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 various insights from ECTA’s 37th annual conference, Squire Patton Boggs resolving a dispute in China over use of its name and related domain name, a potential disagreement between Jack Daniel’s and a Chambord estate, the Financial Times winning a trademark dispute, and how domain registrations for sports betting are on the rise. Coverage this time from Trevor Little (TL), Tim Lince (TJL), Adam Houldsworth (AH) and Timothy Au (TA).
Jack Daniel’s maker eager to nip trademark dispute in the bud – The Spirits Business reports that Brown-Forman, producer of Jack Daniel’s Tennessee whiskey, is hoping to be able to amicably resolve a potential trademark disagreement with 16th century Chambord estate. The château filed for the trademarks Chateau de Chambord, Domain de Chambord and Clos de Chambord for its own brand of wine, but the US spirits company already has a registered Chambord trademark for liquers in the European Union and other markets. Brown-Forman has stated that it informed Château Chambord as early as mid-2016 that its plan would be acceptable under “certain limitations”; however, following the revelation that the château intends to file these trademarks in connection with alcoholic beverages other than wines of protected geographical indication or designation of origin, the US company has asserted that this would violate its trademark rights. But, Brown-Forman insists that its preference would be “to resolve this matter amicably” and a spokesperson said: “In an effort to end the dispute, our global brand director and intellectual property attorney have offered to travel to Paris for a meeting since September 2017 and as soon as the DNC [Domaine national de Chambord] makes known available dates, the meeting will be set up.” This would not be the first time that the Jack Daniel’s producer has opted for a more amicable approach to the protection of its trademarks, having received widespread praise back in 2012 for “the most polite cease-and-desist letter ever”. (TA)
ICANN steps up bid for GDPR clarity – We reported recently that ICANN had filed injunction proceedings against EPAG, a Germany-based registrar that is part of the Tucows Group, in a move that it explicitly stated is designed to receive court assistance in interpreting the European Union General Data Protection Regulation (GDPR) as it relates to WHOIS. The action was a response to EPAG’s announcement that it will no longer collect administrative and technical contact information, as it believes collection of that data would violate GDPR rules (ICANN requires this information to be collected). While the injunction was not granted, ICANN has now appealed, asking Germany’s Higher Regional Court to issue an injunction that would require EPAG to reinstate the collection of all WHOIS data required under EPAG’s Registrar Accreditation Agreement. If the court does not agree or is not clear about the scope of GDPR, ICANN asks that it refer the issues to the CJEU. John Jeffrey, ICANN’s General Counsel, observed: “We are continuing to seek clarity of how to maintain a global WHOIS system and still remain consistent with legal requirements under the GDPR.” (TL)
UDRP growth a surprise to WIPO – At ECTA’s 37th annual meeting in Athens this week, WIPO’s Brian Beckham spoke extensively about current trends when it comes to domain name enforcement. In all, he explained, there have been over 40,000 UDRP cases, with over 75,000 domain names reclaimed at WIPO in total. The annual rate of cases reached a peak in the past couple of years, with 15% of the current caseload involving new gTLDs. “It continues to mystify us that UDRP continues to grow with enforcement budgets so tight,” Beckham exclaimed. “It is impossible to look into a crystal ball, but indications suggest there will be a new round of new gTLDs in next couple of years – and that will no doubt increase the monitoring and enforcement burden even more.” More immediately, the challenges of changes to the WHOIS system due to the GDPR (a subject we have written extensively on) has caused ire for many rights holders and brand protection representatives. However, Beckham suggests that the industry is beginning to find its feet – albeit not without difficulty: “There are some issues, for example we’ve become aware that there are one or two registrars charging a fee for registrant information – but overall it seems to be coming together in a way that kind of works, although from a research and enforcement side it has become a much more difficult environment.” Of course, longer-term, there are ongoing discussions at ICANN to reform the online enforcement process – in fact, Beckham was recently appointed co-chair of a working group that has been debating possible changes for over two years now. But progress has been slow, and he says that members are having the realisation that significant change is unlikely. “It has been a very protracted process; there are, unsurprisingly, some deeply-held views that are often at loggerheads with each other,” he explained. “We’ve been at it for two-and-a-half years and we have not made a ton of progress yet, however we are hitting a momentum stride right now. There have been many questions about future of the UDRP, and one of the most interesting things is that if you look back a few years ago, brand owners and other stakeholders were interested in making lots of changes to the UDRP, there were lots of ideas. But now we’re in this working phase, people have realised that it is becoming difficult to reach a consensus. For example, a statute of limitations to file a case was suggested by the domain industry and that would obviously have a big impact on brand owners. Now, over the past year or so, we’ve seen that most stakeholders seem to prefer to retain the status quo.” (TJL)
