The Trademark Wars

Space Force v Space Force

Let me explain.

It has provoked scepticism in Congress, a satire on Netflix, and, with its uncannily similar logo, “Star Trek” jokes about intergalactic battles.” CBSNews.com

Trump and Steve Cavell spoof
Space Force v Space Force

On the one side, we have Space Force, the newest branch of the U.S. armed forces, announced by Donald Trump way back in early 2018.

On the other side we have the Netflix comedy series, Space Force starring Steve Carell released this year on May 29th.

Now, you’d think the ‘rights’ issue would be in the bag for the U.S. government, and you would also assume that they’ve already won the battles, as well as the war.
Well, apparently the U.S. government had a reputation for being lax when it came to registering trademarks until that is, they finally established branding and licensing office in 2007.

Most surprisingly in this case, especially for a businessman such as Trump, they made the rookie mistake of announcing a brand before securing its intellectual property rights, thus limiting the government’s control of the name in the marketplace.

How can a fictional comedy series ever be confused with real-life astronaut training or satellite intelligence is not really the question here.
But it is a question for Space Force merchandisers.

Basically, the U.S government filed a trademark application in May this year and included the following products – key chains, jewellery, bedspreads, towels, cigarette lighters and toy cars BUT all those items were already filed by someone else, TWO years earlier!

At the moment, it only has a pending ‘intent-to-use’ trademark application and is competing with several other applications for “Space Force” some dating from early March 2018.

Netflix on the other hand has already secured trademark rights to “Space Force” in Europe, Australia and Mexico!

Trump Star Trek
Elon Musk welcomes Space Force with 2 words on Twitter: ‘Starfleet begins’

Victory may still be a foregone conclusion for the U.S. government, but it will be a lengthy and expensive war with not a few casualties. A war that could have been easily averted with a cleverly planned I.P. strategy.

“At this time, we are not aware of any trademark conflicts with the fictional program Space Force produced by Netflix,” says an Air Force spokesperson to the Hollywood Reporter. “We wish Netflix and the show’s producers the best in their creative depiction of our nation’s newest branch of the military.”

The best way to stop IP infringement of your product or brand is to be aware of the problem and also by understanding the level of the problem. Axencis is constantly innovating and creating tools to firstly identify and then successfully combat this threat for our clients. Fine-tuning from our dedicated professional investigations team then leads to successful takedowns and ultimately to compensation from counterfeit sellers.

Here at Axencis, our first step is to evaluate the level of a brand’s existing vulnerability and exposure to counterfeit markets. Feel free to contact us for an assessment.

Face Masks – the new fake luxury good

Is yours genuine?

As we are slowly getting back to some semblance of pre-Covid normality, we can all expect some fundamental changes to our lives, namely the wearing of face masks.

Schools are opening this month, parents are finally going back to work, and generally people are gathering together for the first time in months. Face masks are not only going to be compulsory but the norm for a long while to come.

Designers and fashion houses have stepped up and launched their own face coverings, but many clever individuals have repurposed designer items to make their own. Genuine items have been repurposed – scarves and handkerchiefs from designers such as Hermes, and Versace as well as small leather items from Louis Vuitton and Gucci.

With all of the attention on social media, these Designer-themed items have no doubt gained in popularity overnight. And this is just the type of item the counterfeit trade is attracted to.

If you do a quick search on any e-commerce platform, for ‘designer face-mask’ you’ll have plenty to choose from!

Australian model JessicaHart on Instagram modelling a leather face mask featuring the LV logo.

She did tag Louis Vuitton in the post.

So yes, we can see the obvious problem of having mass-produced knock-offs passed off as genuine, fundamentally damaging a famous brands reputation with bad quality items, but is it that simple?

There are those that just make use of a pattern e.g. the famous Burberry check , or of just the brand name e.g. Chanel. Is that classed as counterfeiting, or is it actually marketing if worn by an Influencer on Social Media, an ‘homage’ if you like to our favourite brands?

And finally, what about the use of a genuine item, repurposed in this case into a face mask? Is that allowed or is that trademark infringement?

In short, epidemiologists are saying that we should all be prepared for a future where further, and different outbreaks will occur – where we will all be required to use face-masks daily!

