China: Recycled Packaging and Trademark Infringement, a Questionable Decision in the Tsingtao Beer Case

Trademark Images

Back in 2020, the famous Chinese brew company Tsingtao Beer filed an administrative complaint for trademark infringement against a smaller Chinese competitor for the use of recycled Tsingtao beer bottles. The smaller brewery was filling legitimately recycled Tsingtao bottles with their own beer. The recycled bottles did not bear the Tsingtao labels and marks, which had been replaced by the label and trademarks of the smaller brewery. However, the words Tsingtao Beer, embossed on the bottlers’ neck, was still visible when the recycled bottles were commercialized. The case was adjudicated in 2022 by the Weihai Market Supervision and Administration Bureau of Shandong Province in favor of Tsingtao Brewery and has been selected as a model trademark enforcement case by the State Administration for Market Regulation.

Is this however a case of trademark infringement? Is the use and function of the words Tsingtao Beer on the bottles’ neck a “trademark use”? Or should this be rather a case of trade dress infringement under the Unfair Competition Law? And, why is this important?

Trademark or Unfair Competition?

Let’s begin with answering the question of why it is important for a right holder in China to determine whether this is a case of trademark rather than trade dress infringement.

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UK regulators crack down on ‘greenwashing’

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Within seven months[1] of the UK regulator, the Competition and Markets Authority (“CMA“), announcing its review of green claims in the fashion retail sector, it has opened an investigation into such environmental claims made by various fashion businesses, including ASOS and George at Asda.  This comes less than a year after all businesses were put on notice by the CMA to ensure their green claims were legally compliant. 

The investigation will analyse each businesses’ environmental claims in light of the CMA’s Green Claims Code  (for further discussion see our previous post here) and UK consumer protection law. Notably, the CMA has not yet reached a conclusion as to whether the retailers are in breach of the law.

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ISPs and Anonymous Users Rejoice: DMCA 512(h) Subpoena Subjected to First Amendment Scrutiny

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Last month, in an important ruling for Internet service providers, and anonymous users alike, a new defense is taking shape to subpoenas issued pursuant to the “unmasking” provisions of the Digital Millennium Copyright Act (“DMCA”). Specifically, in In re DMCA § 512(h) Subpoena to Twitter, Inc., N.D. Cal. Case No. 20-mc-80214, district judge Vince Chhabria held that subpoenas issued pursuant to 17 U.S.C. § 512(h) may be subject to First Amendment scrutiny. This requires that the subject of the subpoena must be notified of the subpoena and given a chance to be heard. It also requires that the plaintiff seeking the disclosure will need to disclose why it wants to unmask the user to demonstrate why its rights are superior to the anonymous speaker’s First Amendment rights.

In this case, Twitter received a DMCA takedown request by Bayside Advisory LLC concerning tweets by the pseudonymous Twitter account, MrMoneyBags, @CallMeMoneyBags criticizing Brian Sheth, a private equity billionaire. Twitter complied and removed the images (although, left the text of the tweets). Then, Bayside, pursuant to 17 U.S.C. § 512(h), issued a subpoena seeking to compel Twitter to disclose the identity of MoneyBags.

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China: Alternative Strategies to Trademark Enforcement against Parallel Import of Cosmetics by Unauthorized Sellers

E-commerce platforms are full of Chinese traders selling foreign cosmetic products they purchased at a lower price outside China. These branded goods are sold without the trademark owner’s consent for a much lower price than that of the official retailer. The consequences of such so-called “parallel imports” are well-known: the foreign brand and its official Chinese distributor suffer economic losses and the brand is diluted by cheap sales of parallel imports. The latter problem is particularly acute if the foreign brand markets itself in the luxury segment.