Squire Patton Boggs obtains rights to name in China – In what will be a relief for the international law firm, Squire Patton Boggs has announced it has resolved a dispute in China over use of its name and related domain name. We first reported last year that a Chinese entity was operating in China under the name Squire Patton Boggs and was offering brand protection services. Posing as a client, World Trademark Review spoke with one of the representatives from this Chinese entity, who sent us an extensive pricing list of the legal services it was offering. This same entity also operated businesses using the name of other well-known law firms, including Norton Rose Fulbright and Osborne Clarke (including running a ‘Norton Rose Fulbright’ funeral service). Last November, we reported on a blow for the international law firm after it lost a domain dispute because the Chinese entity had a registered mark for SQUIRE PATTON BOGGS. We wrote at the time that the international firm could have an uphill battle to obtain rights to its name in China. But fast forward a few months, and news has arrived from Law.com that Squire Patton Boggs has resolved the multiple disputes it had in China. “Full control of our trademark and domain name in China has been transferred to the firm,” a firm spokesman confirmed. The question now is whether this Chinese entity will continue to target the brand name of major law firms. (TJL)
Financial Times wins battle in trademark dispute – An opposition victory by The Financial Times has been upheld by the UKIPO, which has dismissed an appeal launched by a UK business owner. Catriona Brand, who runs Brand Financial Training, had previously sought to register the trademark BRANDFT for training and education services. However, the registration was opposed by The Financial Times, the owner of the FT mark, which prevailed in late 2017. Brand appealed, citing her earlier ownership of ‘brandft.co.uk’ domain name - registered in 2006 - and claiming a right to the mark through use. The UKIPO, however, has decided that the original hearing officer correctly determined that BRANDFT would be seen as a juxtaposition of Brand and FT, and that the mark had not acquired a distinctive character through use. (AH)
P&G perspective on Brexit – Also at ECTA’s 37th annual meeting in Athens, Deborah Brincat from Procter & Gamble provided insight into how the consumer goods giant has responded to Brexit. She revealed that, in total, P&G has an incredible 173,000 trademarks around the world (including international registration extensions). Furthermore, she said the company has 4,700 pending applications, 2,800 pending/active conflicts and 9,300 active license and coexistence agreements. In terms of scope then, few companies can rival that. In Europe, Brincat said that P&G has just over 2,000 registered EU trademarks and a further 687 UK national marks – 15 of which were used as seniority claims for EU marks. This means, she explained, that when the reality of Brexit hit in mid-2016, the company had to ask a number of questions about its filing strategy for Europe and the UK, including: “How important is our trademark from a legal perspective and a business perspective? What will the UK business be? Do we expect it to expand? Maybe we don’t want to file a national mark in the UK at all? Will competitors react to an application if we file at the EUIPO? Is there a strategic reason not to file right now with the general uncertainties linked to Brexit? Could a UK mark be part of a clearance strategy? Most of all, and the question most corporate trademark departments are asking: what does my budget look like?” Another key issue, she added, was around contracts drawn up pre-Brexit and what they could mean in the future: “Procter & Gamble has a number of active license agreements that state ‘European Union’ – if they covered the UK when that contract was executed, they should surely cover the UK when it leaves, in my opinion. I don’t see any reason why that wouldn’t be the case. With recordals, will they be carried over or would they need to move to UK?” There are obviously a number of pressing, unanswered questions surrounding Brexit, often making it difficult for businesses and corporate trademark departments to make plans. But ultimately, Brincat says, she is hopeful a deal will be struck. “Obviously we don’t want a ‘hard Brexit’,” she concluded. “It would be great if there will be a ‘soft Brexit’, and a ‘creative Brexit’, something similar to Norway or Switzerland’s deal, would be acceptable too. But some sort of agreement needs to be setup.” (TJL)
Checking the handwriting – In a session on pharmaceutical trademarks at today’s ECTA annual conference in Athens, there were many insights on how major pharma brands come up with and secure protection of medicinal products. A particularly interesting insight came from Bayer’s Christian Schalk. When formulating brand names, one consideration is how it will look when written down with scruffy handwriting. “Doctors have a very high workload, and they have to write lots of notes as part of their work,” he explained. “One risk is a doctors writing down a prescription and the pharmacist mistaking their writing for something similar-looking but very different.” Often similar-looking or sounding words are not always obvious, so the solution is that physicians and pharmacists are called during working hours to “test trademark candidates through simulated written prescriptions and verbal/telephone orders,” he revealed. Expanding, Schalk