These may be questions then, that need to be addressed sooner rather than later.

All the ‘legalese’ from The IPkitten Blog.

The best way to stop IP infringement of your product or brand is to be aware of the problem and also by understanding the level of the problem. Axencis is constantly innovating and creating tools to firstly identify and then successfully combat this threat for our clients. Fine-tuning from our dedicated professional investigations team then leads to successful takedowns and ultimately to compensation from counterfeit sellers.

Here at Axencis, our first step is to evaluate the level of a brand’s existing vulnerability and exposure to counterfeit markets. Feel free to contact us for an assessment.

Back to School – is it the real thing

What’s in your bag?

All of these Trademarked Brands are currently in use in the Dictionary, as the generic word used to describe a particular type of product.
Let’s see if any surprise you.

The everyday Biro

The inventor Lazlo Biro was fed up with inconvenient fountain pens. He tried using quick drying printers’ ink over a ball-bearing point, eliminating the need to blot. Trademark owned by Bic.

Tipp-Ex

This is a type of correction fluid invented in Germany in 1958, whose trademark is now owned by Société Bic.

Sellotape

A generic term for sticky tape, cementing it as the U.K. market leader in the mind of consumers. It’s been in the dictionary since 1980. Trademark now owned by Henkel AG.

Or some Scotch tape

This term appears in dictionaries as both generic and trademarked. “Trademark Law” advises that proper usage is “Scotch brand cellophane tape” to combat “generic tendencies” ?. The trademark is owned by 3M.

Google

Google famously attempted to have its name, and especially the use of it as a verb, kept out of the dictionary despite widespread examples of people ‘googling’ and ‘being googled’ its attempts were in vain as the word appeared in the dictionary in 2003.

Photoshop

Originating from the image editing programme Adobe Photoshop, it is now a commonly used term for the digital editing of photographs. Adobe is trying to discourage the use of the term ‘photoshop’ as a verb. Good luck with that! ?

Everyone uses Tupperware

A lidded plastic container used in our case for kids packed lunches. Original Tupperware was first introduced to the public in 1946, a product that could be even more popular now in these days of re-using and recycling than ever before. The trademark is still owned by inventor Earl Tupper.

Thermos

This has long been the dominant brand in many countries for insulated vacuum flasks, primarily intended to keep its contents hot or cold. Invented in 1892, Thermos in upper case is a registered trademark of Thermos GmbH subsidiaries and licensees in over 115 countries.

Playing on Astroturf?

A brand of artificial turf invented in the U.S. in 1965. Famously used in sports fields worldwide, is yours the real deal?

Start a game of Frisbee 

This is now the generic term for a gliding toy made of plastic roughly 20-25 cm in diameter. From 1937 came the idea and development of this flying disc, and then finally in 1957 the Wham-O toy company gave birth to the name Frisbee. Wham-O still owns the trademark to this day.

The iPod

A portable media player whose trademark was already in use by someone else. Apple finally had the trademark assigned to them in 2005.

Coke (Coca-Cola)

Is it always ‘the real thing’ though? If you ask for a coke then you might get any kind of cola. This is of course, one of the most well-known genericized brands in the world. Trademarked since 1893!!

Memory Stick

The one that surprised me the most was the ‘Memory Stick’ by Sony.

Typically used to refer to all USB flash drives, as opposed to other brands of memory cards akin to Sony’s products.
They didn’t even alter the spelling a little by using the word ‘stik’! 
What about you? Any surprises?

ZOOM

And finally, this one is neither generic nor in the Dictionary as yet, but worth including in this list:

Many schools were using this platform for their online lessons during the last part of the school year 2019-2020 while quarantined at home. Frequently used as a verb, this video-conferencing platform has become a common part of the new normal, and an integral part of life during the recent coronavirus pandemic. With such widespread use and recognition, does this brand risk becoming a generic term too? The trademark is owned by Zoom Video Communications, for now. ?

The best way to stop IP infringement of your product or brand is to be aware of the problem and also by understanding the level of the problem. Axencis is constantly innovating and creating tools to firstly identify and then successfully combat this threat for our clients. Fine-tuning from our dedicated professional investigations team then leads to successful takedowns and ultimately to compensation from counterfeit sellers.