The Relevant Law on Parallel Import of Cosmetic Products into China

Online sales of parallel imports constitute an especially difficult problem in China. E-Commerce platforms do not have takedown tools against parallel import as they do against counterfeit sales and offer for sales. E-commerce platforms’ takedown systems are in fact limited to trademark infringement cases. However, according to the Chinese law, parallel import into China of genuine products purchased abroad does not violate the Chinese trademark law. The first legitimate sale of the genuine product abroad exhausts the rights of the trademark holder in China. Therefore, takedown actions for the e-commerce in such cases lack legal ground and will be rejected.

However, parallel import of cosmetics may still be illegal if it violates one the many complex cosmetic registration and labeling regulations of the People’s Republic of China.

Alternative Legal Avenues against Imported Foreign Cosmetics

China allows the sale of imported cosmetics — without need of registration with the China FDA — but only if the products are sold to Chinese consumers (not B2B) through designated Chinese e-commerce platforms like Tmall (Alibaba) and JD.com (JingDong). The products, coming directly from outside China, are exempt from any licensing and recordation requirements with China FDA. However, only the legitimate holder of the trademark rights over the imported cosmetics or its licensees can register and sell products on these platforms. In fact, Tmall and JD.com always request proof of trademark registration from the seller before allowing it to open a shop on their platform.

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China: Metaverse and Chinese Trademark Filings

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The Metaverse trademark hype is on. Companies are increasingly focusing their attention on developing Metaverses, and big brands are entering the Metaverse through gaming, social networks and virtual commerce. They need to also secure the appropriate IP rights to protect their brands in this emerging new virtual market place. Fashion brands are thus filing trademark applications in the US and the EU to secure protection for the digital projection of their shoes and accessories. Their goal is to position themselves and secure IP rights in time to reap the economic benefits of this virtual commerce space.

While the technological and commercial developments around the Metaverse are moving at a fast pace, the law is lagging. The trademark systems of the US and the EU are somewhat malleable to adaptation, allowing new filings to cover the exact goods and services to be offered and protected in Metaverse, but China struggles to cope with change. The reason is all in the DNA of the Chinese filing system. The Chinese trademark system is characterized by first-to-file and strict formalism in the selection and designation of goods and services from a classes/sub-classes structure with rigid descriptions. This formalistic system does not provide room for quick adaptation. Filing trademarks in China for the Metaverse can therefore be very challenging, because there are no goods or service descriptions that clearly suit the purpose.

This blog post highlights some of the challenges, strategies and goals of foreign fashion brands seeking protection of their trademarks in the Metaverse in China.

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Ukraine: Intellectual Property as a War Weapon

The conflict in Ukraine on 24 February prompted a number of European measures in many fields, including intellectual property. The Russian government responded by taking initiatives in this area as well. What are these measures and their consequences?

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Bombshell Ruling Puts Amendments to Click-Wrap and Terms of Use Agreements in Question

In a potentially industry-changing ruling, Judge Gilliam of the Northern District of California ruled that amendments to click-wrap agreements, like Dropbox’s terms of use, are invalid unless the user had to manifest assent through some act more than continued use of the service:

Defendant essentially argues that it contracted for the right to change the terms at will because the 2011 TOS contains a provision stating that Defendant “may revise these Terms from time to time” and that continuing to use the service constitutes agreement to any revised terms. Defendant’s argument misses the point. Given the complete lack of evidence of notice within Defendant’s service itself, Plaintiff’s ongoing use of the service is irrelevant to determining whether he had actual or constructive notice of the post-2011 terms of service.

The case is Sifuentes v. Dropbox, Inc., 2022 WL 2673080, *4 (N.D. Cal. June 29, 2022).

The Case

In Sifuentes, the plaintiff (proceeding pro se) filed suit against Dropbox over alleged harm resulting from a 2012 data breach. Dropbox moved to compel arbitration arguing that under its amended terms of use, the claim had to be arbitrated. Dropbox explained that its terms of service, to which plaintiff had agreed by a “click-wrap” style agreement, allowed Dropbox to periodically amend the terms. In 2014, Dropbox modified its terms of use to include an arbitration requirement and notified its users by email, which included explicit notice of the change and an opportunity to opt out of arbitration. Plaintiff claimed to have never read nor seen these emails and that he was allowed to continue to use Dropbox’s services without having to do anything with regard to the terms of service.

