201902.20

“The Real Threat of Fake Toys”, a White paper from the Toy Association

Founded in 1916, the Toy Association is representing companies that design, produce, license and distribute toys and entertainment products for youth. It has more than 950 members, including Amazon. The Toy Association defends the interests of its members, including the toy safety and brand protection of its members. In this regard, the association has just…

201902.19

Press Review on Counterfeiting (January 2019)

Azerbaijan Azerbaijan plans to strengthen the fight against counterfeit dairy products (trend.az, 25 Jan. 2019). China Hong Kong Customs seized counterfeit garments with a market value of $ 2.5 million after a week-long operation (Champion, Tommy Hilfiger, and Stussy). Nine people were arrested (insideretail.hk, 11 Jan. 2019). Shanghai police dismantled a group of 36 people…

201902.14

Counterfeiting: Amazon Anticipates Increased Judicial Risk

On January 31, 2019, Amazon delivered its annual report to the Securities and Exchange Commission (SEC). After referring to a possible amendment of the US law on the liability of Internet intermediaries, Amazon acknowledged that it could be held liable for the activity of its users, particularly for counterfeiting: “The law relating to the liability…

201902.06

cnDRP: Blablacar.com.cn transferred while Blablacar.cn rejected, why?

With 800 million Internet users, China is the largest market. It is imperative to file its trademarks in China and register domain names aimed at the Chinese market at the same time as the brand is created. Trademarks and domain names must be matched as twins both in the country of origin and in foreign…

201901.07

Press Review on Counterfeiting (December 2018)

Argentina FMC QUIMICA S.A. has reported having detected in Santa Fe, Córdoba and Salta counterfeit of its insecticide “Coragen” (agrofy.com.ar, 12 Dec. 2018). Australia Toyota counterfeit auto parts have been seized, including brake pads that do not meet the safety requirements. A Toyota employee said: “If you buy online and it’s not from an authorized…

201812.19

Did Deadpool Register Avengers’ Domain Names in Bad Faith?

If by chance it came to the idea of Marvel fans to visit the website that is designated by the domain AvengersEndgame.com, they would not see Stan Lee’s work showing Iron Man, Captain America, Hulk, Thor, Black Widow, Dr. Stephen Strange, Black Panther or other superheroes, but the unexpected anti-hero Deadpool! The AvengersEndgame.com domain name…

201812.16

Counterfeit and Piracy Watch List, a European Commission Staff Working Document

Like the Office of the United States Trade Representative (USTR) (see iptwins.com, Nov. 22, 2018 ; iptwins.com, Nov. 20, 2018 ; iptwins Nov. 16, 2018 ; iptwins .com, Nov. 15, 2018 ; iptwins.com, Oct. 19, 2018), the European Commission has built a list of online and physical counterfeit sites (Commission Staff Working Document, Counterfeit and Piracy Watch List,…

201812.11

Press review on Counterfeiting (November 2018)

Algeria The General Directorate of Algerian Customs said that in 2017, more than 700,000 counterfeit glasses were seized nationwide. Mr. Kamel Kadi, head of the office in charge of the fight against counterfeiting Algerian Customs, regrets that some importers resort to methods “that may outsmart customs officers” (Aps.dz, 15 nov. 2018). Cambodia At the “Combatting…

201812.11

Samsung partners with Supreme imposter

On 10th December, Korean smartphone manufacturer Samsung introduced its latest device and announced a partnership with streetwear brand Supreme. Well, almost. In reality, Samsung did not partner with world-famous Supreme NYC, but rather with a shady Italian clone, Supreme Italia. This company holds the trademark rights on SUPREME in Italy, which it registered before the…

201811.30

Counterfeiting and cybersquatting: more than one million domain names seized

The U.S. Immigration and Customs Enforcement (ICE) announced that last year more than one million domain names of websites infringing intellectual property rights had been seized: approximately 33 600 in criminal proceedings and 1.21 million in civil proceedings (ice.gov, 26 Nov. 2018). ICE reports that industry partners involved in the operation were fully responsible for…

201811.22

Unifab’s contribution to the list of the most notorious “counterfeit spots”

Every year, the Office of the United States Trade Representative (USTR) collects a list of the most notorious online and physical counterfeit spots that are outside US borders. (Special 301 Out-of-Cycle Review of Notorious Markets). For example, the 2017 report mentions, inter alia, the following marketplaces: DHGhate.com (China), Indiamart.com (India), Taobao.com (China), Vkontakte.com (Russia), and…

