IN THE HEADLINES
WHAT TO WATCH
Tiffany v. Costco
Tiffany & Co. won its trademark case against the retail giant Costco. A jury awarded Tiffany $5.5 million in compensatory damages and $8.25 million in punitive damages in connection with Costco’s sale of engagement rings labeled “Tiffany.” In its summary judgment decision preceding the trial, the Court rejected Costco’s claims that “Tiffany” was a generic term for engagement rings. The parties await the Court’s entry of a final judgment.
Counterfeit Apple products on Amazon
Spotlighting the issues with sellers on Amazon and the platform’s lack of effective controls, Apple filed a lawsuit against one of the sellers of counterfeit chargers, but in doing so lays out a case for Amazon’s culpability.
For more on e-commerce related risks, see Legislative Update
Gray Goods in the UK
In an appeal surrounding a trademark infringement case brought by brands Ralph Lauren, Adidas, Under Armour, Jack Wills, and Fred Perry, the Court of Appeals ruled that those selling gray market or parallel goods in the UK, not authorized by the brands, could face criminal charges. The Court’s ruling cited not only consumer confusion, which is at the core of trademark law but also health and safety issues and violations of public policy. The Court did carve out a defense for violators if they “acted honestly and reasonably.”
See also the Appellate Court order in its entirety.
For more on the gray market, see Developing Stratagems to Tackle Gray Market
WHAT TO WATCH
The United States Trade Representative is expected to publish the “2016 Special 301 Out-of-Cycle Review of Notorious Markets” before end of this year. This is a supplemental report to The 301 report which is a “Congressionally-mandated annual review of the global state of intellectual property rights (IPR) protection and enforcement. The review reflects the Administration’s resolve to encourage and maintain enabling environments for innovation, including effective IPR protection and enforcement, in markets worldwide, which benefit not only U.S. exporters but the domestic IP-intensive industries in those markets as well.” Comments by industry, brand protection groups and other affected sectors submitted comments for consideration in October which followed public hearing for the Special 301 Report in March of 2016 and the issuance of the Special 301 Report.
The inauguration of President-Elect Trump will take place on January 20, 2017; with the 115th Congress returning to Washington D.C. on January 3, 2017. Before that time the Trump administration will have announced key transitional appointments including the US Trade Representative and possibly the Intellectual Property Right Enforcement Coordinator who has indicated he will be leaving the position (see cover story), among other appointments of interest to the brand protection community. Early indicators of new Trump policies are expected to directly affect the IP sector including trade policy.
For the month of sugar and sweets a tracking of the progress of plain label legislative initiatives worldwide, indicates in addition to tobacco it may also affect sugary products. All eyes are on the World Trade Organisation panel and its review on Australia’s decision to enforce standardised packaging on tobacco products anticipated any time now. The anxiety over plain packaging by brand owners is the undermining of traditional trademark rights and increased ease for counterfeiters to copy product.
THE BRAND PROTECTION PROFESSIONAL | DECEMBER 2016 | VOLUME 1 NUMBER 2
2016 COPYRIGHT MICHIGAN STATE UNIVERSITY BOARD OF TRUSTEES