IPPro The Internet Issue 143

ISSUE143 29 May 2018 

www.ipprotheinternet.com 

World Cup Woes 

Counterfeits at Russia’s World Cup 

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Lead News Story 

Australia commits to safe harbour expansion 

The Australian Government has committed 

to expanding the country’s safe harbour 

provisions to the educational, cultural and 

disability sectors. 

In its response to the Senate Environment and 

Communications Legislation Committee, the 

government said it supported the committee’s 

recommendation to expand the safe harbour 

rules, “in light of the ongoing entrenched 

and polarised views of stakeholders on safe 

harbour reform”. 

It added: “Submissions to the committee 

demonstrate that there is strong support from 

a wide variety of stakeholders to extend the 

scheme, at least, to these sectors.” 

The committee held consultations in mid- 

2017 and received responses from more 

than 60 stakeholders, including Google, 

Twitter, Facebook, and the UK Intellectual 

Property Office. 

The Australian Greens filed a dissenting 

report, recommending the implementation 

of a definition of “service provider as 

a provider of transmission, routing 

or connections for digital online 

communications without modification of 

their content between or among points 

specified by the user of material of the 

user’s choosing”. 

This would, in essence, be a full extension 

of the safe harbour scheme to all carriage 

and service providers. 

The government said that this extension was 

highly contested. 

This view was “made clear in the 2017 

public consultation process on safe 

harbour conducted by the Department of 

Communications and the Arts, and was 

reflected in the submissions to the committee”, 

according to the government. 

Proposals for a fair use and safe harbour 

system that surpass the country’s current fair 

dealing laws were initially met with criticism 

when they were proposed by the commission 

in December 2016. 

In response, the government said that, during 

the department’s consultations, stakeholders 

agreed to only extend the scheme to 

educational, cultural and disability sectors 

was an appropriate reform. 

“The bill provides some momentum to a 

long-standing and contentious issue, which 

has seen no movement, despite numerous 

reviews over the last 10 years.” 

It said: “The government’s intention by 

progressing this bill is to ensure those 

sectors that are recognised as providing 

highly beneficial community services to the 

Australian community are afforded protection 

sooner rather than later.” 

3 IPPro The Internet www.ipprotheinternet.com

Contents 

www.ipprotheinternet.com 

@IPProTI 

Acting Editor: Becky Butcher 

beckybutcher@blackknightmedialtd.com 

+44 (0)203 750 6018 

Senior Reporter: Barney Dixon 

barneydixon@blackknightmedialtd.com 

+44 (0)203 750 6026 

Junior Reporter: Ben Wodecki 

benwodecki@blackknightmedialtd.com 

+44 (0)203 750 6017 

Designer: James Hickman 

jameshickman@blackknightmedialtd.com 

+44 (0)203 750 6021 

Contributors: Ned Holmes and Jenna Lomax 

Marketing and Sales Support: Paige Tapson 

paigetapson@blackknightmedialtd.com 

+44 (0)203 750 6020 

IP Portfolio Manager: Serena Franklin 

serenafranklin@blackknightmedialtd.com 

+44 (0)203 750 6025 

Account Manager: Brenda Shanahan 

brenda@blackknightmedialtd.com 

+44 (0)203 750 6024 

Publisher: Justin Lawson 

justinlawson@blackknightmedialtd.com 

+44 (0)203 750 6028 

Office Manager: Chelsea Bowles 

accounts@blackknightmedialtd.com 

Published by Black Knight Media Ltd 

Copyright © 2018 All rights reserved 

Alibaba Update 

Alibaba’s intellectual property enforcement 

efforts saw “significant results in 2017” 

according to the ecommerce platform 

p5 

Ireland Insight 

Simon Gray, past president of the Irish APTMA, 

discusses Ireland’s place post-Brexit 

p12 

World Cup 

This year’s World Cup is taking place in 

Russia, and with the tournament comes 

counterfeits of every kind 

p19 

UDRP Decisions 

Nike, Audi, Ladbrokes Coral and Ikea have all 

appeared in domain disputes in recent weeks 

p10 

Blockchain Analysis 

Vicki Strachan of Wynne Jones outlines 

the five ways blockchain technology could 

revolutionise the IP landscape 

p15 

Case Report 

Jenni Rutter and Charlotte Henley of 

Kensington Swan analyse a recent case 

involving Red Bull 

p22 


News Round-Up 

Warburg Pincus sells ipan to 

Castik Capital 

Warburg Pincus has sold intellectual 

property management service ipan Group to 

Castik Capital. 

Since its acquisition by Warburg Pincus in 

2014, ipan has more than tripled its revenues. 

Alibaba IP enforcement efforts saw ‘significant results in 2017’ 

Alibaba’s intellectual property we want to work with our stakeholders 

enforcement efforts saw “significant 

results in 2017”, according to the 

ecommerce platform. 

In its 2017 annual report on IP rights 

protection, the company pointed to its 

increased response times to takedown 

requests, and an increased number 

of brands and rights holders on its IP 

Protection Platform as evidence of its 

growing IP enforcement offering. 

and continue to improve our IP rights 

protection work and achieve more 

breakthroughs in 2018.” 

“Mutual trust and collaboration are 

keys to the success of IP protection. 

As an industry leader, Alibaba wants 

to collaborate with all stakeholders— 

whether they’re rights holders, agencies, 

trade associations, law enforcement— 

to keep leading the best practice in IP 

protection,” she said. 

The company also saw growth in 

membership of its Alibaba Anti- Alibaba’s IP Rights Protection Summit 

Counterfeiting Association. 

saw more than 230 participants, 

including brand owners, IP rights experts, 

Speaking at the Alibaba IP Rights industry associations, government 

Protection Summit in Seattle, the agencies and law enforcement. 

ecommerce platform said it had seen 

a 68 percent reduction in processing 

time of takedown requests in 2017, 

compared to 2016. 

Speaking at the summit, Andrew Love, 

head of brand security and global 

investigations at Specialized Bicycles, 

said that his company’s partnership with 

It added that the number of notice 

and takedown requests submitted by 

Alibaba had seen significant strengthening 

since it began eight years ago. 

rights holders had declined 42 percent 

year-over-year, even though registered 

accounts on ALibaba’s IP Protection 

Platform rose by 17 percent. 