Here at Axencis, our first step is to evaluate the level of a brand’s existing vulnerability and exposure to counterfeit markets. Feel free to contact us for an assessment.

Aliexpress – where did all the counterfeits go

Are the ‘dupes’ still out there?

Fake Dr Martens Lazy Oaf Boot

Online marketplaces and social media platforms have been showing significant growth in counterfeit products each year.

New e-commerce websites and apps have been introduced to the bargain-hunting public on a regular basis, brimming with well-known brands, designer goods and household names – and also introducing easier ways to pay, faster delivery and even free shipping.

During the Covid-19 crisis, there has been a 146% growth in all online retail orders in the U.S and Canada.
Forbes.com

After seeing a huge rise in online purchases we can assume that there has been a substantial increase in counterfeit sales also. Statistics hitting areas of the marketplace where people who are forced to stay at home during the Covid crisis would be most attracted to, like children’s toys and sporting goods, products which help make confinement more fun and bearable.

One of the top marketplace websites and popular at the moment is Aliexpress, a subsidiary of Alibaba.

Aliexpress is owned by the Alibaba Group – which also owns the websites Alibaba, TMall, Taobao and 1688.com …and counting

Aliexpress has steadily gained in popularity and this is probably due to the fact that unlike other Chinese e-commerce websites, this one is geared toward selling to buyers outside of China and is, of course, available in several languages.

If you do a quick search on Google, you can easily find many items passed off as genuine. Here I searched very blatantly for a “fake Furla watch” in the search. Over $50 for a cheap Chinese “dupe” or knockoff is not really a bargain, but still a fake!

Back in 2015 Alibaba created a dedicated team to combat IP infringements which did result in a significant decrease in fake goods, but counterfeit products are still widely available on this platform.

Can’t find what you’re looking for by typing in the brand name you’re after? This is because sellers, apparently, can no longer use genuine brand names, but there are specific unaffiliated websites created to help you out!

The abbreviations and links shown in the pictures above would take you directly to the counterfeit listings on the Aliexpress platform. As well as advice on keywords there are also articles and links to help you expertly navigate the Aliexpress hidden counterfeit listings.

Another website that has appeared, is Yupoo. Quite worryingly this is a photo-sharing site, with no words, no prices and no names – just a contact link which leads you to chat apps such as WhatsApp. By contacting the seller via chat, you will be given a link to an Aliexpress page. This link will normally show a completely different, unbranded product and this is actually the link to the counterfeit item you were after!

The World Trademark Review reported on this long, roundabout way to purchase counterfeit items from Aliexpress and they also provide advice on Yupoo page takedowns. With this increase in online purchases due to Covid 19, we can see that similar e-commerce sites and social media platforms like Facebook and Instagram are already platforms where counterfeiters are completely bypassing traditional sites.

The best way to stop IP infringement of your product or brand is to be aware of the problem and also by understanding the level of the problem. Axencis is constantly innovating and creating tools to firstly identify and then successfully combat this threat for our clients. Fine-tuning from our dedicated professional investigations team then leads to successful takedowns and ultimately to compensation from counterfeit sellers.

Here at Axencis, our first step is to evaluate the level of a brand’s existing vulnerability and exposure to counterfeit markets. Feel free to contact us for an assessment.

$6 Billion Industry – With No Copyright Protection

Bah Humbug! Or Ho! Ho! Ho!?

The name of a perfume is probably trademarked, the packaging and even the bottle could be patented, the text on the box may also be copyrighted, and of course, certain synthetic olfactory elements, smells, would also be protected.

But the liquid, the fragrance itself, has never enjoyed any such protection.

With Christmas and the Holidays upon us, gift-giving is at its peak at this time of the year and one of the most coveted and therefore best-selling items every year, a $6 billion industry, is perfume!

The retail price for a tiny bottle or vial of a perfume can run into the 100’s of dollars, so it’s no wonder we treasure every drop, using it sparingly and reverently on special occasions.

But can you believe that perfume has no protection against being copied whatsoever?

Scent can be copyrighted but perfume cannot. Lancôme v. Kecofa ([2005]

The difference between the definitions of perfume and scent is that fragrance denotes a pleasant sweet smell, whereas scent is used for an unmistakable fragrance.

