Pharma brands warned not to be ‘trademark bullies’, Turkey on top, and world’s oldest mark: news round-up

Every Tuesday and Friday, World Trademark Review presents a round-up of news, developments and insights from across the trademark sphere. In today’s edition, we look at Turkey moving to the top of the European trademark filing league, Activision prevailing in a lawsuit in China, a British football club being mocked for its new logo, and the search for the world’s oldest registered mark. Coverage this time from Tim Lince , Adam Houldsworth (AH) and Timothy Au.

Legal Radar:

ECJ says “vulgar” film title cannot be trademarked – The European Union’s highest court has ruled that the term FACK JU GÖHTE is vulgar and therefore cannot be registered as an EU trademark . In doing so, it upheld the decision of the EUIPO, which had rejected the application filed by German film company Constantin Film Produktions in April 2015. The third instalment of the comedy franchise was seen by more than six million in Germany last year, but the Court of Justice said that the term’s close resemblance to an English sexual expletive precluded its registration. The decision highlights the difference between approaches in Europe and the US, where a federal court recently ruled that the term FUCT could be protected, and that a ban on scandalous or immoral marks violated the First Amendment of the country’s constitution. This followed last year’s landmark Supreme Court ruling in Matal v Tam that a prohibition on disparaging trademarks was unconstitutional. 

NFL team opposes TITLETOWN, TX registration – NFL team the Green Bay Packers are opposing the grant of the TITLETOWN, TX trademark, filed by a Texas-based publishing company. The Wisconsin-based franchise claims that the mark infringes its TITLETOWN branding, which refers to the team’s record-breaking achievement of 13 NFL championship wins. The opposed mark was filed by McClatchy USA, it has been reported, for a documentary series about the efforts of the Texas-based Aledo Bearcats to win a sixth state football title in eight years. Given the clear similarity of McClatchy’s mark to the Packers’, the dispute will probably hinge on whether the geographical specification helps to avoid consumer confusion, with neither side having an interest in claiming that TITLETOWN might be a generic mark. 

$1 million awarded owner of infringed trademark – A United States Federal District Court has ordered Voss Laundry Solutions to pay $1 million to its German former parent company Lavatec Laundry Tech following a trademark infringement suit. Voss Laundry was foundto have continued to use the German firm’s trademark after the two companies split, but only $100 of the eye-catching award is intended to compensate the rights owner, with the rest being awarded for attorneys’ fees and costs. In making the judgement, the court deemed that Voss had made “frivolous arguments” and violated court orders which had created the special circumstances in which an attorney fee award could be made. 

China answers the Call of Duty for Activision – It has been reported that Activision, which owns and publishes the famous Call of Duty video game franchise, has won a trademark lawsuit in China over Huaxia, a Chinese film distributor. A Chinese court agreed with Activision’s claim that a film titled ‘Call of Duty’ that was distributed by Huaxia in late 2015 infringed upon Activision’s trademark rights and the name being used would confuse the public. 

Market Radar:

GSK’s trademark counsel suggests how to avoid ‘trademark bully’ label – Angela Wilson, senior trademark counsel at pharma giant GlaxoSmithKline, has said that, in the age of social media, pharmaceutical brand owners need to be wary of the potential reputational damage that can result from aggressive trademark enforcement. Upholding brand rights had to be done in a “relaxed and creative” way, she said, to avoid the perception of being a ‘trademark bully’. This did not mean that counsel should be complacent, however; failure to enforce rights against fan-pages and name-squatters could damage a brand’s rights and reputation, she emphasised. Wilson was speaking at the 95th conference of the Pharmaceuticals Trade Mark Group in Toronto. 

Turkey stays at top of the European trademark filing table – More trademark applications were made in Turkey than in any other European country last year, according to a report in Turkish media. 121,108 filings were made in 2017, said Habip Asan, president of the Turkish Patent and Trademark Office, with 88% of these being domestic applications. This constituted a 13% year-on-year jump from 2016. With over 100,000 trademark each year, the country has had more trademark filings than any other European country since 2011, with France, Germany, and the UK just behind. 

