Journal of Intellectual Property Law & Practice - current issue

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Harmonization by degrees

Fri, 09/05/2014 - 09:52
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Burden of proof to establish infringement remains with the patentee even in declaratory judgment action brought by licensee

Fri, 09/05/2014 - 09:52

The US Supreme Court unanimously reversed a previous determination by the US Court of Appeals for the Federal Circuit, holding that, even in a declaratory judgment action brought by a licensee, the burden of proving patent infringement remains with the patent holder.

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It is OK to 'reverse engineer' simple trade marks, the CJEU says

Fri, 09/05/2014 - 09:52

Absolute grounds provided by Article 7(1)(e)(ii) of the Community Trade Mark Regulation 207/2009 (CTMR) apply both to two- and three-dimensional signs. For the purpose of this provision, the identification of the sign's essential characteristic may be carried out on the basis of relevant material further to the sign as filed, such as surveys or expert opinions, data relating to intellectual property rights conferred previously in respect of the goods concerned or products actually marketed by the trade mark owner. Such material can be subsequent to the date of application insofar as it enables conclusions to be drawn with regard to the situation as it was on that date.

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When a colour becomes a shape: Brussels Commercial Court annuls Louboutin's red sole trade mark

Fri, 09/05/2014 - 09:52

The President of the Brussels Commercial Court has declared Louboutin's famous red sole trade mark invalid since it related to a shape giving substantial value to the goods at stake.

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Famous trade marks may help to insulate an allegedly confusing trade mark from a reasonable likelihood of confusion

Fri, 09/05/2014 - 09:52

The recent decision of H-D USA suggests that an allegedly confusing trade mark may be rendered distinctive by its close ties to a famous house mark.

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Sri Lankan Court of Appeal balances tobacco trade mark rights and the promotion of public health

Fri, 09/05/2014 - 09:52

The Sri Lankan Court of Appeal refused an application made by the Ceylon Tobacco Company PLC seeking to quash the Tobacco Products (Labelling and Packaging) Regulation No 1 of 2012 (published in Gazette Extraordinary No 1770/15 of 8 August 2012) subsequently amended by regulation published in Gazette Extraordinary No. 1797/22 of 15 February 2013 (‘regulations’) for being ultra vires its empowering statute, the National Authority on Tobacco and Alcohol Act 2006. The court came to its finding having considered the impact pictorial health warnings have on the use of tobacco, the nature of trade mark rights guaranteed under the Intellectual Property Act 2003 and the Sri Lankan government's interest of promoting public health, especially in view of its obligations under the World Health Organization Framework Convention on Tobacco Control.

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Private copying exception may only apply to reproductions from licensed sources

Fri, 09/05/2014 - 09:52

Article 5(2)(b) of Directive 2001/29 (the ‘InfoSoc Directive’), read in conjunction with paragraph 5 of the same provision, must be interpreted as precluding national legislations that do not distinguish the situation in which the source from which a reproduction for private use is made is lawful from that in which that source is unlawful.

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Own goal for publican in dispute with Sky

Fri, 09/05/2014 - 09:52

The court has held that a publican who showed football matches broadcast by British Sky Broadcasting Group (‘Sky’) without consent infringed copyright. The publican was also held to be in contempt of court for breaching an interim interdict order to that effect.

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No protection of image rights afforded to the Belgian national football team

Fri, 09/05/2014 - 09:52

The Court of Appeal of Brussels confirmed a first instance ruling that the use of a photograph of the Belgian national football team on the cover of a soccer annual without obtaining the prior consent of the Royal Belgian Football Association did not infringe the image rights of the national team players depicted in the photograph.

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Recent developments in Thailand's Plant Variety Protection Law

Fri, 09/05/2014 - 09:52

Thailand has recently introduced the Plant Variety Protection Bill (PVP Bill) to replace the current Plant Variety Protection Act B.E.2542 (AD1999) (1999 PVP Act).

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The CJEU confirms the exclusive character of EU competence in PDO/PGI schemes

Fri, 09/05/2014 - 09:52

The Court of Justice of the European Union confirmed the exclusive character of the European Union's competence with regard to geographical indications relating to agricultural products and foodstuffs. The compliance of national legislation to the EU rules and principles must be determined by the national Court, so ‘Salame di Felino’ goes back to the Corte di Cassazione.

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Search engine liability arising from third parties infringing content: a path to strict liability?