201811.20

Fighting against counterfeit medicines by suspending and blocking domain names

Every year, the Office of the United States Trade Representative (USTR) collects a list of the most notorious online and physical counterfeit spots that are outside US borders. (Special 301 Out-of-Cycle Review of Notorious Markets). For example, the 2017 report mentions, inter alia, the following marketplaces: DHGhate.com (China), Indiamart.com (India), Taobao.com (China), Vkontakte.com (Russia), and…

201811.16

2018 Special 301 Out-of-Cycle Review of Notorious Markets: Chanel’s Choices

Every year, the Office of the United States Trade Representative (USTR) collects a list of the most notorious online and physical counterfeit spots that are outside US borders. (Special 301 Out-of-Cycle Review of Notorious Markets). For example, the 2017 report mentions, inter alia, the following marketplaces: DHGhate.com (China), Indiamart.com (India), Taobao.com (China), Vkontakte.com (Russia), and…

201811.15

2018 Special 301 Out-of-Cycle Review of Notorious Markets: Maus Frères targets Facebook, iOffer, and Mercadolibre

Every year, the Office of the United States Trade Representative (USTR) collects a list of the most notorious online and physical counterfeit spots that are outside US borders. (Special 301 Out-of-Cycle Review of Notorious Markets). For example, the 2017 report mentions, inter alia, the following marketplaces: DHGhate.com (China), Indiamart.com (India), Taobao.com (China), Vkontakte.com (Russia), and…

201811.06

Pangea XI: 859 arrests

Interpol has once again coordinated a Pangea operation (Pangea XI) to destabilize the networks involved in counterfeit pharmaceutical and medical products. Interpol closely collaborated with institutions and companies deeply involved, willingly or not, in the fight against counterfeiting: the World Customs Organization (WCO); the Permanent Forum of International Pharmaceutical Crime (PFIPC); the Heads of Medicines…

201811.06

Press Review on Counterfeiting (October 2018)

Belgium As part of the Pangea XI operation, the Belgian customs, in collaboration with the Federal Agency for Medicines and Health Products (FAMHP), controlled 14,464 packages, of which 622 contained medicines or health products. Of these, 141 were seized. They included 28,689 counterfeit products (rtbf.be, 23 oct. 2018). In Brussels, in the Agora gallery, an…

201810.27

PAP (real estate ads) v. PapAuto (car ads): no risk of confusion, and the reputation of the “PAP” is not demonstrated

Éditions Neressis is a French company that runs a real estate website called “PAP, Particulier à Particulier”. This company owns the French trademark No. 1518035 “P.A.P. Particulier à Particulier” (classes 16, 35 and 41), the European Union trademark No. 006701973 “PAP” (classes 16, 35, 38, 41), and the domain name pap.fr. This website pap.fr is…

201810.22

Louis Vuitton Combats Online Counterfeiting Before a Florida Court

Louis Vuitton is suing 23 natural and legal persons in Florida for various infringements of its trademarks (Case 0: 18-cv-62354-CMA). Not less than 120 domain names and websites are concerned. Some domain names reproduce Louis Vuitton trademarks (eg louisvuittonbag.site, uslouisvuitton.co, prezzi-lvborse.org), while others include a term indicating the likely presence of counterfeits (eg: aaaimitationbags.com, fashionfakeseason.com,…

201810.19

2018 Special 301 Out-of-Cycle Review of Notorious Markets: the AAFA Nominates Three Amazons Platforms

Every year, the Office of the United States Trade Representative (USTR) collects a list of the most notorious online and physical counterfeit spots that are outside US borders. (Special 301 Out-of-Cycle Review of Notorious Markets). For example, the 2017 report mentions, inter alia, the following marketplaces: DHGhate.com (China), Indiamart.com (India), Taobao.com (China), Vkontakte.com (Russia), and…

201810.16

Fake Goods on the Dark Side of the Moon

Patience/Time. The Patience of British rock band Pink Floyd has hit The Wall. The band is suing several Chinese entities for the alleged sale of counterfeit goods in relation to their band’s trademarks. Stay. Pink Floyd, which was formed in 1965, is internationally known for their psychedelic rock music and is one of the most…

