Journal of Intellectual Property Law & Practice - current issue

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Updated: 41 min 58 sec ago

Scottish Court of Session considers whether patent can be interpreted without expert evidence

Tue, 07/15/2014 - 11:18

The court decided that, in certain cases, it may be able to rule on questions of patent interpretation without first hearing expert witnesses, but not in this case. The pursuer's pleadings set out a relevant case of patent infringement and the case could proceed to a proof (trial).

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Red Bull v The Bull Dog: 'due cause' in trade mark infringement

Tue, 07/15/2014 - 11:18

The CJEU has provided valuable guidance on the interpretation of ‘due cause’ (under Article 5(2) of Directive 89/104 (now replaced by Directive 2008/95)) where a sign that is identical or similar to a registered trade mark with a reputation was already being used in good faith before the registered trade mark was applied for.

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Enhanced distinctiveness irrelevant to assessing likelihood of confusion

Tue, 07/15/2014 - 11:18

In OHIM v riha WeserGold Getränke, the CJEU held that the enhanced distinctiveness of an earlier mark is irrelevant to the assessment of a likelihood of confusion between dissimilar marks.

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A five-star debate

Tue, 07/15/2014 - 11:18

For the first time ever, Australia's highest court will consider the inherent distinctiveness of foreign laudatory trade marks.

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'It's so good, I put my name on it': the unexpected pitfalls of registering a personal name as a trade mark

Tue, 07/15/2014 - 11:18

A recent decision of the Federal Court of Australia determined whether prominent Australian business man, Bob Jane, could continue to use his own name in the course of trade. The Federal Court decision is a reminder that there is no unqualified right to use your personal name in the course of trade and, should it be registered as a trade mark, continued use of the name without authorization from the mark's owner will constitute an infringement under Australian law.

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Federal Court of Canada promotes a purposive interpretation of the remedial provisions of the Trade-marks Act, with a view to providing greater access to relief

Tue, 07/15/2014 - 11:18

In Victoria's Secret, the Federal Court of Canada loosens the definition of an ‘interested person’ and affords future litigants easier access to the remedial provisions of the Trade-marks Act.

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Little glee for Twentieth Century Fox

Tue, 07/15/2014 - 11:18

The proprietor of UK venues used for stand-up comedy has persuaded the High Court that Twentieth Century Fox's American television series ‘Glee’ infringed the claimant's trade mark, which incorporated the words ‘The Glee Club’, by virtue of ss 10(2)(b) and 10(3) of the Trade Marks Act 1994.

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CJEU on communication to the public and national systems of collective rights management

Tue, 07/15/2014 - 11:18

In this ruling the Court of Justice of the European Union held that TV and radio transmissions in spa guest rooms fall within the scope of the right of communication to the public, and that EU law does (or rather, did) not preclude per se national legislation that reserves the exercise of collective management of copyright and related rights in the territory of a certain Member State to a single copyright collecting society.

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CJEU allowed website-blocking injunctions with some reservations

Tue, 07/15/2014 - 11:18

The Court of Justice of the European Union (CJEU) issued its long-awaited decision on admissibility of the website-blocking injunctions. The ruling generally allows website-blocking, but makes its permissibility depend on the number of requirements. Because the decision addresses primarily website-blocking injunctions which omit to specify the specific blocking technology and/or fixed address of the website (so called ‘open-ended injunctions’), the extent to which its principles also apply to specific website-blocking injunctions is subject to interpretation.

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US Second Circuit clarifies the statute of limitations for copyright infringement claims

Tue, 07/15/2014 - 11:18

The US Court of Appeals for the Second Circuit confirmed that the three-year statute of limitations for copyright infringement claims runs from the date the plaintiff discovers the infringing use and not from the date of first infringement.

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Magmatic v PMS: no RCD infringement on appeal

Tue, 07/15/2014 - 11:18

The Court of Appeal has overturned the High Court's judgment that a registered Community design (RCD) was infringed by a copied child's ride-on suitcase and has refused permission to appeal to the Supreme Court.

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IP jury trials--trouble ahead?

Tue, 07/15/2014 - 11:18

The creation of a Patent Trial and Appeal Board ("PTAB") to preside over quasi-trials of patent validity after the fact at the Patent and Trademark Office ("PTO"), raises substantial issues of constitutional law that have far-ranging implications for both patent jury trials in the U.S. Federal district courts, as well as IP trial practice in general.

Motions are regularly filed to stay district court litigation to await the outcome of PTAB proceedings. The patent owner therefore stands to be deprived of the right to a jury trial—in an actual case or controversy with a specific accused infringer—due to intervening invalidation of the patent-in-suit by an Article I tribunal acting without benefit of a jury.

Hence, the jury trial right in patent cases, and by implication in other IP cases involving trademarks or copyrights, now logically seems in jeopardy of diminution. Success of the new PTAB proceedings in reducing the perceived exposure from patent jury trials, could lead to similar pressure from perennial defendants in copyright- and trademark-based industries to seek relief from perceived cost, delay and capriciousness of jury-trial proceedings; with the result being increasing reliance upon administrative determinations on validity by Article I judges acting without juries.