So, if you cannot protect a perfume from being copied is it legal and acceptable for ‘smell-alikes’ or ‘dupes’ to be bought as an alternative?

Are these ‘smell-alikes’ harming brands with their not so ‘luxury’ or high end ‘perfumes’?

We’re not talking some cheap and tacky Dollar Store ‘eau parfumee’. So, what exactly are we talking about here? Here are some examples of similar scents at not so similar prices*.


This is Viktor & Rolf’s Flower Bomb Eau de Parfum Spray 3.4 oz (100ml) approx. $90-$130 –compared to Katy Perry’s Killer Queen Eau de Parfum Spray 3.4 oz (100 ml) approx. $20


Marc Jacobs Daisy Eau de Toilette 3.4 oz (100 ml) $50 – the ‘smell-alike’ here is Zara’s Applejuice Eau de Toilette 3.4 oz (100 ml) $18, and is also similar to M&S’s Butterfly Eau de Toilette 90 ml $20


D&G ‘The One’ Eau de Parfum 3.4 oz (100ml) approx. $70 – with a very similar fragrance from Zara with ‘Black Amber’ Eau de Parfum 3.4 oz (100ml) $18


Chanel ‘Coco Mademoiselle’ Eau de Parfum 1.7 oz (50ml) $100 is uncannily similar to Lidl’s ‘Suddenly Madame Glamour’ Eau de Parfum 1.7 oz (50ml) $6 in stores   


D&G ‘Light Blue’ Eau de Toilette 3.4 oz (100 ml) $60, a similar scent is M&S’s (Marks & Spencer’s) ‘Azure Breeze’ Eau de Toilette 3.4 oz (100 ml) $21


Chanel ‘Allure’ Eau de Parfum 3.4 oz (100ml) $129 or try M&S’s (Marks & Spencer’s) ‘New York’ Eau de Toilette 3.4 oz (100 ml) $21


Ralph Lauren ‘Romance’ Eau de Parfum 3.4 oz (100ml) $74 compared with ‘Just Pink’ Eau de Parfum 3.4 oz (100ml) £14 (approx. $18) at Next


All of these perfumes are stylish and smell lovely enough to be given, and received as presents. Even though they are so much cheaper than the higher end brands, all of them are happily reputable brands themselves, and this is just a small selection.

But really, this was just me trying to be clever.

There have of course been recent developments in intellectual property law with regard to the copyright protection of perfume. A Netherlands Court has recently recognized copyright in perfume while a French Court, shockingly held that there is no skill involved in making a perfume!!

The general consensus around the web is that it is not necessarily whether or not it’s appropriate to sell perfumes which are more or less similar to others, but rather whether these sellers are using third-party trademarks to promote and sell their own products. Are these ‘dupes’ taking advantage of all the marketing and brand awareness that these perfume companies have spent $$$’s on?

There are the out and out fakers, who make no bones about selling ‘dupes’ and blatantly market them using the brand and good reputation of the original. Companies whose only business is smell-alike perfumes, where they not only use the name of the original perfume, but even the actual trademark to make it absolutely clear which original they are ‘copying’ and selling to you at a much, much lower price.

So yes, I say go ahead and enjoy a cheaper bottle of scent (not a dupe, mind) for splashing on liberally as an everyday option, and also enjoy dabbing precious drops or spritzing delicate mists of your gorgeously expensive perfume more mindfully.

And as for the future of copyright for a perfume, in my humble opinion, the creation of a perfume is no less of an art than painting a picture or writing a book. What should be protected is not the smell, but the originality of the combinations created by this ‘artist’, this creator.

Wishing you all a very Merry Christmas and Happy Holidays!


The best way to stop IP infringement of your product or brand is to be aware of the problem and also by understanding the level of the problem. Axencis is constantly innovating and creating tools to firstly identify and then successfully combat this threat for our clients. Fine-tuning from our dedicated professional investigations team then leads to successful takedowns and ultimately to compensation from counterfeit sellers.

Here at Axencis, our first step is to evaluate the level of a brand’s existing vulnerability and exposure to counterfeit markets. Feel free to contact us for an assessment.

*all prices are approximate and current in December 2020, from around the web.