Some 97 percent of all proactive 

takedowns were made before a single 

sale occured. 

He explained: “Alibaba really goes 

above and beyond in our collaboration 

in offline investigations.” 

“We can bring what we know and Alibaba 

can bring what they know through big 

data, and that’s very powerful. Criminals 

are not safe on Alibaba.” 

Alibaba Group chief platform 

governance officer, Jessie Zheng, He added: “There’s a triangle: 

commented: “Today, we are pleased to 

share the significant progress we made 

over the past year, but more importantly, 

government, brands, and Alibaba. If 

three points of that triangle work 

together, we can win.” 

Earlier this year, ipan further expanded its 

product offering by launching ip-x-change, 

a new open platform for IP related Software 

and Services. 

Commenting on the sale, Max Fowinkel, 

managing director at Warburg Pincus 

International, said: “We are proud of the 

transformative investments and significant 

growth that ipan has achieved during our 

ownership. As growth investors, we feel 

privileged to have supported ipan in building 

a leading provider of IP management services 

and software and we wish the entire ipan 

team continued success.” 

Anton Bory, founder of ipan, added: “Warburg 

Pincus has been a great partner and has 

provided us with tremendous support on 

our growth initiatives such as our strong 

internationalisation, the three acquisitions 

completed together and, most recently, the 

launch of ip-x-change.” 

Dr Jens Lütcke, CEO of ipan, concluded: 

“Based on the investments made and the 

strategic decisions taken together with Warburg 

Pincus, ipan is strongly positioned to continue 

its accelerated growth in the IP sector.” 

Plain cigarette packaging leading to 

increase in counterfeits, says TMA 

Plain packaging on cigarettes has led to 

an increase in consumer purchasing of 

fake cigarettes in the UK, according to the 

Tobacco Manufacturers’ Association (TMA). 

The TMA’s anti-illicit trade polls found that 24 

percent of smokers said they were aware of 

illicit tobacco in their local area, a 20 percent 

increase on last year’s findings. 

Some 53 percent of smokers agreed that 

rising prices made them more likely to buy 


News Round-Up 

untaxed tobacco. More than 30 percent of 

smokers agreed that minimum pack sizes 

made them more likely to buy untaxed 

tobacco, and 44 percent of smokers agreed 

that they have no objections to buying 

untaxed tobacco even when it is from an 

illegal source. 

The TMA said that the UK government was 

warned this would happen by the tobacco 

industry, law enforcement and intellectual 

property experts. 

Giles Roca, director general of the TMA, 

said: “The recent evidence shows that plain 

packaging appears to be failing in the UK like 

everywhere it has been introduced.” 

“It appears not to be delivering the health 

outcomes it was claimed it would bring while 

at the same time is proving to be a boon to the 

black market by encouraging smokers to buy 

from illicit sources.” 

He added: “The government should recognise 

that plain packaging is failing and undertake a 

full and immediate review of this policy.” 

DNA in its AncestryDNA kits. It said that when 

Ancestry performs these services to identify 

relatives, “they infringe [the patent] literally or 

under the doctrine of equivalents”. 

Ancestry.com sued over DNA 

search patent 

23andMe is also accusing Ancestry 

of misleading advertising with its 

Ancestry.com has been sued over the alleged “misrepresentation” that its DNA test 

infringement of a patent relating to DNA testing. provides “five times more regions than other 

DNA tests” and “five times more detail than 

23andMe filed a complaint in the US District other DNA tests”. 

Court for the Northern District of California 

on 11 May, accusing Ancestry of infringing its 23andMe is demanding an injunction 

patent for finding relatives in a database, using requiring Ancestry to stop infringing 

recombinable DNA sequence information to the patent, as well as issue a statement 

determine relative relationships. 

correcting prior representations and 

comparisons of the technology. 

According to the complaint, 23andMe’s 

patent is an improvement on previous ways of 

determining relative relationships. 

On top of this, 23andMe has also taken issue 

with Ancestry’s trademark for its name. 23andMe 

said that the term Ancestry is “generic”, and 

23andMe accused Ancestry of selling services 

to identify relatives who share parts of a user’s 

is seeking a declaration that Ancestry has no 

protectable ownership interest in the trademark. 

+33 (0) 1 84 17 45 32 

contact@ipzen.com 

www.ipzen.com 

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News Round-Up 

Antequera Parilli & Rodriguez 

completes merger 

Antequera Parilli & Rodriguez has merged 

with fellow Venezuelan law firm Markven 

Propiedad Intelectual. 

The merged firms will be known as Antequera 

Parilli & Rodriguez. 

Seller of illegal TV devices sentenced for a second time 

A seller of illegal TV devices has been 

sentenced to 10 months imprisonment for 

re-offending after being prosecuted and 

to Sports Information Services (SIS) pay 

taxes and contribute to the Levy—your 

actions undermine the whole system.” 

sentenced for the same crime in 2016. 

Kieron Sharp, CEO of FACT, said: “This 

The man appeared at Norwich Crown 

Court on 4 May after pleading guilty 

to selling unauthorised decoders, after 

violating the Copyright Designs and 

Patents Act 1988. 

result is an excellent example of how 

serious an issue illegal streaming is. 

Whether it’s a re-stream on social media, 

a piracy site, or using a device, box or 

stick connected to your TV, avoiding 

the official provider to access content 

He had previously received a 12-month is illegal.” 

sentence suspended for two years 

at the Norwich Crown Court on 28 

October 2016 after admitting to selling 

“FACT is leading the way in combating 

digital piracy and working with the 

unauthorised decoders adapted betting industry to crack down on 

to enable access to encrypted these types of offences and to hold 

transmissions between December 2013 

and April 2016. 

those behind them accountable for 

their actions.” 

Both firms have more than 35 years 

experience in trademark, copyright and patent 

law protection and enforcement. 

The combined entity will focus on areas 

related to the protection of intangible assets 

such as advertising law, entertainment and 

internet and social media. 