201810.10

The Birth of AliExpress Russia

For manufacturers, traders and distributors, the birth of a major e-commerce player is perceived either as a windfall or as a threat. This depends, among other things, on the risk that this new player may pose to intellectual property rights owners. The birth of AliExpress Russia inevitably provokes feelings of enthusiasm and dread. Founded in…

201810.09

EU Customs Report 2017 on Counterfeiting: Highlights

This report is based on the EU Customs 2017 results (Report on the EU customs enforcement of intellectual property rights: Taxation and Customs Union. Results at the EU border, 2017). For the most part, the counterfeit goods seized continue to come from China, including Hong Kong. However, it appears that in some countries counterfeiters have…

201810.08

Counterfeit and “Parasitism”: the All Blacks Tackled French Companies

New Zealand Rugby Union (NZRU) is the institution responsible for managing Rugby in New Zealand. It “ensures the operation and development of the national rugby team known as ‘All Blacks’ and conducts an active merchandising policy around the world to obtain the financial revenues necessary for the development of its activity“. It owns a semi-figurative…

201810.01

Press Review on Counterfeiting (September 2018)

Canada, Ontario A several-month investigation led Canadian authorities in June 2018 to make large seizure at the famous Pacific Mall in Markham, north of Toronto. Representative of the Canadian authorities traveled to New York to meet with trademarks owners, including Adidas, Chanel, and Cartier. After analysis, it was confirmed that the goods seized were counterfeit….

201809.27

Cambridge.org v. Carnbridge.org: a UDRP Case on Typosquatting and Identity Theft

The University of Cambridge started a UDRP proceeding under the auspices of the World Intellectual Property Organization’s Arbitration and Mediation Center to obtain the transfer of the unsettling domain name carnbridge.org. The transfer of the domain name was ordered (WIPO, D2018-1542, The Chancellor, Masters and Scholars of the University of Cambridge v. Sunny Legend, September…

201809.25

Copyright as a Means to Fight Against Counterfeiting

On February 24, 2014, French customs visited the offices of a company called “Parisac”. The customs seized nearly 4,000 counterfeit Chanel and Céline bags imported from China. Parisac and its manager, Mr. X., were prosecuted in the Criminal Court for counterfeiting and importing counterfeit goods. On May 4, 2015, the Criminal Court found them guilty….

201809.16

€510,000 in Damages for Counterfeits of Rims and Unfair competition

Mr. R. operates the websites rsimport.com and eurojante.com. The BMW companies have been informed that these tunning websites have a large number of BMW and MINI branded rims. Therefore, BMW managed to obtain the right to conduct a so-called saisie-contrefaçon conducted in the premises of Mr. R. Under French law, saisie-contrefaçon relates to Article 7(1) of the…

201809.13

What to Do With Domain Names Such as starbucksnestle.com and starbucks-nestle.com?

The announcement of a commercial partnership between Nestlé (nestle.com, May 7, 2018) and Starbucks (starbucks.com, August 28, 2018) led to cybersquatting cases. Many domain names combining the “nestle” and “starbucks” trademarks were registered. DRP proceedings were initiated, including the D2018-1183 procedure undertaken by the Nestlé Products Corporation against a US citizen who had registered two…

201809.04

On Your Marks, .SPORT Kicks Off!

The new gTLD .SPORT targets federations, sports organizations, clubs, teams, their athletes, their sponsors, but also sports brands and the media. SPORTt has its rules, so the .SPORT. Eligibility rules apply. The choice of domain names is not free and, for now, the time of registration either. First Rule: Eligibility Sport is for everyone, not the…

201808.31

Cybersquatting: Back to Basics

Can a company (company A) register a domain name (say companyb.com) that is identical to the trademark of its main competitor (company B), and redirects it to its own website (companya.com)? Surprisingly, it appears that the issue still deserves to be raised. Two Canadian publishers fought in a dispute resolution process concerning a .CA domain…

201808.27

Press Review on Counterfeiting (August 2018)

Dubai In the first half of 2018, Dubai Department of Economic Development (DED) closed 4,879 social media accounts and 30 websites involved in the sale of counterfeit goods. This initiative is part of the efforts of the Dubai authorities to participate in the protection of trademarks (Golfnews.com, 5 August 2018). Borneo Ministry of Domestic Trade…

