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 China and Indonesia giving up the plain packaging fight, how a Colin Kaepernick trademark application has generated media buzz, why US colleges have been accused of trademark bullying, UK local governments warning of cosmetic fakes, and much more. Coverage this time from Trevor Little (TL), Tim Lince (TJL), Adam Houldsworth (AH) and Timothy Au (TA).

Legal radar:

Cuba and Indonesia give up plain packaging fight – We recently reported that Honduras had appealed a World Trade Organisation ruling that Australia’s plain packaging law “improved public health by reducing the use of tobacco products”, rejecting the argument that Australia had unjustifiably infringed tobacco trademarks. The Dominican Republic subsequently lodged its own appeal but IP Watch reports that the governments of Cuba and Indonesia have chosen not to do so. The site reports that “Cuba had accusatory words for Australia and the dispute settlement panel”, labelling the latter’s report “very deceiving” and intentionally “structured to reach a predetermined outcome” However, it chose to not proceed with an appeal. With Indonesia taking the same position, it means that Honduras and the Dominican Republic remain the only current legal opponents to Australia’s regime at the WTO. (TL)

SDCC secures rights to Comic Con – We previously reported on the heated trademark litigation between San Diego Comic Con and Salt Lake Comic Con, with the former arguing that the latter had infringed on its COMIC CON mark. Although SDCC had won an award of $20,000 in compensation last December, it sought a new trial to reconsider the damages award and to obtain a permanent injunction. It also alleged “staggering” misconduct by Dan Farr and Bryan Brandenburg, and their company Dan Farr Productions (DFP), who run the Salt lake Comic Con in Utah. It would appear that the court has since agreed with these claims in a new ruling, with Judge Anthony J. Battaglia ordering Farr and Brandenburg to pay $4 million in legal fees and to stop using the Comic Con name, adding: “At every opportunity, DFP has repeated, re-argued, and recycled arguments already briefed by both parties and analysed and ruled on by the court. This type of wasteful litigation tactic forced SDCC to expend extra, unnecessary legal fees and drove this court to squander already limited judicial resources.” The decision was handed down at the District Court of the Southern District of California and does not set a legal precedent in other regions across the United States; however, this latest development will certainly get the attention of other similarly named Comic Cons around the country, which may also be targeted by SDCC. (TA)

Registrations double in Cayman Islands following governmental push – It has been reported that following the passing of a new trademark law in 2017 in the Cayman Islands – which has come as part of a the government’s efforts to modernise its legal framework for intellectual property – the number of trademark applications and registrations have doubled. Since the new law took effect, application numbers have jumped from 300 to over 600, according to Candace Westby, the head of IP for the Cayman Islands IP office (CIIPO), adding: “Once word got out years ago that the government intended to revamp Cayman’s IP regime, industry stakeholders expressed interest in using the jurisdiction as their IP hub.” Over the last few years, the government has also widened the scope and facilitation for copyright and design rights. Meanwhile, the CIIPO has been building awareness of the Cayman’s new IP regime over the last year though information sessions, training and media appearances. (TA)

Market radar:

Aldi tops most trusted brand in Australia list – German supermarket chain Aldi has topped the list of Australia’s most trusted brands, with retail noted as being the most trusted brand sector Down Under. The results are part of the latest Roy Morgan Net Trust Score Survey, which was conducted in July and involved asking over 10,000 Australians about the brands they trust the least and most. According to The New Daily, Aldi was the clear leader of most trusted brands, followed by DIY retailer Bunnings, airline Qantas, and media organisation ABC. Down the other end of the list, Roy Morgan chief executive Michele Levine said that “banks were deeply distrusted” – partially due to a recent royal commission in Australia which found widespread misconduct in the industry. Also falling in trust, says Levine, is Facebook. “After all the accusations of fake news, international political interference, and the Cambridge Analytica data privacy scandal, users, employees and advertisers jumped ship,” she said. “Facebook’s distrust score catapulted it into the No.1 ranking on the Roy Morgan top 10 most distrusted media brands, and into the top 10 most distrusted brands in Australia. For brands, trust is one of the most important metrics you can attain – and for those near the bottom of the list, they will surely be hoping for a turnaround. (TJL)

IP experts offering online certificate for lawyers and brand owners – In October, the University of Detroit Mercy School of Law will be launching a new online intellectual property programme for both lawyers and non-lawyers. The four-course programme offers the chance for inventors, engineers, business owners, brand managers and other professionals, including those working in the legal field, to gain a better understanding of IP law. Wissam Aoun, the director of the programme stated: "This program is ideal for anyone who is responsible for managing a brand, managing trademarks, patents, or copyrights, or even managing cybersecurity or trade secrets.” The course will be run by a number of IP law experts from private practice and can be completed part-time in a year (or longer if preferred). A sign of the growing influence and importance of intellectual property, Aoun claims that the creation of the programme came in response to the growth in the IP field over the last 15 years and the “desire of professionals to learn about this important area of the law without have to obtain a JD degree”. (TA)

UK local governments warn of cosmetic fakes – The UK’s Local Government Association has revealed that trading standards officers across the country have seized hundreds of thousands of pounds worth of counterfeit cosmetics. It is warning that such products pose serious health risks, including mercury and lead poisoning, as well as causing financial loss to consumers and businesses. Councillor Simon Blackburn, who chairs the association’s Stronger Communities Board, is reported to have said: “Councils have been targeting rogue retailers selling these fake products, and the fines they have received should deter others from selling these dangerous products.” Consumers, he continued: “Should always do their research and take a pragmatic approach when they are buying makeup and cosmetics. Check the reviews of online sellers, and bear in mind that if something is really cheap , it’s likely to be fake and could potentially be harmful.” Any concerns about fake cosmetic goods should reported to local Trading Standards teams, he added. (AH)

