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 a report of counterfeit brake pads made of grass, a study into the rate of accidental purchases of fake footwear, the Fiji government stepping into a trademark dispute, Kyrgyzpatent warning about use of unregistered marks, two ‘.brands’ calling it quits, and much more. Coverage this time from Trevor Little (TL) and Tim Lince (TJL).

Market radar:

Worldwide spread of plain packaging revealed – The Canadian Cancer Society has released a new report into the countries around the world that have, or are currently considering, to implement plain packaging legislation. In all, nine countries have adopted plain packaging on tobacco products to date, with 16 actively working on legislation to implement it imminently. Furthermore, the report states that 118 countries require graphic picture warnings on cigarette packages, up from 100 in 2016. The society predicts that more countries will implement stricter warnings – including plain packaging – in the future. "There is an unstoppable worldwide trend for countries to use graphic pictures on cigarette packages to show the deadly health effects of smoking, and to require plain packaging," says Rob Cunningham, senior policy analyst, Canadian Cancer Society. “For plain packaging, Australia was the first country to implement the measure, in 2012, and now the dominoes are falling.” (TJL)

ICE watches counterfeits melt – US Immigration and Customs Enforcement’s (ICE) Homeland Security Investigations (HSI) in Ho Chi Minh City, Vietnam hasrevealed that it teamed up with with the Vietnam Customs Anti-Smuggling and Investigation Department (ASID) and multiple brand representatives earlier this month to witness the destruction of 13.2 tons of counterfeit items which had previously been seized by Vietnamese authorities at ports of entry. The destruction of items including counterfeit footwear, garments, handbags and mobile phone accessories is notable because it is the first time that Vietnam has invited US government representatives in Ho Chi Minh City to attend such an event. (TL)

Research highlights rate of accidental counterfeit footwear purchases – New research from brand protection firm Red Points has looked at consumer habits when purchasing athletic footwear online. It found that 35% of all counterfeit purchases by consumers were made “by mistake”, with 48% of those who purchased fakes claiming they were “originally searching for the real product online”. Furthermore, the study states: “Counterfeiters are increasingly targeting social media sites like Instagram stories feed to place adverts and lure shoppers into buying knock-off online or to phishing scams. This is issue shows no sign of slowing down with 61 percent of respondents saying they would buy footwear via a social media post.” In response to the survey, RedPoint’s VP of products Danae Vara Borrell described the results as “truly alarming”, expanding: “Counterfeiters are increasing using genuine product images for their listing and creating sophisticated websites made to look like brands’ official channels making it harder than ever for consumers to spot potential scams. The findings should come as a real warning for shoppers and brands alike of the danger of social media being used by counterfeiters to dupe consumers.” For rights holders in this space, the survey is a must-read. (TJL)

Legal radar:

Fiji government steps in after trademark backlash – On Tuesday we reported on the social media backlash that followed a US kava bar’s registration of the BULA mark (‘Bula’, which translates to ‘life’, being a common form of greeting in Fiji) – with one Facebook user proclaiming: “I believe this whole debacle also speaks to a broader issue of entitlement that white people have over indigenous cultures and the selective way they pick and choose when they want to exploit our culture and intellectual property.” Yesterday The Fiji Times broke the news that the Fijian Government is laying the legal groundwork to contest, on multiple fronts, the mark. Fiji’s Attorney-General Aiyaz Sayed-Khaiyum revealed that preparations were underway to lodge documentation with the USPTO. The government also intends to raise the issue with WIPO – Sayed-Khaiyum adding: “The government was, along with Fijians and friends of Fiji around the world, both shocked and outraged to hear of this blatant case of heritage-highjacking.” (TL)

Registry radar:

Three more countries join TMview and Designview platforms – The national IP offices of Brunei Darussalam, Indonesia and Laos are to integrate their trademark and design data into the EUIPO’s international TMview and Designview platforms. The move means that TMview now contains over 51 million trademarks from 67 IP offices around the world. Designview now contains 14 million designs from 67 registries. In a statement, the director general of Indonesia’s IP office, Freddy Harris, commented: “The addition of the Indonesian data further consolidates the usefulness of the TMview and Designview databases, making them the go-to resource for rights holders and IP practitioners.” (TJL)

Ecuador IPO trains journos on IP issues – Ecuador’s National Intellectual Rights Service (SENADI) recently conducted training sessions with local journalists on the basics of IP law and enforcement. In a release about the training, the SENADI held the sessions on September 22 in the cities of Cuenca, Guayaquil and Quito. Topics discussed with the journalists included: an introduction to IP, distinctive signs of IP and the concepts behind traditional knowledge. The sessions were free-of-charge and hosted by the SENADI’s generator director Santiago Cevallos Mena, with each journalist awarded a certificate at the end of the day. The hope, then, is that such training will improve the quality (and perhaps increase the rate) of media coverage focused on intellectual property in Ecuador. (TJL)

Estonia and Ukraine sign IP memorandum – In a short press release, the Estonian Patent Office (Patendiamet) has announced that it has signed a memorandum of understanding on intellectual property with the Ministry of Economic Development and Trade of Ukraine. The signing took place in Geneva on September 26. (TJL)