explained that they ask the physician or pharmacist to list any look-alike or sound-alike brand or generic drug names that they could potentially be confused with the candidate name. Beyond the name, they are also asked to identity potentially confusing current brand/generic drugs that have “characteristics similar to those of the new drug”, such as the dosage, formulation, storage, labelling, frequency of use, and price. He also provided messy handwriting examples of pharma brand names that look near-identical to other names – one example given was of Lamictal (an anti-epileptic drug) and Lamisil (an anti-fungal drug), wherein Glaxo Wellcome had to write to pharmacists in the United States to alert them of dispensing errors which “resulted in serious adverse events”. We often write about the harm of trademark confusion – but Schalk’s talk revealed the literal harm that trademark confusion can have in the marketplace. (TJL)
Trademark advice for national beer day – Today is national beer day in the UK, and as such, Claire Jones of Novagraaf has published some pointers on the brand rights issues surrounding the craft beer industry. In an increasingly large and heavily populated market, it is important for craft brewers, Jones stresses, to create a distinctive name for their product. And given that craft breweries often start off small, but can become popular internationally, they ought to think early on whether their branding conflicts with competitors’ trademarks in foreign jurisdictions. She points out that place names (Sierra Nevada), puns (Sweet Child of Vine) and beer-related quips (Phantom of the Hopera) are all commonly used for craft beer brands, meaning that “more than perhaps in any other market, beer brand names need to be made-up words, borderline absurd or completely unrelated to any part of the brewing process in order to be available for use”. Searching sites such as RateBeer.com, BeerAdvocate.com, as well as the Oxford Bottled Beer Database, is recommended as part of an informal search for names already in use. Finally, Jones remarks, it is crucial, once trademark protection has been acquired, to continue watch the fast-moving market carefully in order to pick-up potential infringers. (AH)
Domain name radar:
Domain names for sports betting are catching on – Over on Domain Name Wire, Andrew Allemann notes that since last month, when the US Supreme Court handed down a ruling in Murphy v NCAA that legalised sports betting across the country, there has been a noticeable uptick in registrations for domains related to sports gambling. According to ‘.com’ domain name registry Verisign, at least six of the top 10 trending keywords in registrations over the last month were directly related to sports betting. Allemann points out that, as of yet, there appears to be no rise in domain sales related to sports betting but this will probably change as more states make it legal to gamble on sports. (TA)
On the move:
EIP hires new trademark head – EIP has announced the appointment of Claire Lehr as head of its trademark practice, EIP Brands. A partner at the firm, Lehr has spent more than 15 years in the trademark field at law firms in the UK and Germany and various in-house roles. She provides strategic and tactical advice to clients in a wide range of industry sectors, from electronics and entertainment, including sports, to restaurants and clothing, hospitality, beauty products and online retail. (TL)
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:
- Explored industry expectations on the potential impact of AI and big data analysis on trademark practice
- Marked the opening of the 2018 FIFA World Cup in Russia by examining how brands are capitalising on the buzz generated by the tournament.
- Brought reaction to the UK Supreme Court’s decision in the Cartier website blocking case, which sided with internet service providers (ISPs) and ruled that brand owners should indemnify ISPs for the costs of implementing blocking injunctions.
- Reported on the CJEU’s decision in Christian Louboutin v Van Haren Schoenen BV, a ruling that strengthens the protection of the fashion house’s red soles mark.
- Assessed International House of Pancakes’ unveiling of its new IHOb identity, with industry experts warning that this type of move is not suitable for all companies.
- Spoke to the registrant of a trademark for the term GRABBA THE TRUMP, who told us he enjoys provoking major brands with his applications.
- Commenced publication of a series of exclusive interviews with, and profiles of, this year’s WTR Industry Award winners. This week we focused on American Airlines, Apple, Netflix, Rotary International, Starbucks, Superdry, Velcro Companies, as well as Lifetime Achievement award winner J Thomas McCarthy
Access free-to-view anti-counterfeiting guidance – The 2018 edition of Anti-counterfeiting – A Global Guide provides trademark and brand protection professionals with critical guidance on anti-counterfeiting laws, procedures and strategies in key jurisdictions around the world, is now available to view online. This indispensable publication analyses the anti-counterfeiting frameworks in place in 21 jurisdictions, with two regional chapters identifying wider trends and best practices in the European Union and the Western Balkans. In addition, an industry insight section offers guidance on the creation of global anti-counterfeiting programmes, analysis of the liability of physical intermediaries and an exploration of best practice in working with online platform operators. There is also tailored strategic advice for those operating in the fashion and luxury sector. You can access the guide here. (TL)