Peppa Pig in first production copyright infringement case in China – In what has been described as a “landmark ruling”, two Chinese companies have been ordered to stop producing and selling products that use the image of popular children’s character Peppa Pig. According to GB Times, two UK companies which own the rights to the TV series, Astley Baker Davies Limited and Entertainment One UK Limited, filed for copyright infringement after discovering the sale of a kitchen set decorated with Peppa Pig images on its box (photo). The kitchen set was being sold on Alibaba platform Taobao. In the decision, the judge from eastern Zhejiang Province’s Hangzhou Internet Court ordered one Chinese company, Jufan, to stop selling the product, and another, Jiale Toys Industrial, to stop producing it. The judge noted: “This case is a landmark in the way that it serves as a warning to the chaotic market, and it's the first ruling on production copyright infringement.” While this is ostensibly a copyright case, it’s an interesting – and perhaps important – case to be aware of as it demonstrates how a full suite of IP rights is crucial to tackle fakes on Chinese marketplaces. (TJL)

Kaepernick application generates media buzz – In a TMZexclusive’, based on USPTO records, it has been revealed that Colin Kaepernick has filed an application for I'M WITH KAP for clothing. The slogan has been associated with the former NFL player since he became the focus of political debate after taking a knee during the pre-game National Anthem in a bid to protest racial injustice. This latest move may be a way to earn income away from the football field, although TMZ notes that he could also have philanthropy in mind, having previously donated $1 million to various charities and non-profit organisations, including his ‘Know Your Rights’ campaign. With the slogan having been used extensively on social media, as well as adorned on t-shirts worn by celebrities supporting Kaepernick – including Harry Belafonte, G-Eazy and members of the Miami Dolphins - unofficial ‘I’m with Kap’ merchandise has inevitably surfaced for sale on major retail sites, including Amazon. While The Mercury News characterises the application as a “dash for merchandising cash”, the move makes perfect sense as others have clearly sought to do just that. However, if he succeeds in his application, he will no doubt be the focus of negative headlines when enforcing his rights against third parties capitalising on the slogan. After all, as we note below, the media loves a good ‘trademark bully’ narrative, particularly when it involves a high profile, contentious figure. (TL)

H&M’s trademark victories in India - A new blog on The Fashion Law explains the significance of H&M’s May 2018 court victory against HM Megabrands. The Swedish retail giant only opened its first store in India in 2015 – nearly 70 years after the brand was established – and has opened over 30 shops since. Before this, the article explains, a brand with a similar name, HM Megabrands, opened a number of outlets nationwide selling high street fashion products. H&M sued the company for trademark infringement in 2016, arguing that it was using a confusingly similar name and colour combination (HM Megabrands uses a red and white logo similar to H&M’s). HM Megabrands claimed that its name is modelled on its owner, Hasim Merchant’s, initials. H&M argued that, despite the fact its first Indian store opened only recently, its brand was already well-known to the country’s consumers thanks to extensive global marketing and media exposure. It also pointed out that it had been manufacturing and exporting its trademark protected products from India since the 1970s. The Delhi High Court sided with the Swedish brand, ordering HM Megabrands in a preliminary judgement to cease all “direct or indirect” use of the HM mark, at least for the duration of the litigation and potentially on a permanent basis. Judge Endlaw, the blog points out, said that the “opening up of the Indian economy in 1991, the increased travels of Indians outside the country, and the increased interaction of Indians with foreigner” had served to “change the whole dynamic of reputation and goodwill” in the country; meaning “for a mark/brand to a reputation or goodwill in India, setting up a shop in India is no longer a necessity.” This decision, therefore, is a potentially reassuring development for international brands worried about the risk of trademark squatting in India. (AH)

Colleges accused of bullying – A piece in the Washington Post this week threw the spotlight on the trademark enforcement tactics adopted by US universities, in a piece titled ‘Trademark bullies? Many big colleges fiercely protect brands’. Colin Brinkley notes that people “unwittingly provoke the wrath of big universities and the lawyers they hire to protect their mascots, slogans and logos”, before chronicling the “flurries of letters threatening legal action or trying to block new trademarks deemed too close to their own“ that his research has unearthed. The article then goes on to provide a number of examples, such as Duke University’s action against a small California wine company’s application for the Duke’s Folly mark, which it argued “deceptively and falsely” implied an official tie to the North Carolina school and would cause confusion among consumers. As Binkley notes, the schools note that they are “defending themselves from merchandise counterfeiters and others looking to exploit their brands for personal gain”. However, that message often gets lost by the time the ‘trademark bully’ label is deployed. The institutions in question won’t enjoy this moment in the spotlight but the article provides another illustration that – all too often – mainstream media coverage of trademark issues tends to focus on the negative. (TL)

And finally…

Your new look WTR is here – Subscribers and regular visitors heading to the World Trademark Review platform this week will notice that things look a little bit different. As well as a refreshed look, enhanced functionality and a more responsive and faster website, we are pleased to unveil our new logo. Over the past nine months we have made a series of enhancements to the site. In November we stepped up our content output and also provided subscribers with early access to the 2018 rankings tables for the World Trademark Review 1000 – The World’s Leading Trademark Professionals. In February, we then re-engineered the site to create a series of microsites that allow users to quickly navigate to, and bookmark, the content most relevant to their needs. These included nine topic landing pages, eleven industry sector sites and five regional landing pages. This week marks the next stage of WTR’s journey. WTR subscribers get automatic access to all parts of the refreshed WTR platform; while our registered users can continue to see everything that is in front of the paywall. Should you wish to become a WTR subscriber, click here. (TL)