Coachella sues Urban Outfitters for Trademark Infringement

Screenshot: Free People

The basis of most trademark cases is the existence of a likelihood of confusion as to origin between the infringing mark and the registered mark. This can also be linked with the Tort of Passing Off, which relates to cases where the infringing mark benefits from the established goodwill of the registered mark.

On March 14, Goldenvoice, owners of the Coachella brand- an annual music and arts festival in California,  initiated a suit for trademark infringement against 'Urban Outfitters'. Goldenvoice alleged that Urban, through its affiliate brand 'Free People', unlawfully used the former's established brand name and registered trademark 'Coachella' to sell clothing and other products.  According to LA Times' report, Urban allegedly 'uses "Coachella" as a search keyword to advertise its products online' and also placed the brand name in Free People's display URLs', which causes a Google search for ‘Coachella clothing’ to result in the 'Defendants’ infringing goods.

Coachella has asked the court for damages as well as an order requiring Urban to remove the infringing items put up for sale and to employ 'corrective advertising' methods to inform users that it is in no way affiliated with the Coachella Festival brand. Coachella has also previously permitted the H & M brand to use its name for the special collection H & M Loves Coachella

This is because the Coachella brand also has its line of branded goods and the misdirection in search results has a high likelihood of confusion. Forbes reports that prior to this suit, Coachella has made earlier demands of Urban to correct this confusion and the latter has also faced several copyright infringement claims from Harley-Davidson and Unicolors as well as other litigation.

The Coachella concert comes up later next month on the weekends of 14 and 23 April with tickets selling from $444 upwards and attendants in need of bohemian-style costumes. The timing of the suit is thus quite strategic as it will undoubtedly limit the sale of such clothing by Urban. It would be interesting to see how this dispute is resolved.

ARIPO AND OAPI SIGN COOPERATION AGREEMENT

A four-year Cooperation Agreement has been signed between the African Regional Intellectual Property Organization (ARIPO) and the Organisation Africaine de la Propriété Intellectuelle (OAPI) [African Intellectual Property Organization]. The Agreement was signed on 9 February 2017 at the ARIPO headquarters in Harare, Zimbabwe and is aimed at improving the working relationship between both organisations. It also effectively abrogates the earlier 1996 and 2005 Agreements between ARIPO AND OAPI.

According to ARIPO, the 2017 Agreement creates a 'comprehensive cooperation framework in intellectual property matters' for both organisations.  "In the new Agreement, OAPI and ARIPO have agreed to: work towards the harmonization of their systems; exchange documentation and technical information; mutually cooperate in the development of training and joint capacity building programs including in user awareness. The agreement also requires that either party offers technical assistance to the other when such assistance has been requested for. Importantly too, OAPI and ARIPO agreed to take common positions on major IP issues affecting the Member States of the two organizations at continental and international levels."

ARIPO is made up of 19 member states that are mostly English-speaking African nations and was established by the Lusaka Agreement of 1976 (then African Regional Industrial Property Organization) with the main objective of fostering 'cooperation in industrial property [that] is intended to achieve technological advancement for economic and industrial development of the member states.' Membership is open to states that belong to the United Nations Economic Commission for Africa (ECA) or the African Union (AU).  The OAPI, on the other hand, has 17 member states, mostly French-speaking African countries, including Benin, Cameroon, Chad, Gabon, Guinea, Ivory Coast, Mali, Niger, Senegal and Togo. It was set up by the Bangui Agreement of March 2, 1977 to interalia 'implement and apply common administrative procedure deriving from a uniform system for the protection of industrial property as well as the provision of international agreements in this field to which the Member States of the organisation have acceded and providing services related to industrial property'. 

ARIPO and OAPI have developed a joint biannual work plan for 2017-2018 to begin operations with the 2017 Agreement. This includes several prospective activities in the different areas of cooperation, as well as expected results and details of coordination, administration and timelines. A Commission made up of members from both organisations will also meet to assess the level of implementation of the agreed work plans.

THE IPO REPORT: FAST FACTS FOR 2017

Intellectual Property Office, United Kingdom

  

The United Kingdom Intellectual Property Office (IPO) has published its Fast Facts for 2017 which presents the filing statistics for patents, trademarks and designs in 2014/2015, along with other information about intellectual property and the office.

 Some key facts in the Report are as follows:

2014 

• Patent-intensive industries' contributed approx. 13.3% (€265 billion) to UK GDP and 8.3% (2.4 million) of UK employment each year 2011-13.
• The total investment in intangible assets protected by Patents was estimated at £7.5 billion (equivalent to approximately 0.4% of total UK GDP).
•  Investments in IP-protected intangible assets rose from '£47 billion in 2000 to £70 billion'.
•  5,464 patents were granted by the IPO, 2,838 of which were to UK-based applicants.
• An estimated 11% of total UK investment in intangible assets was in assets protected by design rights; 9% in assets protected by unregistered design rights and 2% in assets protected by design registration.
• Trade mark-intensive industries contributed an estimated 38.4% (€762 billion) of UK GDP and 21.5% (6.4 million) of UK employment per year during the period 2011-13.

