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Journal of Intellectual Property Law & Practice - current issue
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In a landmark decision, which should go a long way in streamlining the procedural aspects of patent litigation cases, the Supreme Court of India addressed the issue of multiplicity of proceedings in patent opposition, invalidation and revocation cases.
On 29 April 2014 the US Supreme Court issued two companion decisions which overturned the long-standing jurisprudence of the US Court of Appeals for the Federal Circuit (‘Federal Circuit’) regarding the standard for awarding attorney fees under 35 USC 285 and the deference given to the district court judge in making such a determination for patent cases.
Kornspitz: only the views of end users are relevant to establish if a trade mark has lost its distinctive character
The CJEU has held that, in order to establish whether a trade mark has become a common name for a given product, the perceptions of end users alone have to be taken into consideration.
The CJEU has confirmed that, in an action for the declaration of invalidity of a Community trade mark (CTM) based on the existence of an earlier right protected under national law, under Article 53(2)(c) of Regulation 207/2009 on the Community trade mark (CTMR), the competent OHIM bodies and the General Court must be able to ascertain the relevance of the evidence produced by the applicant to establish the content of the applicable national law, obtaining by their own motion, if necessary, any further information about its scope, content and interpretation. This principle, according to the court, stems from the necessity of ensuring the practical effect of the CTMR, and falls in line with the teaching of the judgment in Edwin v OHIM (C-263/09 P, EU:C:2011:452).
In Simca Europe Ltd v OHIM, the General Court upheld an Office for Harmonisation in the Internal Market (OHIM) Board of Appeal decision declaring a Community trade mark (CTM) for the word SIMCA invalid, finding that the former proprietor of the word mark SIMCA, registered for vehicles, acted in bad faith when applying to register it. The court found that the Board had been entitled to take into account factors not previously listed in case law as criteria for the interpretation of the concept of ‘bad faith’, such as historical use of the mark and commercial logic for filing the CTM application.
Disagreeing with the first instance court, the Higher Regional Court of Cologne held that sweetmaker Lindt's three-dimensional gold-foiled chocolate bears did not infringe Haribo's well-known GOLDBÄREN gummy bear (word) trade marks.
Balancing tool or escape clause? Proportionality in temporary relief proceedings before the Greek courts
A recent judgment of the Athens First Instance Court in preliminary injunction proceedings over trade mark infringement illustrates how the principle of proportionality may be (mis-)used.
A federal district judge dismissed the right of publicity claim of a couple whose engagement photograph had been used without permission by an organization to promote anti-gay speech, while the copyright claim of the photographer who took the picture was allowed to proceed.
Moroccanoil Israel Ltd (MIL) failed in its passing off claim against Aldi; although Aldi's packaging was deliberately similar to MIL's packaging, there was no evidence of customers being deceived as to their economic origin.
The CJEU has confirmed the broader interpretation of ‘active substance’ proposed by AG Jääskinen (EU:C:2014:86) in the context of supplementary protection certificates (SPCs) for plant protection products—will this decision result in a move away from the strict approach previously applied in relation to SPCs for medicinal products?.
The competition law treatment of no-challenge clauses in licence agreements: an unfortunate revolution?
Sophie Lawrance is a senior associate at London law firm, Bristows LLP, where she specialises in EU and competition law. She has a particular interest in working with businesses in the technology and pharmaceutical sectors, and in relation to the competition issues that arise in connection with standardised technology.
Sophie is a regular contributor to www.bristowsclipboard.com, a legal blog commenting on issues around the competition law/IP interface.
This article looks at the Commission's treatment of no-challenge provisions in licence agreements. The new technology transfer rules, which came into force on 1 May 2014, adopt a stricter approach to such provisions than was previously the case.
The Commission's new approach is driven by a policy objective of ensuring that invalid patents are revoked. This article considers the implications of this policy, as well as competing policies such as freedom of contract.
Finally, the article considers the intended and unintended consequences of the Commission's new policy in this area.