Commenting on the merger, Barbarita 

Guzman, partner at Antequera Parilli & 

Rodriguez, said: “I am delighted to expand 

the depth and breadth of both our practices 

by merging our firms.” 

Ricardo Alberto Antequera, managing partner 

of Antequera Parilli & Rodriguez, added: 

“Both firms share the same vision and values, 

which has led to a seamless union.” 

“We look forward to working together to 

achieve our common goals and delivering 

incomparable service to our clients in this 

new phase.” 

In early 2017, investigators from The 

Federation Against Copyright Theft 

(FACT) discovered that the offender was 

breaching the terms of his sentence. 

A second investigation was launched by 

FACT and Norfolk Police on 8 August 

last year. The man was re-arrested at his 

home in Norwich where he had installed 

multiple satellite dishes in his garden. 

He was summoned to appear on 14 

February and pleaded guilty on 28 March. 

In sentencing the offender, the judge, 

HHJ Moore commented: “The gambling 

industry requires tight regulation, and 

legitimate organisations who subscribe 

Kevin Smith, general counsel of 

SIS, said: “We are very pleased that 

Marston has once again been brought 

to justice and that a custodial sentence 

has been imposed. We are particularly 

gratified that the court recognised that 

[the offender’s] actions undermined 

the entire system of how betting is 

licensed and racing is funded, and that 

the sentence highlights the fact that the 

courts are prepared to treat copyright 

infringement as theft.” 

“SIS has an obligation to its customers 

and rights holders alike to ensure that 

the value of content remains undiluted, 

and will not hesitate to prosecute 

offenders in the future.” 

Premier League tackles illegal 

stream suppliers 

Ace IPTV, an illegal Premier League stream 

provider, has been forced to liquidate after 

agreeing to pay £600,000 to the League for 

a breach of copyright. The owners of Ace 

IPTV, Craig Driscoll and Ian Isaac, were 

selling subscriptions to illegal Premier League 

streams, allowing users to view football 

matches on a range of devices, including the 

notorious Kodi-type boxes. 

Ace IPTV has terminated all subscriptions 

and all customers have been written to by the 

company’s liquidators. 

The Premier League’s anti-piracy 

enforcement strategies have seen more 


News Round-Up 

than 200,000 streams removed and 450,000 

clips stopped from being viewed during the 

2017/18 season. 

Commenting on the settlement, Kevin 

Plumb, director of legal services at the 

Premier League, said: “This large settlement 

is further evidence that the law will catch 

up with companies and individuals that 

think they can defraud rights owners and 

breach copyright.” 

“As a result of this payment the company is 

being liquidated and customers are being left 

out of pocket.” 

He added: “Using these services is unlawful 

and fans should be aware that when they 

do so they enter into agreements with 

illegal businesses and risk being victims 

of fraud or identity theft by handing over 

personal data and financial details. Our 

investment into cutting edge technology, 

combined with the ground-breaking High 

Court blocking order, means that it has 

never been harder for football pirates in the 

UK to survive.” 

In July 2017, the Premier League acquired a 

High Court order that requires UK ISPs to liveblock 

illegal streams of its matches. 

Plumb concluded: “Quite apart from the 

huge disruption we are able to cause their 

services, settlements like this one, and the 

lengthy custodial sentences that we have also 

seen this season, highlight just how risky an 

environment it now is for pirates.” 

Ace voluntarily disclosed the personal details 

of their customers, which the Premier League 

will now review in compliance with data 

protection legislation. 

Further investigations will be conducted, and 

action is taken where appropriate. 

ILPO joins TMview 

The Israel Patent Office (ILPO) has made 

its trademark data available to the TMview 

search tool. 

According to the European Union Intellectual 

Property Office, ILPO’s addition brings the 

total number of participating offices to 66. 

ILPO’s more than 270,000 trademarks will 

bring the total amount of trademarks that 

users can access through the tool to over 

50.2 million. 

TMview was introduced in 2010 and has 

served more than 42 million searches from 

160 different countries. 

Have a news story we should cover? 

Contact us via: 

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UDRP Decisions 

Whose Domain Name Is It Anyway? 

Nike, Audi, Ladbrokes Coral and Ikea have all appeared at the World 

Intellectual Property Organisation Arbitration and Mediation Centre and 

the Alternative Dispute Resolution Forum in recent weeks 

Bookmaker Ladbrokes Coral has recovered a domain in a UDRP 

dispute at the World Intellectual Property Organisation (WIPO) 

Arbitration and Mediation Centre. 

Ladbrokes Coral alleged that ladbrokescoralltd.com was registered 

in bad faith as the original registrant of the domain, Scott Rose, was 

using Ladbrokes Coral’s trademarks for financial gain. 

Rose was looking to create a website that ties in with a campaign 

against the company. 

He responded before the proceedings by saying: “I wish to seek no 

further involvement with this dispute and I am more than happy for 

you to transfer over the rights of the domain in question.” 

Sole panellist Steven Maier ruled that the disputed domain should 

be transferred to Ladbrokes Coral as the domain was registered in 

bad faith. 

eliminate the confusing similarity with the trademarks.” Hoorneman 

concluded that the domain should be transferred to Ikea. 

Nike has won the rights to 20 domains in a UDRP dispute at the 

WIPO Arbitration and Mediation Centre. 

The sports clothing brand alleged that domain names like 

nikeairmax97.com, shopsnikeukoutlet.com and nike-trademark.com 

are identical to many of its registered trademarks. 

Sole panellist Wilson Pinheiro Jabur ruled that the infringing domain 

name be transferred to Nike, as the original registrant of the domain, 

Gueijuan Xu, had registered and used it in bad faith. 

Jabur said: “The complainant’s mark is one of the most valuable 

trademarks in the world, and the respondent reproduced the 

complainant’s well-known logo and products in some of the 

webpages to which internet users are redirected.” 

Maier said: “The addition of the term ‘ltd’ is not effective to distinguish 

the disputed domain name from the trademarks in question and the 

panel, therefore, finds that the disputed domain name is identical 

or confusingly similar to a trademark or service mark in which the 

complainant has rights.” 

Ikea has recovered a domain in a UDRP dispute at the WIPO 

Arbitration and Mediation Centre. 