TRACIT and IISW combine efforts to tackle illicit trade – The Transnational Alliance to Combat Illicit Trade (TRACIT) and Initiative Innovationskraft fuer Sicherheit in der Wirtschaft (IISW) have announced they will join forces to prevent and suppress illicit trade. TRACIT is an independent, private sector initiative that aims to reduce the economic and social harm caused by illegal trade by improving government enforcement mechanisms and mobilising businesses in affected industry sectors. IISW promotes the discussion surrounding issues of security for brands and products in German-speaking areas across Europe. Together, the two initiatives will support each other’s projects through the exchange of ideas and information and by advancing policies that tackle the problem of illicit trade. Jeffrey Hardy, TRACIT director-general, states: “Illicit trade is a transnational problem, which demands a multinational response. We are pleased to build our international network to bring business together to promote awareness, share best practices and drive policymakers towards the adoption of more effective solutions.”

On the move:

Orrick welcomes seven IP and litigation practitioners to the partnership – Orrick has announced the promotion of 19 lawyers to the firm’s partnership, seven of whom made partner in the IP and litigation practice, including two appellate litigators and one IP litigator. Those who have been promoted in the IP and litigation practice group include Mel Bostwick, Karsten Falhauber, Brian Goldman, Jacob Heath, Alvin Lee, Emily Tabatabai and Scott Ward. 

Blank Rome team bolstered by new IP litigator – Charles S Marion has joined US firm Blank Rome as a partner in its Philadelphia office. Bringing almost thirty years’ experience as a litigator, he is an accomplished commercial lawyer with IP among his key focuses. Having previously held partnership positions at White and Williams and Pepper Hamilton, Marion joins a team of over 300 litigators spanning 13 offices nationwide.

Clyde & Co strengthens its Middle East presence with new IP signing – Mark Devaney has joined Clyde & Co as a partner in its Dubai office. The experienced trademark attorney will concentrate on brand rights registration matters in the UAE and across the Middle East region, where the firm has a number of offices. Devaney, who has been operating in the region since 2016, started his career in London and is a former partner of Gill Jennings & Every. 

Two new IP partners make the move to Moses & Singer – Soft IP-focused lawyers Gregory Shatan and Toby Butterfield have joined the ranks of Moses & Singer in New York. Dispute resolution expert Butterfield boasts expertise, trademark, copyright and social media matters, while Shatan focuses on complex IP transactions. Both join as partners. 

Football club scolded for fan-sourced new logo – British football club Leeds United has received widespread ridicule after unveiling a new club badge. The badge was redesigned to mark the club’s centenary in 2019, and features a stylized image of a man placing their right fist over their heart. It was chosen through extensive consultation with fans – including digital surveys, one-on-one and group interviews, and meetings with players and local city communities. But, according to The Drum, a petition calling for a rethink was launched within hours of the logo being unveiled and it accrued over 50,000 signatures in 24 hours. Outside of that, it was openly mocked on social media, including by rival clubs Aston Villa and Crystal Palace. After the outcry, the club announced it will “reopen the consultation process” and rethink the logo before the start of next season (in August). Luckily for the club, a search on TMview suggests the club had not filed a trademark application for the ridiculed logo so no money was wasted. Nonetheless, it seems doubtful that fans from rival clubs will forget it anytime soon. 

And finally…

Identifying the world’s oldest registered trademark – What will be a fun and insightful read for any trademark nerds (like us), Polish attorney Mikołaj Lech penned a blog post earlier this week about the world’s oldest registered trademark. Lech described writing the post as feeling “like an archaeologist who, after shreds of information, tries to reach some potsherd” – and it’s obvious a great deal of effort and care went into it. We won’t spoil what the oldest registered mark is, but as Lech noted, it came as a surprise as the one commonly referred as the oldest is a British mark from 1875.