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Finding Vredopat.pending: the Dutch Supreme Court decision on escitalopram

Tue, 07/15/2014 - 11:18

Alexander Tsoutsanis is an attorney with DLA Piper, a Senior Researcher and Lecturer at the Institute for Information Law (IViR) of the University of Amsterdam. He recently joined the editorial board of the Journal of Intellectual Property Law & Practice.

This article is about the pharma patent litigation sparked by Lundbeck's blockbuster drug for escitalopram. The article focuses on the trials and tribulations before the Dutch Patent Court of Appeal and the Supreme Court, while also briefly contrasting and comparing this with the decisions in Germany and the United Kingdom.

Particular attention is given to novel substances which can be fully envisaged but not yet made. Under the doctrine, set out by the Technical Boards of Appeal, such envisaged substance can still be considered to be non-obvious and therefore patented if the claimed method for preparing such substance is the first to achieve this in an inventive manner. The Dutch Supreme Court follows this doctrine.

The author criticizes the lack of explanation provided by the Supreme Court in reversing the decision of the Court of Appeal. By merely referring to foreign precedent, the Supreme Court violates its (own) duty to state (its own) reasons.

The article concludes by outlining the practical impact of the decision of the Supreme Court: inventors developing a (novel and) inventive process for obtaining a (novel) product which can be fully envisaged but not yet made, can obtain not only a process claim for inventing the process, but also monopolize the substance under a product claim.

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Remedies for trade mark infringement in Tanzania: principles and practice

Tue, 07/15/2014 - 11:18

This article seeks to cover the principles and practice of courts in Tanzania when it comes to assessment of damages in trademark infringement cases. The article begins by defining trademarks, damages as well as infringement. It proceeds to cover briefly the overview of trademark law in Tanzania. This was purposely done in order to put things in perspectives.

The article further covers the various types of remedies available to the rights holder upon infringement of trademarks besides damages which is the core focus of this article. These damages include injunction which is the principal remedy that one can seek in order to prevent the other party from continuing to use the infringing mark, account of profit in which case the rights holder rather than seeking actual damages, seek the profits made by the other party as a result of its use of the infringing mark, withdrawal of goods bearing the infringing trademark from the market and disposal outside the channels of commerce in such a manner as to avoid any harm to the rights holder or, unless this would be contrary to existing constitutional requirements, destroyed. There is also punitive damages which is payable where it is proved in the balance of probabilities that the infringement was done maliciously, wilfully, fraudulently or deliberately.

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Proposed amendments to US patent law: will this affect the reality of patent litigation practice?

Tue, 07/15/2014 - 11:18

In this article, the author discusses the proposed amendments to the US patent law and their potential consequences on litigation practice.

Most of these reforms aim at tackling the Patent Assertion Entities aggressive strategy by introducing new litigation rules related to transparency in patent ownership, pleading requirements and loser pay rule. Reforms have received many supports from the Obama administration as well as the tech giant companies. However many IP practitioners and professional organisations have express their concerns, fearing that some of the proposed changes will degrade the litigation system.

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An epilogue to Svensson: the same old new public and the worms that didn't turn

Tue, 07/15/2014 - 11:18

On 13 February 2014 the CJEU provided its much anticipated answer to the question of whether the provision of a hyperlink can amount to a communication to the public of a work to which that hyperlink resolves. This article analyses that decision, considers some of the remaining areas of uncertainty relating to the provision of hyperlinks, and goes on to consider copyright protection of hyperlinks distinct from the underlying work to which they resolve. It concludes by endeavouring to summarise the current status of hyperlinks and communication to the public.

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A guide to US patent challenge procedures under the Leahy-Smith America Invents Act

Tue, 07/15/2014 - 11:18

The Leahy–Smith America Invents Act provides various procedures for challenging the validity of U.S. patents in the U.S. Patent and Trademark Office. Some of the procedures are complex and expensive, and can only be justified when the patent in question places significant business interests at risk. This article summarizes the alternative procedures, and explains when each one is most appropriately used.

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Trade secrets: the new EU enforcement regime

Tue, 07/15/2014 - 11:18

This article will concentrate on the aspects of the new EU proposed Directive on the protection of undisclosed know-how and business information (trade secrets) which focus on enforcement. It will however firstly explain the significance of trade secrets and give more background on the current legal position. It will then discuss a few of the key provisions and definitions in the new Directive, as these matters are important to put matters in context, before going on to deal with the enforcement issues it raises.

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Introducing reality into trade mark law

Tue, 07/15/2014 - 11:18

The purpose of this piece is to draw attention to parallels between how European trade mark law treats certain issues pertaining to distinctiveness in the light of the Kit Kat reference and recent United States scholarship on confusion. It will be argued that, while the courts require a detailed consideration of consumer perception in establishing distinctiveness, this is not always the case when it comes to establishing confusion. However, a group of US scholars have called for a consideration of the real effect of junior use on consumers as part of the confusion test. I argue that this scholarship and European developments in the field of distinctiveness share a refreshing concern for the reality of consumer perception.

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