The Swedish furniture giant claimed ownership of ikeaipteam.nl, 

which was allegedly registered to confuse consumers. 

Sole panellist Willem Hoorneman agreed that the domain was 

confusingly similar, finding that “the domain name incorporates the 

[Ikea] trademark in its entirety [and] the domain name differs from the 

trademarks only in that the term ‘Ikea’ is followed by the descriptive 

term ‘ipteam’. The addition of such a descriptive term does not 

Audi has claimed a domain name in a UDRP dispute at the 

Alternative Dispute Resolution Forum. 

Audi recovered audiiuse.com, a domain that it said was registered 

to cause confusion by directing users to Volvo’s website, a direct 

competitor of Audi. Sole panellist Rodrigo Azevedo ruled in favour 

of Audi, stating that the domain was registered “to be linked to Volvo 

Cars, [the] complainant’s direct competitor, and is currently being 

used to host advertisement that targets Audi consumers.” 

Azevedo also found that the original registrant had no rights to use 

the domain as “the complainant has not licensed or authorised the 

usage of its trademarks to the respondent, and it does not appear 

from the present record that the respondent is commonly known by 

the disputed domain name”. 

Azevedo ordered the domain name to be transferred to Audi. 



The land of saints and scholars 

Simon Gray, partner at Tomkins IP and past president of the Irish Association 

of Patent and Trade Mark Attorneys, discusses Ireland’s place post-Brexit 

Ben Wodecki reports 

Do you expect Ireland will become a haven for UK law firms 

post-Brexit? 

How will Irish intellectual property suffer under Brexit? 

The main impact for Ireland is the potential for UK firms moving into 

this jurisdiction. We’ve already seen some firms set up in the west of 

Ireland, others are setting up practices in Dublin. 

We have seen some movement, but so far it is not the avalanche that 

people were expecting. The issue is that firms don’t have to be in 

Ireland, they can be in any EU country. 

So we have seen the firms set up in Amsterdam, Paris and Munich. 

There will be an increase in participation in the Irish market by firms 

outside of Ireland and that may be a problem. This will have limited 

impact on patents, patents will continue on as before, but in the 

UK trademarks and designs will be impacted. Any EU trademark or 

design registered will no longer be effective in the UK because it will 

no longer be a part of the EU system. Anyone who wants to register a 

trademark or a design in both the EU and UK are now going to have 

to register it separately in both jurisdictions. 

Alongside this is the issue of rights of representation in the EU for UK 

qualified trademark attorneys. 

It is a big commitment to set up an office in a different jurisdiction. 

In Ireland, for example, you’ve got to have a proper presence, it’s 

not just brass plate on the door, firms will probably have to have a 

separate company set up in Ireland and they will have to have an 

actual physical presence in Ireland. 

Unless firms are willing to do that, it will not be an easy move. 

For the bigger firms, there’s always that option, but for the smaller 

firms, the expense and the cost of moving to Ireland could be 

prohibitive for them in the UK. 



We haven’t seen many major inroads into Ireland from UK firms, but 

with Brexit on the horizon, even with its transitional period, I think you 

may see more people looking to Ireland. 

representation. It also has a similar common law system, whereas 

the rest of Europe has a civil law system. Ireland is attractive because 

we’re English speaking. 

In the same vein, have we seen an increase in UK residents sitting 

Irish trademark exams? 

We saw an increase in 2017—14 UK attorneys sat the exam, there is 

only one exam now and we understand only seven passed. The Irish 

trademark exam was only held on 24 April and the Irish Patent Office 

does not release the statistics, but I do expect to see an increase. 

The only issue is the Irish trademark system, the actual requirements 

to be on the Irish trademark register are slightly onerous in the sense 

that apart from sitting the exam, you must be an European Economic 

Area (EEA) citizen, and after Brexit, UK nationals are unlikely to be. 

Also, you must have an effective business presence established in 

an EEA country. 

Come Brexit, when the UK has fully left the EU, the Irish Patent Office 

is considering writing out a renewal of an entry on the Irish Trade 

Mark Agents register for attorneys, asking them to prove that they fit 

the criteria of the Irish Trademark Act for being a trademark agent. If 

you’re not an EEA national, and/or you don’t have an EEA business 

or premises then you are unlikely to be able to practice and unlikely 

to be able to remain on the Irish register. Once you’ve been removed 

from the Irish register, you will not meet the criteria to remain on the 

EUIPO Attorney register. While there are a lot of British people doing 

the exam, it is not a guarantee that they’ll be able to stay on it, if they 

don’t meet these criteria once Brexit formally happens. 

Why would Brexit make Ireland more attractive to foreign direct 

investment? What sort of changes do you see? 

We have the same historical common law system, and that is what 

I think will be attractive. They’ll be dealing with a similar culture and 

language as with what they were dealing with in the UK. There is 

provision in Ireland on the patent side for a knowledge development 

box that allows you to undertake research and claim tax back, we 

have a very low tax rate for commercial activity/businesses, one of 

the lowest in Europe, which has always been attractive for foreign 

direct investment. 

How might the Irish border issues affect counterfeit enforcement? 

The border is an issue that could go both ways. At the moment, there 

is no border there. If both the UK and Irish governments continue 

this chanting that there should be an open border, you could see 

Ireland used as a conduit to get counterfeit or black market goods 

into Northern Ireland and mainland UK. 

It is a porous border. There are more than 700 individual spots 

where you can walk across. You can walk across a river and get to 

Northern Ireland. 

What are the biggest issues for IP attorneys? 

It’s the uncertainty still. IP is only one minor element in the overall 

negotiations in the EU, but it’s the uncertainty in the IP profession, 

people really don’t know what to do or what not to do. And even 

though the UK government has set out recommendations about the 

transfer of EU trademark and designs into UK national ones, there 

is no certainty there, there is also no certainty about representation. 

Ireland’s biggest direct investment comes from the US. We have 

more foreign direct investments from the US than France and 

Germany combined. 

For many English speaking countries, including those in the US, 

the UK is the best option because they want English speaking 

It has dragged on a very long time and I think it is going to continue. 

