A year in trademarks at WebTMS

As we approach the end of the year, and the decade, we’re taking a look back at what has been happening in the trademark world. It has been a busy year for WebTMS, our clients and partners so here are some of the stories, industry events and activities that have kept us on our toes…

McDonalds loses Big Mac trademark in Europe

Right up there in the “who’d have thought it?” category was January’s EU IPO ruling stripping McDonalds of its Big Mac trade mark in the EU following a case brought by Irish burger chain SuperMac’s. Rival Burger King was quick to capitalise in Sweden, launching a parody menu featuring products “almost like” Big Macs.

At WebTMS we kicked off our 2019 client webinar series with a look at workflow management and how to streamline trade mark management processes.

The coming of Spring meant only one thing: the CITMA Spring conference. Topics under discussion included the role of blockchain in protecting high fashion and the potential of AI in assisting trade mark management.

The year’s abiding topic – Brexit – also got an airing at CITMA as the initial exit date loomed. At WebTMS we addressed the issue in our March webinar, explaining how we are primed to support our clients by automatically creating the ‘corresponding’ UK marks from our clients’ existing EUTM’s and adding theUK009 prefix. There will be no onus on clients to create additional UK records and no additional cost for the creation or additional records automatically added to their portfolios. WebTMS will also ensure there is a new deadline added to claim priority against a new UK filing from any Pending EUTMs at the point of Brexit.

New partnership for WebTMS puts even more data at clients’ fingertips

In May we were proud to announce our strategic partnership with global leader in trademark research and protection, Compumark. The partnership gives our clients access to Compumark’s best-in-class, error-corrected data from all 186 trade mark databases worldwide. It is directly integrated into client workflows,

May also brought us the annual INTA meeting, this year held in Boston, Massachusetts. 11,000 attendees and exhibitors spent five days immersing themselves in the latest developments and debates in the trade mark world. The enormous diversity of topics being discussed really showed what a global, multicultural, technologically involved industry we work in. From the impact of 4D printing and AI to the challenges of Geographical Identifications, Traditional Knowledge and Cultural Expression – it was yet another great event and we’re looking forward to next year’s meeting in Singapore.

Summer sees cultural appropriation hit the headlines and the UK’s first moving trade mark

Awareness of cultural expressions and the risks of appropriation would have helped Kim Kardashian avoid embarrassment in June after her launch of a shapewear brand with the trade mark KIMONO met with huge opposition from Japan. As #KimOhNo trended on social media the entrepreneur decided to back down and rename her product line.

In the UK, the UK IPO marked British IP day by registering the first multimedia motion trade mark, to technology brand Toshiba. Previously motion marks had to be illustrated graphically, but now they can be registered via multimedia file. You can view the mark here.

Iancu vs Brunetti judgement handed down

In the “not safe for work” category was a landmark Supreme Court of the United States ruling about profanity in trade marks, which finally resolved in June. The case arose after clothing entrepreneur Eric Brunetti attempted to register the trademark “FUCT” in 1990 and was refused under the terms of the Lanham Act, which prohibits the registration of ‘immoral or scandalous matter’. The court ruled that the Act violates Freedom of Speech enshrined in the First Amendment and that it had been applied in a viewpoint-discriminatory manner i.e. based on a subjective world view.

For initial reaction to the ruling and its implications check out World Trademark Review’s round up of responses from the sector

September conference season

September saw a busy conference season as we attended INTA’s Trade mark Administrators and Practitioners conference in Berlin, where we met with our user group and explored the changing role of trade mark administrators. This was followed by MARQUES in Dublin, where we looked at Brands Confronting Change, before we headed back to Berlin for the Pharmaceutical Trade Mark Group Meeting. Every event was a great opportunity to network with colleagues from all parts of the sector and we also enjoyed some excellent cultural visits in both cities.

Our October webinar saw us taking another look at Brexit as the deadlines loomed, then passed once again. We also presented a masterclass on advanced document management skills. During the course of the year more than 900 users have attended our client webinars to ensure they are getting the most out of the latest features of WebTMS. We look forward to many more in 2020.

OK Boomer trade mark application frenzy as the year draws to a close

What’s the first thing you do once a new cultural meme hits the internet? Attempt to register a trade mark for it, of course! As the new inter-generational insult gained popularity applications were registered in classes from T Shirts to TV Shows. However, the New York Times explains, rather like popstar Cardi B’s bid to register “Okurrrr” and LeBron James’ attempt at “Taco Tuesday”, it’s likely these applications will fail on the grounds that it is a “widely used message”. For a more detailed explanation check out David L. Clark’s analysis  “That’s not how any of this works!”.

Looking at the year overall it’s clear that awareness of trademark and wider intellectual property rights is growing – partly driven by the keenness of celebrities to get in on the act and monetise everything from their latest sentence to their children’s names.

We’ve also seen how the evolution of technology is creating a whole host of challenges to intellectual property law, from whether Artificial Intelligence should be credited in patent applications to France’s ban on the use of litigation analytics. On the flipside, legal tech companies have continued creating and developing solutions that help lawyers work more efficiently and access better data faster.

We’re proud to be part of an industry that drives, embraces and protects innovation and we will be continuing to develop our own products and services in the decade to come. Thank you to all our clients, partners and suppliers for your support in 2019.

The Web TMS team

Honourable mentions

Our selection above is just the tip of a very big iceberg when it comes to the stories that broke in 2019. Some didn’t quite fit the blog but we’d like to give an honourable mention to Ben Wodecki’s masterful exploration of intellectual property law in the Star Trek universe might usefully apply to our own. And recognition to Chris McLeod for drawing to our attention the Whitby Goth Festival, among other entertaining registrations throughout the year with his “Trademark of the Week” you can see via LinkedIn.