The court found Dropbox’s evidence of notice unpersuasive. Regarding actual notice, the court found that “there is nothing in the record to suggest that Plaintiff saw or read the email, such as a read receipt reflecting that Plaintiff opened the email.”

Regarding inquiry notice, the court found that the binding terms of the click-wrap agreement, allowing Dropbox to periodically change its terms, did not amount to inquiry notice. The court found that “there is nothing in the record to suggest that Plaintiff could not use the service until he indicated his assent, that he would have been advised of new terms and conditions while using Defendant’s services, or that Defendant ever tracked whether Plaintiff had opened its email.” The court threw considerable water on any argument that the email notices alone would be sufficient notice if the customer continued to use the service: “Even if the email alone could be considered ‘reasonably conspicuous notice,’ Plaintiff took no action to unambiguously manifest his assent.”

The court accordingly denied Dropbox’s motion to compel arbitration.

Implications

Sifuentes has the potential to require an overhaul of many service providers’ approach to updating their terms of service with end-users. Many service providers include, and rely on, their ability to modify terms of service in the future, with customers manifesting assent through continued use. The approach has allowed service providers to update and modify their terms without the need for messy, clunky pop-up windows that can interfere with users’ experiences. The Sifuentes court’s decision merits attention because the Northern District of California covers both San Francisco and Silicon Valley, the home region to many of the country’s technology companies and online service providers. For that reason alone, online service providers should reexamine how they are binding users to terms of service. Those using an app-based or web-based interface in particular would be well advised to alter the manner by which they update their terms of use to require an on-screen notice of the new terms combined with a requirement that the customer “do something” (e.g., close a window or click a box) before being able to use the service.

Crackdown on Gambling Ads Featuring Sports Stars: New Advertising Rules

As reported in our previous article published in 2019, the Committees of Advertising Practice (CAP) have been focussing for some time on protecting children and young persons through their regulation of gambling advertising.

Under the current rules, gambling ads are prohibited only if they appeal ‘particularly’ to under-18s, which CAP considers means if an ad is likely to appeal more to under-18s than to adults.

In April, CAP announced a tightening of these rules, which will come into effect on 1 October 2022. We discuss these amended rules below.

The New Rules

Following research published by BeGambleAware, CAP launched a consultation in October 2020 to consider the need to reduce the appeal of gambling ads to under-18s and other vulnerable people.

Significantly, the new rules announced by CAP prohibit all gambling ads which ‘strongly’ appeal to under-18s (regardless of whether such ads are more or less likely to appeal to adults than they are to under-18s). These new rules will be introduced by amendment to CAP rules 16.3.12 and 17.13 and BCAP rules 17.4.5 and 18.5.

The Advertising Standards Authority (ASA) is responsible for enforcement of the advertising codes. It has stated that it will take a “strict line approach” when applying the ‘strong’ appeal test, considering “both specific pieces of ad content and the general impression given by the ad”.

CAP has provided Guidance (the “ASA Guidance”) to assist marketers in interpreting the requirements of the new rules. 

High Risk Content / Approaches

The ASA Guidance sets out types of ad content and approaches that are particularly high risk.  These include:

  • animated content (including cartoons, common fairy tales and/or cultural characters);  
  • video gaming references (especially those, or similar to those, popular with under-18s) or themes / features like loot boxes or skins; and
  • youth related content (including teenage attitudes, youth-oriented clothing styles and music by artists popular with under-18s).

Limiting the Potential of Ads to Appeal Strongly To Under-18s

The ASA Guidance also recognises that certain sporting and other activities (e.g. football and eSports), which directly linked to the relevant gambling products being advertised, may inherently appeal strongly to under-18s.