The uncertainty is not good for some businesses because some 

are holding back on progressing portfolios, new products and new 

developments until they know what the markets will be and what the 

impact Brexit will have on that market. IPPro 

We have the same historical common law system, 

and that is what I think will be attractive. Foreign investors 

be dealing with a similar culture and language as with 

what they were dealing with in the UK 

Simon Gray, partner, Tomkins IP 


J. Varbanov & Partners 

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One of the oldest and leading IP companies in Bulgaria 

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Areas of practice: 

*IP Protection 

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*Anti-counterfeiting 

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Tel.: (+359 2) 986 51 25, Fax: (+359 2) 980 32 47, 

e-mail: jvp@jvpatents.com 

www.jvpatents.com


Blockchanging with the times 

Vicki Strachan of Wynne Jones outlines the ways blockchain technology 

could revolutionise the current intellectual property landscape and offer 

greater power to innovators globally 

Blockchain technology has the potential to transform the intellectual 

property industry and render accidental infringements obsolete, IP 

experts have claimed. 

confirmed, it is safeguarded against alteration at a later date. In this 

sense it ensures that an accurate, verified, record of information is 

created and protected against unwarranted tampering. 

This digital ledger technology, which has become the focus of worldwide 

attention, could change IP rights monetisation and enforcement as 

well as, potentially, empower a new generation of innovators. 

Until recently this innovative technology has been widely recognised 

as the digital platform behind cryptocurrencies, enabling millions of 

people to record and track transactions safely and securely. 

Its unique capabilities allow multiple parties to ensure all the 

information contained in a transaction is accurate, and once 

For this reason, many industries are exploring its potential, and the IP 

sector is no exception. 

Its core function of being decentralised and secure in handling 

transactions has clear benefits for those across the innovative and IP 

sectors, and the concept of such a distributed ledger functioning as 

a worldwide IP registry would clearly be attractive. However, looking 

beyond its basic role, blockchain technology has immeasurable 

potential in relation to monetising and enforcing IP ownership rights 

and could even serve to combat counterfeiting in the future. 



Proof of ownership 

Ownership of unregistered IP rights 

IP infringement generally occurs when an invention, design, trademark 

or original artistic work protected by IP rights is commercially used or 

exploited without the consent of the owner. 

Unauthorised use of this type is often devastating for businesses and 

entrepreneurs that may have ploughed significant time, resources 

and funds into launching an original product, service or brand, only 

to see their commercial monopoly destroyed by the introduction of a 

similar, potentially inferior, copy. 

In cases such as this, the right owner (or exclusive licensee) may 

wish to assert their IP rights and highlight their proof of ownership, 

in a bid to prevent continued infringement, and further damage to 

their brand. 

Unregistered IP rights, such as copyright and unregistered design 

right, have long been problematic in terms of proving conception, 

use and status, because, as their name suggests, there is currently 

no searchable register or other central record of them. 

Not only can this lead to, often innocent, infringement of these rights, 

it can also hamper any attempts by the owner to prove ownership in 

the event of a dispute. 

However, blockchain technology could play an important role in 

helping to resolve this IP grey area. By uploading their original design 

or work to a blockchain, a time-stamped record is created that would 

give the owner a greater degree of tangible proof needed to prove 

ownership. 

However, in many cases, the infringing party may claim that 

they were unaware that the product or service was protected by 

intellectual property. 

At the moment, details of different registered IP rights are stored in 

various databases, and unregistered rights are not generally available 

to view at all. 

But the potential to use blockchain technology for the management 

of all IP rights, by recording them via a distributed ledger rather than 

the various traditional databases, could not only reduce accidental 

infringement, but also combat false claims of mistaken use. 

Many companies which infringe an IP owner’s rights claim that they 

were unaware of their existence. 

With the internet making it easier for original ideas to be used and 

manipulated on a global scale without the owner’s knowledge, the 

lines can often become blurred when it comes to the existence of IP 

rights and their ownership. 

For that reason, unauthorised use of a registered, or unregistered IP 

right, could very well be accidental, as its existence and ownership 

gets lost through the many channels online and across industries 

available to track those rights. 

Another potential use lies in the provision of a central record of events, 

detailing the life of a registered IP right, and enabling it to be tracked 

using this technology. The potential benefits might include easier IP 

auditing procedures and simplified due diligence processes for IP 

transactions. Blockchain-like repositories for unregistered rights are 

already being developed, and it will be interesting to see the extent to 

which they could provide a solution to the claiming and evidencing of 

ownership of unregistered IP rights. 

Digital rights management 

In cases where an IP right owner’s market potential is largely intangible, 

they can lose out financially without a system for monitoring the use of 

their creation and obtaining payment for such use. Music and images 

are the perfect example of original work, which is readily available to 

be copied and used, but with no formal means of monitoring such 

use or securing appropriate license fees. 

Blockchain technology could, for example, be used to create a 

distributed ledger in which the author’s records are available on a 

secure worldwide platform. This would then act as a point of contact 

for those looking to use the copyrighted creation. 

Owners can then, in theory, be paid any associated licensing fees 

that they are entitled to for agreed usage. 

That said, it is also not unheard of for people who knowingly infringe 

an IP right to claim ignorance if they are caught. 

By creating a global, and conclusive IP registry using blockchain 

technology, which is an instantly and easily accessible, immutable 

record of both unregistered and registered IP rights, there is 

the potential, in the future, to prevent infringing parties from 

legitimately claiming so-called ‘innocent infringement’. This type 

of system could put IP right owners in a much better position to 

quickly tackle any unauthorised use before it has the potential to 

do any damage.” 

This could pave the way for owners and users to communicate more 

openly to allow licensing fees and associated costs to be made 

more naturally, consequently eradicating the need for infringement. 

Indeed, KodakONE image rights management platform, launched 

by Kodak and WENN Digital earlier this year, together with its own 

cryptocurrency, aims to do just that and enable photographers and 

agencies to take greater control in image rights management. 

Owners of original work often lose out financially, as those seeking 

to use it may be unaware that IP rights exist, let alone how to obtain 

permission to use the work and pay any associated royalties. 



Equally, if there is no easily accessible record of when the work 

was created and by whom, the likelihood of inadvertent infringement 

is significant. 