2015

• 22,801 patent applications were made to the IPO, 14,870 of which were by UK applicants. This makes the IPO as the world’s 12th largest IP office. 
•  5,037 applications were made to the European Patent Office by UK applicants, 7% higher than last year. Also 2,097 European patents were granted to UK businesses.
•  54,320 UK trademark applications were filed, 49, 201 of which were by UK-based applicants. This figure is 6% higher than 2014 and increasing annually over the last 5 years
•  46,299 national UK registrations were filed at the IPO, 41,638 of which were by UK-based applicants
•  4,307 Madrid protocol applications  were filed and  3,780 Madrid protocol trade marks were registered
• UK design applications filed are 31% higher than 2014, owing to the launch of IPO’s new digital “Apply for a Design Service”. The registration fees were also reduced in October 2016 which may also increase this percentage. 
• The IPO’s turnover in financial year 2015/2016 was £80.34 million.

According to the 2016 Taylor Wessing’s Global IP Index, the UK IP system is ranked 3^rd in ' obtaining, exploiting and enforcing IP rights'. The IPO Report highlights that IP crime by organised crime gangs costs the UK economy hundreds of millions of pounds annually and causes significant damage to industry. As detailed in the report, officials confiscated 1.6 million consignments of infringing goods at the UK border valued over £56 million. Furthermore, the 2015/16 Trading Standards' IP Crime Survey shows that the top five products investigated in 2015/16 were tobacco, clothing, alcohol, footwear and watches/ jewellery. 

It would be interesting to see what happens to these figures from this year onward, based on all the recent changes in the UK as a result of implications of BREXIT. More UK Patents and Trademarks may be registered in addition to EU-wide registrations to ensure full protection once Britain completes the exit process from the EU.

For the full report, click here.

MICHAEL JORDAN v. QIAODAN SPORTS ENDS IN PARTIAL VICTORY

Michael Jordan. Photo: Kin Cheung/AP

Retired Basketball legend Michael Jordan has been successful in a long battle against China based Sportswear Company, Qiaodan Sports Co. for the unlawful use of his name in Chinese on its sportswear merchandise.

As far back as 2012, Jordan asked Chinese authorities to revoke the company's trademark as it featured a similar name and logo to his brand of sports merchandise which is currently produced by Nike. He argued that the company's merchandise and trademark was misleading to consumers about being connected to him. This is because the disputed name Qiaodan was a Chinese equivalent of Jordan, and the silhouette of a leaping basketball player was similar to the 'Jumpman' logo used by Nike for the Air Jordan brand. After an unsuccessful claim at two lower courts, Jordan appealed to the nation's Supreme Court. He asked the court to invalidate more than 60 trademarks used by the company for damage to his legal rights to use his name.  

Qiaodan branded trainer in Beijing. AFP Photo/Greg Baker

The Supreme Court of China ruled that the Fujian-based company should stop using Chinese characters for Qiaodan. The court agreed that the company had violated trademark law and that its registration of the name should be revoked. It was satisfied that by registering Jordan's name in Chinese as a trademark the company showed 'malicious intent'. However, the court stated that "the phonetic spellings of Jordan's Chinese name using the English alphabet do not infringe on his right to use his name in the country." It allowed the Company the right to use the Romanized version of the name Qiaodan (pronounced 'Chee-ow-dahn'); making it a partial victory. Also, no punitive damages for the infringement were awarded. 

A Qiaodan branded shoe in Beijing. AFP Photo/Greg Baker

In a statement to the BBC, Michael Jordan said: “I am happy that the supreme people’s court has recognised the right to protect my name through its ruling in the trademark cases...Chinese consumers deserve to know that Qiaodan Sports and its products have no connection to me...Nothing is more important than protecting your own name, and today's decision shows the importance of that principle."

The company has also responded in a blog post on its official Weibo account that it respects the court's verdict and will fulfill the legal requirements for intellectual property protection in relation to its brands.  According to Bloomberg, the U.S. Chamber of Commerce 'welcomed the court’s decision', stating that 'it would help reinforce protections on brands and discourage people from filing trademarks in bad faith.' The Executive Vice-President of the Chamber's Global Intellectual Property Centre, Mark Elliot stated: “This case is not only about an individual sports icon; it is about creating a legitimate marketplace where consumers can trust the products they buy...This ruling marks a step forward for efforts to foster a better business ecosystem in China.”

The problem of counterfeiting has been prevalent in China for quite some time and the government has frequently been criticised for its weak system, in terms of legal and regulatory framework, for the protection of intellectual property rights. It is also on the US priority watch list for 2016. Awarding punitive damages for the infringement in this case, would have served as a deterrent for future cases of infringement in China. The current costs of intellectual property infringement in China have been described as too low; which necessitates a review of the law to include definite penalties for such infringement. Jordan has another suit before the Court in Shanghai against Qiaodan Sports for the unlawful use of his name. This time, the sports icon is seeking damages and hopes for a successful outcome.

It is commendable that Michael Jordan has chosen to enforce his rights, albeit across borders. Sometimes it may be discouraging to pursue such cases because of the length of time it takes to get visible results, especially in jurisdictions with weak intellectual property regimes. However, it is only by fighting the act of piracy, passing off, selling counterfeits and infringing on intellectual property rights, that there can be global reforms in these areas. Countries where such disputes arise, should also take active steps to ensure there is sufficient redress in the law for aggrieved right owners, including those from other territories.