Kyrgyzpatent warns on use of unregistered marks – The State IP and Innovation Service under the Government of the Kyrgyz Republic (Kyrgyzpatent) has published an extensive post on the need for local businesses to be aware of the risks on relying on unregistered trademark rights. According to the post, most entrepreneurs in the Kyrgyz Republic use unregistered rights for products they sell, and such an approach has a number of significant risks. Some of the risks outlined include the possible prospect of a local third party seeking registered rights for an entrepreneur's unregistered brand or that foreign rights holders which use the same brand name can enter the Kyrgyz market at any time. Such advice will be well-known by WTR readers, but blog posts like this from IP offices are valuable in raising awareness of issues to the wider public, and encouraging the filing of trademark applications by SMEs. (TJL)

Moldova joins WIPO’s Global Design Database – The State Agency for Intellectual Property of the Republic of Moldova (AGEPI) announced recently that it had submitted its data on industrial designs into WIPO’s Global Design Database search tool. The AGEPI has submitted more than 10,000 designs, which will be continually updated. With this expansion, the total number of national and regional offices participating in the tool amounts to 13. (TJL)

Macedonian IP Office upgrades trademark database – In a recent announcement, Macedonia’s State Office of Industrial Property has informed users that it has updated its digital trademark database. One of the main changes, according to the statement, is that it offers more accurate, more up-to-date trademark information for those searching for marks in the Macedonian register. Furthermore, the marks are searchable in the EUIPO’s international TMview database. (TJL)

Media watch:

Brake pads made of grass – Cheap counterfeit car parts, including brake pads made from compressed grass, are putting drivers at serious risk in the UAE. The stark warning was issued at an Interpol conference in Dubai, with The National’s Nick Webster reporting that Mechanics at SilberArrows – a garage specialising in Mercedes-Benz in Al Quoz – have recently reported an increase in fake Chinese-built suspension parts that fall far short of safety standards. SilberArrows’ managing director Julian Redman recounts one startling example: “The worst case I’ve seen is when I was working at Toyota and we found brake pads that were made out of dried grass. They had been packed and dyed to look like rubber. It was frighteningly dangerous.” This example serves to highlight the importance of the anti-counterfeiting work being undertaken by professionals in the industry, for whom the cost of infringement can be counted in lives and not dollars. (TL)

Domain name radar:

Two ‘.brands’ call it quits – On Domain Name Wire Andrew Allemann reports that two more companies have given notice of their intention to terminate their ‘.brands’. Specifically, kitchen company Blanco GmbH is terminating the ‘.blanco’ TLD, while publisher SPIEGEL-Verlag Rudolf Augstein GmbH & Co. KG is dropping ‘.spiegel’. Allemann comments: “Both of the companies only applied for one domain name, so this marks their complete withdrawal from the new TLD program.” (TL)

On the move:

Romanian firm announces expansion – Mușat & Asociații has expanded its IP, litigation & arbitration, data protection and cyber security, labour law and restructuring & insolvency teams by co-opting 7 lawyers and opening 14 new positions. Amongst the first seven lawyers to join Mușat & Asociații are Julieta Sfeclă (arbitration & IP), Adrian Căvescu (IP), Cristina Iliescu (data protection) and Ana Maria Burada (litigation). (TL)

Crowell & Moring announce new hire – Crowell & Moring has announced the addition of Gunther Meyer as senior counsel in the firm’s intellectual property group in Brussels. With nearly 20 years of experience, Meyer will advise clients on intellectual property rights, transfer of technology and trade secrets (including knowhow protection). He joins the firm from Eversheds Sutherland, where he led the Brussels Intellectual Property Practice. Kristof Roox, leader of the Brussels office’s IP team, stated that the addition of Meyer “deepens our bench to advise companies in several sectors, including pharmaceutical and biotech companies, as well as manufacturers of medical devices, on contentious and non-contentious IP matters. He will also strengthen our trademark and licensing practice”. (TL)

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 analysis of the takeaways from the long-running face-off between Apple and Samsung over the design elements of their phone products;
  • In an exclusive interview, we spoke with the national director of Chile’s National Institute of Industrial Property (INAPI), Maximiliano Santa-Cruz, as he prepares to leave his role after nine years;
  • Presented an exclusive interview with the CEO of Alfilo Brands, who reveal the strategies being employed by major cultural institutions as they seek to tap into China’s vast consumer market;
  • Assessed research which revealed that a significant portion of people studying and teaching at higher educational institutions in India have no awareness of intellectual property rights;
  • Reported on the latest development in LegalForce's bitter battle with LegalZoom, with an arbitration Statement of Claim making some startling allegations against the latter – which has vowed to fight on against a “tinfoil hat conspiracy”;
  • Scrutinised the UK government’s newly released technical notices setting out likely scenarios in the event of a ‘no-deal Brexit’ – observing that, when it comes to trademark and design rights, significant questions remain;
  • Reported on the highlights from last week’s MARQUES Annual Conference in Paris, including insight into the standoff around WHOIS data access, the one Brexit-related question you need to be asking, and more;
  • Released the 11th edition of the World Trademark Review Yearbook, providing legal professionals worldwide with a simple, easy-to use digest of the structure of trademark regulation in key jurisdictions across the globe.

And finally…

Nominate the world’s leading corporate trademark counsel WTR is now inviting nominations for the next editions of the WTR 300 and WTR Industry Awards, designed to identify the world’s leading corporate trademark counsel and teams. Nominate now to ensure that the important work undertaken by in-house professionals across the globe receives the recognition it deserves. The nominations window is open until 11 December 2018, during which time we are seeking details of the corporate counsel deemed to be the leading lights of the trademark industry, who are adding significant value to their organisations and are exemplifying the qualities that other counsel should aspire to. You can read more about the process on the nomination page. (TJL)