Blockchain technology could, for example, be used to create an 

open IP registry to give right owners greater control. And with the 

introduction of smart contracts and cryptocurrency payments, 

communication between the owner and user of a copyright work can 

be made easier and more reliable. 

Transparency and ease of access is key to encouraging users to seek 

copyright and licensing permission, and blockchain technologies 

certainly offer the potential for creators to be more fully compensated 

for others’ use of their original work. 

As briefly referenced above, smart contracts are another concept 

linked to blockchain technologies, which could allow IP rights 

contracts to be automatically issued on behalf of an author when an 

original work is used. 

Thanks to this, contracts such as licenses could be established and 

enforced immediately, and payments made in real time to IP right 

owners, without the administrative delays and costs associated with 

current solutions. 

Evidence of use of IP rights 

their mark has been used and how frequently. In cases involving 

non-use revocation of a registered trade mark, recording details of 

a trade mark via this type of digital ledger, could prove to be vital 

evidence for ensuring a registered mark remains on the official 

register, and therefore continues to be protected against infringement 

or exploitation. 

Tackling counterfeits 

Thanks to the ability of blockchain technology to exist as a certificate 

of authenticity for an original work, it could be used to streamline the 

process of identifying counterfeit products. 

One of the unique elements that has caused blockchain technology 

to gain worldwide interest and success, is its ability to prevent 

unauthorised access to, or alteration of, any records. 

This ensures that once the author and any associated parties have 

confirmed all details of the record, this cannot be altered or tampered 

with in any way. This, then, would validate its authenticity for any 

potential users, authorities, consumers and businesses, and provide 

reassurance that they are being sold a legitimate product. 

Blockchain technology has the ability to provide records of IP rights 

that have a higher degree of certainty, traceability and accountability 

than other widely used technologies. 

There are several instances in the world of IP, especially in relation to 

trademarks, where unequivocal evidence of use can be crucial. 

For example, in many countries, a registered trade mark can be 

revoked if it is not used within some defined period of time. Use of 

a mark can also be essential to help establish its distinctiveness 

or its reputation, which can be especially relevant where the mark 

is unregistered. A blockchain-based ledger could provide the basis 

for collecting time-stamped evidence of use or frequency of use of 

a trademark. 

Brand owners who register their trademark via this type of ledger 

would ultimately be able to clearly demonstrate the extent to which 

This, in turn, would provide a greater degree of confidence to users 

and businesses, with an ultimate goal of protecting the rights of IP 

right owners who may have invested significant time, resources and 

funds in creating and marketing an original product. 

IP right infringements and counterfeiting are a destructive force 

throughout the innovative sector, stripping innovators of their rights 

and stifling continued creativity across all markets. 

By providing a blockchain-based facility for recording an original 

work, we could, as a business community, identify and intercept 

counterfeits more quickly and, ultimately, combat this damaging and 

widespread practice. IPPro 

By providing a blockchain-based 

facility for recording an original work, we 

could, as a business community, identify 

and intercept counterfeits more quickly 

and, ultimately, combat this damaging and 

widespread practice 

Vicki Strachan, partner, Wynne Jones 


World Cup 

Lifting the counterfeit cup 

This year’s World Cup is taking place in Russia, and with the tournament 

comes criminals peddling counterfeits of every kind. This is one aspect of 

the beautiful game that needs a counter attack 

Ben Wodecki reports 

Since its inception, FIFA’s World Cup has brought some memorable 

moments: the ‘Hand of God’, that Zidane headbutt, and the battle 

of Nuremberg. 

But this year it’s the memorabilia, rather than the memories, causing 

concern all over the globe. 

The tournament is an ideal target for illegal stream suppliers, ticket 

touts, and counterfeiters. Jumpers, hats and sticker books are just 

some of the products produced by opportunistic counterfeiters. 

According to Statista, FIFA invests over $1.9 billion into each 

tournament, and earns $204.4 million from licensing rights alone, 

making it a lucrative business opportunity for counterfeiters looking 

to make a quick buck. 

FIFA’s all time World Cup records show that the last tournament saw 

an average crowd of 52,918 attendees. The next tournament will see 

stadiums like the Luzhniki Stadium in Moscow and St. Petersburg’s 

Krestovsky Stadium, which can hold up to 81,000 and 68,000 

viewers, respectively. 

With that size and scope, FIFA must be ready to protect everything 

from the tournament balls to the tournament mascot. 


World Cup 

But are FIFA doing enough to protect their brand, or perhaps being 

too heavy-handed when it comes to enforcement? 

There’s only one way to beat them, get round the back! 

Carol Levin, communications manager at the Anti-Counterfeiting 

Group (ACG), says that the World Cup can be a challenging affair, 

because there is an enormous association with merchandise. 

Full members of the ACG include Sky, Tottenham Hotspur, Puma, 

adidas and Nike. 

Levin contacted some of ACG’s members for their views on 

counterfeiting in relation to the World Cup, who also expressed 

concern at a potential increase in counterfeiting during the World Cup. 

One of the brands points out that due to clubs and international teams 

launching new kits, there is “an increase in counterfeit merchandise 

and seizure activity during this period”. 

Another brand added: “The World Cup brings with it a number of strict 

rules and regulations, which alongside the legislative IP requirements 

places an additional burden on the public sector agencies responsible 

for enforcing IP infringements.” 

One such similar agency is the UK Trading Standards. Handley 

Brustad, who is the CTSI lead officer of IP in its Cardiff branch, points 

out that counterfeiting does increase in a World Cup year, “particularly 

for the well supported teams like Brazil, Argentina and England”. 

She said that FC Barcelona tries to “increase online searches during 

these periods and have police raids around the stadiums to try and 

stop the sales of counterfeiters”. 

Kelly Tillery, partner at Pepper Hamilton, highlights that this year’s 

World Cup host, Russia, has laws that “provide protection of 

trademarks through enforcement through legal action”. 

“Standard remedies including injunctive relief, monetary damages 

and seizure.” 

He adds that: “Preliminary injunctive relief is also available, however, 

it is rarely granted.” 