201808.09

Thieves in the Temple? Prince Estate Files Cybersquatting Case vs. Prince.com

The latest in a string of suits filed by the estate of the recording artist Prince (Prince Estate), a New Jersey-based domain name trader, Domain Capital, is being accused of cybersquatting by the Prince Estate for registering the domain name <prince.com> (Paisley Park Enterprises, Inc. and Comerica Bank & Trust, NA as Personal Representative of…

201808.07

India: Amazon Obliged to Bring Counterfeiters to Justice

In India, Beverly Hills Polo Club brand (BHPC) had received information on widespread sale of counterfeit products on amazon.in, including apparel products, accessories, fragrance products, watches, or belts. Now BHPC does not sell its products on online marketplaces, except fragrance/perfumery products. BHPC had therefore asked Amazon to delist the counterfeit URLs and provide BHPC with…

201807.09

.realestate: Let’s Build Together!

The sunrise period of the top level domain dedicated to the real estate business is approaching. Registrations will run from July 28 to August 27, 2018. IP Twins is an accredited registrar with extensive experience and strong expertise in sunrise period procedures. We can assist you in the preparation of your .realestate domain name registration…

201806.28

Harley-Davidson wins 19.2 Million in Statutory Damages Against SunFrog

SunFrog Corporation has been ordered, for trademark infringement, to pay Harley Davidson nearly $ 20 million (HD USA, LLC and Harley Davidson Motor Company Group, LLC, v. SunFrog, LLC, No. 17-CV -711-JPS, US District Court Eastern District of Wisconsin). SunFrog is a marketplace that provides its users with creative tools to produce graphics to be…

201806.25

United States: Prison for Selling Counterfeit Nike Shoes

In Oregon, USA, a man was sentenced to four months in prison followed by three years supervised release for counterfeiting and money laundering. According to the US Department of Justice (DoJ, April 4, 2018), counterfeit Nike brand shoes were offered for sale on Instagram, eBay, and Shopify. The evidence shows that in two years the…

201806.25

The Financial Evaluation of a Domain Name in a UDRP Proceeding

A Taiwanese company registered the disputed domain name senec.com in 2002. A German company, the owner of European trademarks “SENEC”, initiated a UDRP procedure. On the day of receipt of the UDRP complaint by the Arbitration and Mediation Center of the World Intellectual Property Organization (AMC-WIPO), the domain name gave access to a parking page…

201806.06

UDRP: the Boomerang Effect of the Response

The Uniform Dispute Resolution Policy (UDRP) procedure to obtain the transfer of a domain name is a straightforward proceeding, within which the evidentiary requirement is rather low. To obtain a favorable decision, the Complainant must satisfy three conditions: the domain name must be identical or similar to a trademark to which the Complainant has rights;…

201805.15

Cybersquatting: an Extortion Attempt for 95,000 GBP!

The Clydesdale and Yorkshire Banking Group’s Forex branch had just filed its trademark application with the U.K. Intellectual Property Office for its CYBFX brand only later find out that the domain name <cybfx.co.uk> had already been registered by a cybersquatter. Upon further investigation, the bank discovered that the domain name was registered by an Eric…

201805.15

Slap on the Wrist for Canada Drugs after Importing $78M USD of Fake Cancer Drugs

Canadian online pharmacy, Canada Drugs, is looking at $34 million US in fines for the importation of counterfeit and unapproved cancer medicine and other illegal pharmaceuticals sold through their many online subsidiaries. According to US prosecutors, Canada Drugs has profited at least $78 million US via illegal imports originating from Canada and the rest of…

201805.15

DreamWorks Animation Wins a Cybersquatting Case Against a Trademark Troll

In the field of intellectual property, a troll is an individual or a company that produces nothing but shows enough audacity to initiate proceedings to have an infringement of its alleged rights recognized. In 2014, the Troll producer won a UDRP case concerning two domain names: orientaldreamworks.com and shanghaidreamworks.com (D2014-0171, Dreamworks Animation LLC v. Hongyun…

201804.13

Counterfeit Paracetamol in the Philippines: what a headache!

Last 16 March 2018, the Food and Drug Administration (FDA) of the Philippines issued a public warning concerning counterfeit paracetamol tablets being sold under the brand name Biogesic. The studies conducted by the FDA together with Unilab Laboratories, Inc., a manufacturer of Biogesic paracetamol tablets, have verified said products to be counterfeit. The general public and all healthcare…