Are blocking injunctions against ISPs allowed in Europe? Copyright enforcement in the post-Telekabel EU legal landscape
In recent years, the national courts of the EU Member States, in an attempt to stem the flow of rampant online copyright infringement, have increasingly turned to the issuance of blocking injunctions against the intermediaries whose websites and networks are used by third parties to commit infringements. This article examines the legal framework in place at the EU level with regard to the legality of such injunctive orders, making a distinction between filtering measures, used to detect copyright infringements, and blocking measures, used to put an end to them. On the basis of that analysis, a detailed examination will be made of the latest CJEU ruling to apply this framework, Case C-314/12, UPC Telekabel Wien GmbH v Constantin Film Verleih GmbH on the lawfulness of open-ended blocking injunctions against internet access providers.
The draft national Intellectual Property Policy proposals for improving South Africa's patent registration system: a review
This article discusses South Africa's draft Intellectual Property Policy's proposed reforms. It considers how these may be practically implemented. In particular, it focuses on the phased sector specific introduction of substantive patent examination, possible co-operation with other national or regional patent offices to enhance examination capacity, the retention of non-examination for utility or second tier patents and the involvement of third parties in the examination process. It also considers the re-introduction of opposition proceedings to further strengthen the patent system. The article points to other jurisdictions that have implemented some of these options such as Australia's utility patent system, the successful implementation of the peer-to-patent project in countries such as the United States (US) and the United Kingdom (UK) and opposition proceedings in Europe, the UK and Australia. It concludes that these are plausible and viable options that ought to be further explored for adaptation to the South African context.
The article will be of interest to those following policy and legislative developments in the developing world and particularly Sub-Saharan Africa, where change often begins in South Africa then extends throughout the region as neighbouring states follow South Africa's lead.
In the article, the trade mark is put in the context of the theory of reflection, known amongst philosophers. In the first part of the article, it is considered in purely material aspect. If we assume that a certain object has a materialist expression and is a product, which is on the market in the form of goods, and these goods have a conceptual expression in the form of a trade mark, then that trade mark is a subjective image of the very object–product-goods. It is a question if each conceptual expression would be protected as a trade mark. Examples are given for decisions of experts in The Guidelines concerning proceedings before the OHIM (trade marks and designs) Part B, Examination, Section 4, Absolute Grounds for Refusal. In the second part of the article, the trade mark is considered out of the materialist concept of existence. It is in relation with the world round us. It is shown how the choice of a given name of a trade mark of goods or service may be influenced by events of various origins or how ‘the change causes changes’.
This article analyses the background and latest developments in the case-law in Germany which deals with the commercial exploitation of an individual's personality as a special form of manifestation of the general right of personality. It will be considered how the German Federal Court of Justice strikes the balance between legitimate public interest in a celebrities' personality and a mere business interest. As the debate about the recognition of image rights in the UK is gathering momentum in the wake of the recent decision of the UK High Court of Justice which considered Rihanna, the pop star, and the clothes chain Topshop and the unauthorised use of Rihanna's image on T-shirts, this article will be of real interest to legal practitioners and academics concerned with comparative law and the protection of personality and image rights in Germany.
Trade mark law is essentially concerned with protecting consumers and trade mark proprietors against confusion. It has been assumed in a number of countries including Singapore that the likelihood of confusion is to be determined at the time of sale or purchase. This is because it is at that point in time that the purchase of goods is consummated by the consumer (and hence confusion takes effect) and damage to the proprietor occurs. The assumption is displaced by the "initial interest confusion" doctrine which posits that there can be a likelihood of pre-sale, or initial, confusion on the part of potential purchasers, even though the defendant's mark is not likely to cause mistaken purchases. The Singapore Court of Appeal has recently expressed concerns regarding the doctrine. It said that the doctrine would not only extend the protection of trade mark beyond its origin-based premise but can also stifle competition and access to information without any corresponding benefit to consumers.
Within the past few years the internet has become almost vital for many enterprises as a platform for information, sales and advertising. In addition to general considerations about specific types of advertising on the internet, this article addresses the most recent case law on the issue, especially in the field of social networks (though largely excluding employment, criminal and data protection issues).