaways from a lawsuit launched by adidas and Reebok International against 53 sellers of alleged counterfeit goods on social media sites
  • Examined a groundbreaking paper which suggests neuroscience could transform trademark strategies – both inside and outside the courtroom
  • Analysed the latest data to reveal key trademark trends in the engineering and construction industry