Sunday, August 10, 2014

Sufi Student Protest Over Cavalli’s Use of Their Sacred Symbol for a Perfume Logo

A group of students of the Sufism branch of Islam have recently launched a protest aginst Italian designer Roberto Cavalli over a perfume logo that resembles a Sufi symbol with religious significance (or at least a substantive variation of that symbol).

The logo in question is the “Just Cavalli” logo, which looks similar to a sacred symbol of the Shahmaghsoudi School of Islamic Sufism, comprising two arcs linked by a horizontal line in the middle of the symbol. The only major difference between the Sufi symbol and the "Just Cavalli" logo is that the latter has been rotated by 90 degrees. “Just Cavalli” stylised text sits in substitute of the line that links the two arcs.

The Cavalli logo is designed to represent a snakebite. The connotation is meant to be of "original sin" (the temptation of the serpent in the Garden of Eden in the Book of Genesis). This is further underscored by the tagline “Just Lust” in the perfume’s ads. Students of Sufism are offended by this – the Sufi symbol giving rise to the dispute is considered sacred and a sign of purity and heart, the opposite of what the "Just Cavalli" logo represents.

From a trade mark perspective, the Sufi symbol is the subject of a US trade mark filed by an international Islamic sufi school called Maktab Tarighat Oveyssi. Whether the dispute evolves into a trade mark oppositions or removal actions based upon the "scandalous" provisions of various national trade mark laws remains to be seen.

Thursday, August 7, 2014

Australian Winemaker Battles Trade Mark Squatter Over Ben Fu Trademark

It’s common practice for businesses to register the foreign language equivalents of their brands in relevant countries, for a number of reasons; to build their brand using terms that are more familiar to the target market, to avoid conflicts when their original trade mark means something else in the country’s language, and to protect themselves from other entities that could register the local equivalent of their brand and either:

a. ) build a competing product out of it, or
b. ) hold the trade mark for ransom.

The latter seems to be the case when Australian winemaker Treasury Wine Estates (TWE), which owns several brands (including the famous ‘Penfolds' brand) tried to register a Chinese variation of the name – Ben Fu – only to find three versions of the name already registered by businessman Li Daozhi and another man named Li Shen.

The Australian Financial Review has reported that two versions of the Ben Fu name as it pertains to spirits and wine was registered to Li Shen until 2019 and 2014, respectively, while Li Daozhi owns the rights to the name in relation to hotels and restaurants until 2021.

A Chinese court has found for TWE, but both Li Daozhi and Li Shen have appealed against the ruling.

There’s very little doubt as to Li Daozhi’s motives for registering the marks. Mr Li has been accused of trade mark squatting in the past, and has a history of getting into legal disputes against wine companies. One of the more notable ones was against French wine producer Castel.

The Castel case was very recent, when the French company started using a Chinese transliteration of their name – Kasite – for a marketing campaign in China. Unfortunately, they failed to register the trade mark in the country. Mr Li registered the mark for himself. After a protracted trade mark battle, Castel was ordered to pay $5 million to Mr Li in 2013. Castel has since called for a retrial, and China’s Supreme People’s Court has scheduled another hearing at a later date.

Cases of trade mark squatting and the problems they bring are very common in China, and the painful learning experience of these companies serve as reminders to businesses to practice due diligence when building brands and securing trade mark.

Wednesday, August 6, 2014

Halal Certification Authority Pty Limited v Scadilone Pty Limited

Followers of Islam are forbidden from eating food that is not halal, which means the food and every ingredient used was prepared according to the commandments found in the Q’uran, Islam’s holy book, as well as in the Hadith and Sunnah (each being libraries cataloguing things that the Prophet Muhammad said and did), unless there is no alternative and the situation makes it necessary to consume things that are otherwise unlawful.

As with most religions, there is tendency for the written word to be interpreted differently by different groups or people. This is especially true with halal food. In addition, religious leaders sometimes issue edicts that extend these halal requirements. Also, modern food products can be complex, made up of various ingredients that may or may not contain haram (unlawful, forbidden) ingredients like blood or swine.

To help this problem, there are various certification bodies that have been created specifically to identify and label food products as halal, making it easier for Muslims to ensure that the food products they consume are safe to eat. One of these certification bodies in Australia is the Halal Certification Authority ("HCA"), which provides a seal (a registered trade mark) to companies that have proven that their products comply with halal requirements, and have paid licensing fees.

The HCA recently commenced a trade mark infringement case in Australia against several kebab shops – Scadilone and two others that it supplied with products, White Heaven, and Quality Kebabs. The HCA sought compensatory damages based on lost license fees – around $5000 for a year’s worth of license from each of the shops, with Quality Kebabs being asked for $60,000 because its conduct has occurred over parts of two different annual licensing periods.

According to HCA, Quality Kebabs’ sales representative allegedly provided Scadilone and White Heaven with certificates bearing HCA’s trade mark, allowing them to promote their goods as halal, even though Quality Kebabs itself was not certified by HCA nor paid any of the license fees. The issue in this case was not whether Quality Kebab’s products are compliant with halal standards, but that it used HCA’s certificates – incorporating a registered trade mark – without getting express permission or paying for the license fees.

The court found that it was unlikely that any of the infringers would have acquired a license given the quantum of HCA's fees, so there were no likely “lost” license fees. The court also noted that had Quality Kebabs been aware that HCA’s trade mark was registered and license fees were payable, it would not have used the trade mark in the first place and would have found an alternative certificate. The court deemed that HCA had not been deprived of its license fee.