He says that the previous World Cup host, Brazil, actually had to 

change its laws for the World Cup as, “in most cases, authorities are 

very interested in supporting enforcement efforts”. 

According to Alison Statham, director general of the ACG, 

counterfeiting at large events, such as the World Cup, can lead to 

even bigger problems. 

For example, vast profits made from convincing World Cup-branded 

products “are increasingly funding organised crime and terrorism”, 

according to Statham. 

Statham added that the ACG is lobbying governments and working 

with enforcement agencies “to better protect consumers from this 

malicious crime”. 

“There is also an increase in counterfeiting of the official Adidas match 

ball, which this year is called the ‘Telstar’.” 

Brustad highlights that his jurisdiction, Cardiff, has “seven major 

venues within a two mile radius of the city centre” and has hosted 

many international sports and music events. 

He says that all of these events are problematic, especially when “the 

difficulties faced by a local authority on reduced staff and budgets 

and trying to protect IP rights at major events”. 

Anna Guix, in house counsel at FC Barcelona, said at a recent 

conference that counterfeiters are even copying the labelling of 

club shirts, so that brands are having to “develop specific labels for 

security reasons”. 

She also noted that counterfeiters are using smaller shipments to 

hide their products, as well as distributing products without the 

branding attached, only to add it on at a later date. 

Guix also made reference to large events in the football world, similar 

to the World Cup, such as Copa Del Rey (Spanish Cup), Champions 

League, El Clasicos as well as Summer Tours to places like the US 

and China. 

She concluded by urging consumers to think carefully about the 

goods they buy online be it at home or abroad “because counterfeit 

goods are often of poorer quality, can be unsafe and more worryingly, 

may even be dangerous”. 

According to a FIFA Spokesperson, for the 2018 FIFA World Cup, the 

organisation will be working together with customs authorities across 

the world to “use existing structures and know-how in the joint battle 

against counterfeit products”. 

The spokesperson added that the preparation for the 2018 

tournament was “not only on developing the infrastructure of the 

stadiums, transportation and the logistics but also on the creation of 

a unique 2018 FIFA World Cup Russia brand”. 

This brand itself includes the official emblem, official look programme, 

mascot, slogan, and more. 

The spokesman concluded: “From the early days of the event 

preparations through to the final dramatic moments when the trophy 

is presented to the winning team, the whole event needs a strong 

brand that captures the essence of the event and the host country, 

whilst forging strong emotional links between the World Cup and fans 

all over the world.” IPPro 


The ECTA Conference will deal with the latest developments in 

Trade Mark, Copyright and Design law, and will offer optimal 

networking opportunities with friends and colleagues. 

www.ecta.eu

Case Report 

Red rag to a bull 

Jenni Rutter and Charlotte Henley of Kensington Swan analyse a recent 

case involving Red Bull 

A recent decision from the New Zealand Assistant Commissioner of 

Trade Marks confirmed that a reputation associated with one type of 

core goods can be used to stop registration of a similar trademark for 

very different goods. 

Bullsone applied to register the following device mark in New Zealand: 

The goods were motor vehicle related products in classes one, 

three, four, and five. They included chemical additives, windscreen 

cleaning liquids, oils and lubricants, air freshening preparations and 

the like. Bullsone is a Korean company with no known presence in 

New Zealand. 

Red Bull opposed the application on two main grounds: 

 

Use of the Bullsone logo would be likely to deceive or confuse 

consumers (section 17(1)(a) Trade Marks Act 2002) 

 

Bullsone logo is similar to the following logo marks that had been 

extensively used by Red Bull: and use of the Bullsone logo would 

be taken as indicating a connection in the course of trade with 

Red Bull, and would be likely to prejudice the interests of Red 

Bull (section 25(1)(c)) 

Fig 1: Bullsone logo 

Fig 2: Red Bull logo 

Red Bull’s evidence showed 

very significant use of its trademarks, 

including in New Zealand 

Jenni Rutter, partner, Kensington Swan 


Case Report 

Red Bull’s evidence showed very significant use of its trademarks, 

including in New Zealand. This included not only activities directly 

relating to its energy drink products, but also substantial use of its 

marks in relation to motorsports and other events Red Bull sponsors. 

Examples included the following: 

The Hearings Officer accepted Red Bull’s argument that the Bullsone 

Logo is “strikingly similar” to the Red Bull marks. 

Crucially, on the s 17(1)(a) argument she found that “the evidence 

demonstrates that it is likely that a substantial number of consumers 

or potential consumers of the applicant’s car care products would 

make an association between motorsports and the Red Bull 

trademarks”, or would be caused to wonder whether the goods 

bearing the Bullsone Logo were produced or licensed by Red Bull. 

For the purposes of the s 25(1)(c) argument the Hearings Officer 

accepted that the Red Bull marks were “well-known” in New Zealand. 

This finding was based on Red Bull’s “significant evidence of its 

advertising and publicity of its marks through various media and the 

uptake by the public of that media”, as well as the high volume of 

sales of its products in New Zealand. 

Despite the disparate nature of Red Bull’s energy drink products and 

the automotive products of Bullsone, the Hearings Officer found: 

Red Bull’s publicised and well known 

sponsorship of motor racing as a means 

of promoting its energy drinks will lead 

a substantial number of consumers who 

see the opposed mark on the applicant’s 

automotive (and other) goods to conclude 

that there is a connection in the course of 

trade between those gogo would be likely to 

prejudice Red Bull’s interests, based not only 

on the likelihood of confusion or deception, 

but also possible dilution of the strength and 

coherence of Red Bull’s well-known marks. 

Fig 3: Red Bull sponsorships 

Red Bull’s opposition succeeded and the decision was not 

appealed. IPPro 

For the purposes of the argument 

the Hearings Officer accepted that the 

Red Bull marks were “well-known” in 

New Zealand 

Charlotte Henley, partner, Kensington Swan 



Industry Events 

ECTA 

Athens 

IP Law Europe Summit 

Montreux 

June 2018 

13-16 

ecta.org 

June 2018 

21-22 

events.marcusevans-events.com 

IP Law Summit 

Texas 

Global IP UK Exchange 

London 

June 2018 

24-26 

events.marcusevans-events.com 

June 2018 

26-27 

globalipexchangeuk.iqpc.co.uk 


The world’s premier IP directory 

www.ipproconnects.com 

www.ipproconnects.com 

15

Industry Appointments 

Industry appointments at Hogan Lovells, Rimon, DLA Piper and Haseltine Lake 

Hogan Lovells has hired Burkhart Goebel as the new head of its 

intellectual property practice, effective 1 July. 