The ASA Guidance goes on to state the relevant restrictions and limitations that must be adhered to when incorporating such activities / connected references in gambling ads. Among such restrictions and limitations is the limited use / casting in gambling ads of persons / characters who are likely to have a strong appeal to under-18s.

Relevant Considerations When Casting Persons or Characters

When considering the appropriate casting of persons / characters for gambling ads under the new rules so as not to include persons who have strong appeal to under-18s, advertisers must assess:

  • the roles / activities such persons are associated with;
  • the personal profile and following (including in particular the demographics of social media following); and
  • the audience / audiences for the roles / activities a person is known for.

To give further colour, the ASA Guidance then sets out the risk profiles of different types of personality / character. For example, the ASA Guidance differentiates between footballers who play for “top clubs”, UK national teams and in “high profile competitions” and those who play for lower league clubs. It also differentiates between sportspeople who are involved in adult-oriented sports (giving examples of snooker, darts and golf) and those who are involved in football and other sports, which have a significant national profile. Furthermore, casting leading eSports players in gambling ads is called out specifically as being high risk.

It is worth noting that the new rules do not only apply to sports stars, they also apply to influencers with a large under-18s following (for example, reality show stars with a large social media presence). 

Comments

The timing of the introduction of the new UK rules (1st October 2022) is particularly significant from a sporting perspective taking into account the upcoming Men’s Football World Cup in Qatar – the first matches of the tournament kick off on 21 November. Advertisers will no doubt be looking to launch marketing campaigns to target the opportunities that this presents. According to analysis conducted by FIFA in conjunction with its betting data partner, the total global betting turnover for the 2018 World Cup came to an estimated €136 billion.

There are a number of specific references in the ASA Guidance to top football players, and it seems that given the game’s appeal to under-18s, it was certainly in focus for the regulators when seeking to curb the appeal of gambling ads to under-18s. As well as players, the ASA Guidance also includes references to “managers” and states that the use of retired footballers who have moved into punditry / commentary would be assessed on the basis of their social / and other media profile / following.

In short, these new advertising rules are a step change in themselves in the regulation of gambling advertising, but should also be considered in the wider context of the review of gambling regulation in the UK. As we previously reported, the UK Government’s review of the Gambling Act 2005 is still ongoing, albeit that the UK Government’s White Paper now seems due to be published “in the coming weeks”, according to a spokesperson for the Department for Digital, Culture, Media and Sport (DCMS). Whilst the review of the UK Gambling Act is fundamental and wide-ranging, one of the matters that will be of particular interest when reflecting on the latest CAP and BCAP rule changes, is the stance taken on the proposed prohibition of gambling companies advertising on the kit of UK sports teams.  

Squire Patton Boggs are experts in this topic, please contact Carlton Daniel, Mike Llewellyn or Ailin O’Flaherty for advice.

Trade Mark Infringement – Muslim Dating App Meets its Match [.com]

A recent Intellectual Property Enterprise Court Decision (IPEC) on 20 April 2022 has decided that ‘Muzmatch’, an online matchmaking service to the Muslim Community has infringed Match.com’s registered trade marks.

The decision by Nicholas Caddick Q.C was that Muzmatch’s use of signs and its name amounted to trade mark infringement and/or passing off of Match.com’s trade marks. This case follows successful oppositions by Match.com to Muzmatch’s registration of its marks in 2018, and unsuccessful attempts by Match.com to purchase Muzmatch between 2017 and 2019.

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Through the Fire? Not Anymore – European Court of Justice strengthens Rights of Patent Owners in Germany

For many years, German courts would, in principle, only grant a preliminary injunction in a patent case, if the patent in suit had “gone through the fire” in the sense of having survived an adversarial opposition or nullity proceeding at first instance. This case law was based on the consideration that it can be extremely difficult for an infringement court to verify the validity of the patent in suit within a few days or even hours involving the risk of causing irreparable damage to the infringement defendant. Statistically, despite expert examination, only one in three granted patents withstands a challenge on validity. Continue Reading

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