Tuesday, August 5, 2014

New gTLDs Nearing 1 Million Registrations, But Some Numbers May Be Inflated

As new generic top level domains are launched daily and businesses recognise the potential of these new gTLDs for building brands and identities online (as opposed to haggling or shelling out ridiculous amounts of money for .com and .net domains owned by domain flippers and squatters), it’s not surprising that the total number of domain registrations for gTLDs are near the millionth mark. It’s also not surprising that the top two ranking gTLDs are .club (64,579 registrations) and .guru (60,201 registrations), given the inherent popularity of each word.

The fourth ranked is .berlin (47,921) and the fifth, .photography (37,173) – again, not surprising particularly in the case of .photography, given the number of amateur and professional photographers online. But the fifth top ranked domain, .xyz (36,335) is a little bit suspicious, especially since more than 27 thousand new registrations for said gTLD belong to Network Solutions (NetSol) and its parent company, which only had 16,790 domain name registrations among the new gTLDs before the .xyz launch. Upon the launch of the .xyz domain, NetSol’s numbers skyrocketed to 44,476 registrations for the .xyz domain alone, accounting for 62.25% of the company’s total registrations.

Suspicions of artificially inflated numbers started surfacing after posted a news story revealing that Network Solutions is giving out a complementary .xyz domain free for 1 year to people who buy a .com domain on their service. Additionally, in order to decline the offer, the user has to visit a link and specifically click a "decline" button. Otherwise, the domain is awarded automatically.

It’s very likely that some of those .xyz registrations are actual legitimate registrations from people who want the domain, but given the huge spike in these registrations compared to other domain registrars (particularly compared to, which is currently more popular and offers relatively cheaper rates,) it’s very easy to deduce that the numbers are significantly boosted by this promotion.

The rankings are important in that the apparent popularity of each gTLD is likely to influence purchasing patterns - people will be caused to think that .xyz is popular (to some unknown demographic? To non-English speakers?) and will be encouraged by the high ranking to purchase .xyz domains. It will be interesting to see if new gTLDs will use the same tactic or will come up with other strategies.

Monday, August 4, 2014

Hells Angels, Banditos and Mongols: Trade Marks and Motorcycle Clubs

The Hells Angels Motorcycle Club (HAMC) is one of the largest motorcycle clubs in the world, with more than two thousand members belonging to 230 chapters in 27 countries. The club is incorporated in the U.S. and Canada as the Hells Angels Motorcycle Corporation.

The HAMC is very protective of its image and brand, particularly the club logo. In October 2013, the club filed a lawsuit in the US District Court for the Eastern District of California against 8732 Apparel, which is a clothing line owned by rapper Young Jeezy and retailer Dillard’s. The lawsuit alleged that elements of the clothing line infringed the intellectual property rights of the club patch, which is a skull with wings (known as the "Death Head"), and otherwise featuring the name of the club on top and the chapter details underneath.

Young Jeezy’s 8732 apparel, on the other hand, featured a mask with wings that bears a similar shape to the Death Head, and the words “Street Bandit” and “Eight Seven” in places where the HAMC name and chapter would have been. (photo comparison)

The Death Head logo, the HAMC name and the chapter all make up the standard Hells Angels patch, which serve as a sign of full club membership. The club owns two registered US trade marks for the patch design and two for the Death Head symbol.

The Hells Angels’ lawsuit cites willful infringement, and demands triple damages and attorney’s fees. Unsurprisingly – given the club’s reputation – the lawsuit was settled in the motorcycle club’s favor for an undisclosed amount. The clothing line has since been removed from the shelves of Dillard's.

In Queensland, Australia, laws around the wearing of motorcycle patches have apparently triggered the filing of many trade mark registrations. In October 2013 the Queensland Government introduced legislation which, amongst other things, prohibited the wearing of patches and the service of alcohol to people wearing prohibited motorcycle patches. These laws are, collectively, the Vicious Lawless Associations Disestablishment Act, the Tattoo Parlours Act and the Criminal Gang Destruction Act, together with amendments to the Liquor Act 1992.

The "1%er" symbol
Setting aside immediate and loud complaints from civil libertarian groups regarding the draconian tenor of the laws, the response of the motorcycle clubs has been to file many trade mark applications. This includes three recently filed trade marks for the Mongol Motorcycle Club (which recently reportedly entered Australia through a merger with the Finks Motorcycle Club), and multiple new applications filed by the Banditos Motorcycle Club. Some of the existing registrations incorporate the "1%" logo, an indicator that the wearer is one of the alleged one per cent of motor cyclists who "live outside the law", and which is banned under the Queensland laws.

The assumption is that the clubs have received advice similar to that followed by the tobacco industry in resisting efforts to introduce plain packaging for cigarettes: that the Queensland legislation unfairly strips the clubs of their valuable intellectual property rights. Alternatively, the clubs might be seeking to argue that federal trade mark legislation constitutionally over-rides state legislation banning the use of the specific motor cycle patches. It will be interesting to see how this strategy unfolds as the year progresses.

Sunday, August 3, 2014

Japan Starts Campaign Against Online Copyright Infringement

Japanese comics (which is called “manga”) and animated cartoons (called "anime") are subject to very robust protection in Japan. It is common to read about individuals facing jailtime and fines for illegal distribution of copyright-protected content or selling of unlicensed merchandise.

For the most part people residing outside of Japan managed to get away with hosting scans of popular manga titles on their own website. However, the Japanese government is now taking steps to strengthen the protection for Japan's manga industry. Japan is rolling out new copyright laws improving protection for manga and anime, and will be sending takedown notices to over 500 alleged infringers who have uploaded manga scans online without permission from the copyright holders.

According to the Japan Book Publishers Association’s data, the sales of manga in North America in 2011 have dropped to 150 billion yen (roughly US$1.5 billion) from 2007’s 300 billion yen (US$2.9 billion). Piracy is cited as the main cause of decline.