DLA Piper has named four new intellectual property heads across 

its US offices. 

The practice includes 400 IP professionals, who advise on contentious 

and non-contentious trademark, domain name, patent, copyright and 

trade secret matters, as well as IP transactions. 

The current head of the IP practice, Andreas von Falck has headed 

the practice since 2003 and will remain at Hogan Lovells and continue 

with his active portfolio of client work. 

Goebel will stand down from his current role as Continental Europe 

managing partner. His replacement is yet to be announced. 

Commenting on his appointment: “Our IP practice is truly first class. 

We work on some of the most complex and high profile matters 

globally—such as the recent Eli Lilly patent dispute in the UK 

Supreme Court, LEGO copyright dispute in China and SABIC joint 

venture with ExxonMobil in the US.” 

Larissa Park has been named co-head of the firm’s patent prosecution 

practice, while Matthew Satchwell and Keith Medansky have 

been named co-heads of the Chicago IP and technology practice. 

Elsewhere, the firm has named Nicholas Papastavros as head of the 

Boston IP and technology practice. 

Park focuses on patent strategy, counselling, prosecution, diligence 

and litigation at the US Patent and Trademark Office with a focus on 

the technology sector. 

Satchwell’s practice covers patent litigation, he represents clients in 

the automotive device, semiconductor, integrated circuit and mobile 

communications industries. 

Medansky works on a range of transactional and litigation matters 

in relation to trademarks, copyright, software and anti-counterfeiting. 

“The intellectual property of a global brand has never been more 

critical to business growth, innovation and survival—this is an 

exciting time to be leading the team and we are grateful to Andreas 

for his leadership, passion and commitment over the last 15 years.” 

Papastavros focuses on technology-related litigation and licensing 

matters, emphasising patents, trade secrets, trademarks and copyright. 

Haseltine Lake has promoted three intellectual property attorneys. 

Rimon has hired Maxim Waldbaum as partner in its New York office. 

Waldbaum will join Rimon from Eaton & Van Winkle, where he was 

also partner. 

He has experience representing clients in resolving patent, trademark, 

copyright, and trade secret cases. 

His practice focuses on technology, universities and endowments, 

and sport, entertainment, and recreation. 

Commenting on the move, Michael Moradzadeh, Rimon’s CEO said: 

“Maxim Waldbaum has established a strong reputation as a go-to 

intellectual property trial lawyer, one who clients can trust with their 

company’s most valuable assets.” 

Michael Conway and Chris Morris has been promoted to partner, and 

Andrew Sunderland to senior associate. 

Conway’s experience covers a range of UK, European and overseas 

trademark matters, including clearance searching, contentious 

proceedings and arguing the case for registrability of trademarks. 

Morris focuses on the wider IP market and has experience in 

overcoming inherent registrability objections and has devised overall 

IP strategies for large businesses, along with worldwide brand 

protection and enforcement tactics. 

Sunderland is experienced in all areas of drafting and prosecuting 

patent applications, focusing on the European and UK jurisdictions, 

with additional experience in other countries, such as the US. 

“IP is a foundational practice at Rimon, one that our clients rely on for 

success. We are glad to welcome [him] to Rimon.” 

Waldbaum added: “It is my great pleasure to join the experiment in 

success that is Rimon—a unique creation, not by accident, of highly 

accredited and accomplished legal scholars and veterans who also 

happen to be very nice to work with.” 

Commenting on the moves, Lesley Evans, chief executive of Haseltine 

Lake, said: “Haseltine Lake is rapidly growing, and these promotions 

highlight the dedication, commitment and expertise Michael Conway, 

Chris Morris and Andrew Sunderland bring to the Haseltine Lake 

team and to our clients. Their new positions come at an exciting time 

for the firm, as we celebrate 40 years of operating in Europe and we 

continue to expand our global business.” IPPro 


Areas of specialization 

IP registrations and recordings 

Patice attorneys assist in all subject matters relating to the registration of IP rights and IP disposal 

contracts with the Icelandic Patent and Trademark Office. The main IP rights for registration and 

recordings with the Patent Office are patents, trademarks and designs. 

EP validation in Iceland 

Patice attorneys have extensive experience in handling EP validation in Iceland. Patice translators 

are all specialized in IP subject areas. Patice prices in validation cases are very competitive. The 

same applies to Provisional protection of EP applications. 

Copyright 

Patice attorneys are experienced in handling copyright cases such as dispute settlement solutions, 

court cases and enforcement of rights. 

IP consulting 

We offer expert legal advice, contract drafting and negotiation in IP subject matters such as use, 

transfer, franchising, licensing, due diligence, import, export, distribution of goods, confidentiality and 

data protection, as well as service and agency agreements, including for IP related rights use. 

Enforcing IP rights – IP dispute resolution – Anti piracy initiatives 

Enforcing IP rights: Patice attorneys have vast experience in protecting and enforcing IP rights, providing 

legal support in negotiations and disputes. 

IP dispute resolution: Disputes relating to trademarks, patents, designs, copyrights, Internet and database 

rights, trade secrets and related agreements in government agencies and branches. 

Anti-piracy initiatives: The legal expertise of Patice attorneys combined with a deep knowledge of 

local markets and true understanding of local mentality and traditions, make our anti-piracy initiatives 

highly efficient. 

Patice policy 

Charges: Charge moderately for rendered IP services for the satisfaction of our clients and associates. 

Services: Providing quality services in a timely manner in accordance with proper IP business practices. 

Postal Address 

P.O. Box 10101 

130 Reykjavík 

Iceland 

Communication 

Tel.: +354 588 1817 

Fax: +354 588 0044 

E-mail: mail@patice.com 

Website: www.patice.com

IPPro The Internet Issue 143

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