Looking back at 2021: fraudulent filings, metaverse mania, and more

Another year has passed under the shadow of the COVID-19 pandemic. We have seen more lockdowns, vaccines and variants that continue to disrupt daily life worldwide.

But we are learning, slowly, to live with the virus and the world of innovation and intellectual property has kept on turning. Here are some of the stories, cases and industry developments that have kept us busy in 2021.

Brexit and vaccines usher in the New Year

In Europe, December 31 2020 brought the end of the transition period for the UK’s exit from the EU. From a trade mark perspective, this meant the creation of more than 2 million equivalent UK trade mark and registered design rights based on EU registrations. A herculean effort by the UK IPO -including robust lobbying in partnership with CITMA to resolve issues such as Address for Service – resulted in a relatively smooth transition. At WebTMS the team worked tirelessly to ensure that records of the new UK rights were automatically created in our clients’ WebTMS systems so no manual entry was required.

The global Covid-19 vaccine rollout launched in the UK on December 8th as 90-year old Margaret Keenan become the first person to receive the vaccine. It led to considerable debate about IP rights to vaccines and whether these should be waived in the interests of tackling the pandemic. The arguments around the TRIPS waiver are complex – IP protection is inherent in the system that allowed private companies to develop vaccines at the pace they did. Without it, such innovation could be stifled. On the other hand, this is a rare situation and issues of health inequality mean that many poorer countries still do not have access to vaccines, which could potentially be resolved if IP rights were waived.

Negotiations on the possibility of a TRIPS waiver continue, with US President Joe Biden recently voicing support, while the UK Government remains against the proposal at the present time.

Caterpillars in combat

Spring 2021, at the height of lockdowns across the world, brought the UK a little light relief in the form of a showdown between two caterpillar-shaped cakes.

UK grocery stalwart Marks & Spencer issued a trade mark infringement case against European discounter ALDI, claiming that the latter’s ‘Cuthbert the Caterpillar’ cake infringes its own ‘Colin the Caterpillar’ confection. Colin has graced many an office and children’s birthday party since he first appeared on the shelves thirty years ago, and has spawned a number of lookalikes from other retailers. However, it was ALDI’s version that prompted M&S to take action. What ensued was a social media war in which ALDI – whose market presence dwarfs that of M&S – managed to come across as the plucky underdog. We took a look at the issue of holding court on social media in our blog.

At the time of writing the case continues – and so does the media war – with ALDI’s Christmas advert featuring Cuthbert being led away in handcuffs. Marks & Spencer has also launched a further case against ALDI, this time over the design rights to a light-up gin bottle.

UK IPO embarks on ambitious transformation programme

Following its successful negotiation of the Brexit transition, the IPO announced a transition plan of its own in April. Its ambitious programme aims to make the IPO the best intellectual property office in the world, It is based around creating a “single, integrated system for all registered IP rights (patents, trade marks and designs). This will allow creatives, innovators and businesses to seamlessly apply for, manage and research all of their IP rights in one place”. The programme includes advances in AI, big data sharing and user features that will help the office continue forging ahead in the digital future.

At WebTMS we launched our own major innovation. DataSync is a step change in automation for trade mark records management. It allows automatic synchronisation with trade mark record status in up to 180 jurisdictions so there is no need for administrators to make manual updates when the status of their applications and records changes.  This is a significant time-saving feature and ensures greater record accuracy and easier overall management.

Milk substitutes face off over “PureOaty” trade mark

The summer brought a battle between Swedish oat milk producer Oatly and Glebe Farm Foods over the latter’s rebrand of its oat milk drink to “PureOaty” (a play on the word “purity”). The case hit the media as a classic David vs Goliath case and so it proved, with the IP Enterprise court deciding that there was low likelihood of confusion between the marks. The “oat” element of the mark is descriptive and therefore not significant in terms of identifying the origin of the goods, so the case hinged on the PURE- and -LY elements of the respective marks, which are not similar.

Meat and dairy alternatives such as oat milk are a rapidly growing market and IP disputes are not infrequent. Vegan brand Beyond Meat® has filed for 108 marks at the USPTO ranging from Beyond Chicken and Beyond Tuna to Beyond Milk and Beyond Brunch. An attempt to register Beyond Cheese was blocked by the USPTO as a UK-based company already holds that mark. In the same sector, Impossible Foods has been engaged in a trade mark tussle with Nestle over products named “Impossible burger” and “Incredible burger” respectively. We’ll be taking a dive into the world of vegan food brands in January, so watch this space!

The USPTO gets tough on fraudulent filings

As the end of the year approached the USPTO got tough on fraudulent filers, issuing a blistering show-cause order against Pakistan-based company Abtach, which operates several filing agencies including Trademark Terminal. The show-cause order accuses Abtach and its subsidiaries of violating USPTO rules of practice and enacting “an egregious scheme to deceive and defraud applications for federal trademark registrations by improperly altering official USPTO correspondence, overcharging application filing fees, misappropriating the USPTO’s trademarks, and impersonating the USPTO.” World Trademark Review covered the story in depth.

As part of its campaign, the USPTO applied to register its own trade marks for protection – acknowledging that this was something it should have already had in hand.

Among the continuing exponential growth in trade mark filings in 2021, the USPTO identified a number of “non-market” factors behind the upswing, notably growth in filings from China where, in some cases, government subsidies granted to encourage trade mark applications far exceed the cost of such filings, meaning making a trade mark application becomes a profit-making exercise. As the USPTO and other national offices (including China) were forced to extend examination time frames due to the volume of filings received, it is clear that action must be taken to sift out the bad applications from the good.

The USPTO’s work to counter such bad faith and fraudulent applications will be assisted by the implementation of the trade mark modernisation act, which came into effect in December. The act allows third parties the ability to challenge registrations they believe are not or have never been validly used, including a process to cancel unused marks.

Race to the Metaverse

In November, Facebook managed to get the jump on industry-watchers by announcing its name change to Meta. A media storm ensued, with various companies asserting that they had already applied to register Meta marks in the relevant classes. While these initial challenges do not appear to have ruffled Meta’s feathers, the company did make a $60m payment to acquire the trade mark rights of US financial institution Meta Financial Group.

Meta is setting its sights firmly on the metaverse – a world where digital, augmented and artificial reality merges seamlessly with the physical universe. Brands are putting their mark down, too, with Nike, Adidas and L’Oreal applying to register virtual goods for use in augmented/artificial reality. We took a look at the metaverse, what it is and why brands should act to protect their rights.

These are just a few of the topics and trends we witnessed during another incredibly busy and challenging year. We are looking ahead with hope to 2022 and we would like to wish all WebTMS clients and partners a very peaceful, safe holiday season.