Fri, 09/05/2014 - 09:52

The Civil Court of Appeal, Division ‘J’ of the City of Buenos Aires reversed the first instance court decision and ordered Google and Yahoo! to pay amounts of AR$75 000 and AR$15 000, respectively, plus interest after finding the defendants liable for moral damage caused to a famous Argentinean actress by having her name and image associated with web-pages containing sexual, erotic and pornographic content. This content appeared listed in Google and Yahoo! search results when her name was entered in the search bar. They also ordered the defendants to eliminate the actress's name and image from the search results. The Civil Court of Appeal considered that search engine ‘spiders’ and their activity are ‘risky’ themselves and, therefore that the regime of strict liability for the resulting damages should be applicable. The defendants filed an extraordinary appeal which has been recently rejected.

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Unlawful acquisition of trade secrets by cyber theft: between the Proposed Directive on Trade Secrets and the Directive on Cyber Attacks

Fri, 09/05/2014 - 09:52

There was a time when things were just like a John le Carré story: an individual, resourceful and with many skills, would get into a company's HQ, or maybe he would seduce a beautiful assistant, and then, he would get his hands on some confidential documents. Today you just need to hire a hacker. He will do all the work, hidden behind his computer anonymity. In the global information Age, where businesses have entered into the time of ‘Big Data’, with a massive amount of operational data being exchanged online, where everything's accessible through cyberspace and we watch the advance of a movement often referred to as the Industrial Internet, where the Cloud and SaaS are increasingly gaining field, these kind of risks are growing exponentially. Economic espionage threatens especially intellectual property rights, and trade secrets are the most intangible and vulnerable among these intangible assets, as they play a significant role in innovation and competition. This article goal is to take a look on the now adopted ‘Proposal for a Directive on the Protection of Undisclosed Know-How and Business Information (Trade Secrets) Against their Unlawful Acquisition, Use and Disclosure’, crossing it with the Directive on Attacks Against Information Systems on how the two proposals might work to complement each other in the protection of trade secret holders against threats to their confidential information.

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Open innovation's answer to the challenges of patent overpropertization

Fri, 09/05/2014 - 09:52

In 2003, Henry Chesbrough introduced the concept of open innovation to the study of research and development. Open innovation teaches that technology advancement is best fostered through inbound and outbound R&D investment and the exchange of innovative knowledge. Patents, often the subject of technology transfer, are characterized as a bargain between the inventor and the state. Without propertization through the patent bargain, it is argued, market failure occurs.

Despite their close ties, the relationship between open innovation strategies and the patent bargain is best described as both friendly and adversarial at the same time. Propertization of innovative knowledge through the patent bargain has, paradoxically, had the effect of blocking future innovation. Due to overpropertization, patent trolls and patent thickets have arisen that threaten to stifle advancement in new technologies.

This Article discusses open innovation strategies that offer answers to the challenges of overpropertization. Where rent-seeking behaviors threaten future technologies, defensive pooling manages risk; where innovation-blocking thickets arise, private sharing regimes cross-license patents; and where innovative knowledge is best protected as confidential information, trusted intermediaries can facilitate exchange. In each case, open innovation is at work.

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Is Article 13 of the Enforcement Directive a redundancy notice for the account of profits remedy in the UK?

Fri, 09/05/2014 - 09:52

This article examines a consequence of Art 13 of Directive 2004/48 on the enforcement of intellectual property rights.

The authors consider the extent to which at least in the UK,the remedy of damages has effectively usurped the role & function of the free standing remedy of account of profits.

It is argued that Art 13 has eliminated the need for electing between damages and account and a cascade is proposed, by which courts might approach the award of damages under Art 13.

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The 'exhaustion approach' to trade mark protection: a parallel universe or a better way?

Fri, 09/05/2014 - 09:52

This article examines the different approaches that European courts, and particularly the CJEU, have taken to trade mark protection depending upon whether they are dealing with exhaustion or with validity and infringement. In particular, it argues that, in relation to the former, the courts will seek to balance the differing interests of parties involved in parallel trade, including competitors and the public, rather than privileging the rights of the trade mark proprietor. To illustrate this point it examines key cases in this area, including those relating to art 7 TMD, arts 34 & 36 TFEU and arts 101(1) and 102 TFEU. It then asks whether it would be possible to interpret the Trade Mark Directive in a similar, and balanced way, and concludes that it would. It notes, in particular, that following the courts' emphasis on the multiple functions of trade marks, there has been an increasing readiness to recognize and protect the interests of different market actors. It concludes with a counterfactual, L'Oreal v Bellure, widely considered a high water mark of trade mark protection. It suggests that if the law as it has developed in relation to exhaustion were applied to the facts of this case, the outcome would have been markedly different. This article asks whether such an outcome might be preferred, as being more favourable to promoting competition within the common market. And it posits that the ‘exhaustion approach’ to trade mark protection is moving towards the mainstream.

Categories: Local News Feeds

Of availability, targeting and accessibility: online copyright infringements and jurisdiction in the EU

Fri, 09/05/2014 - 09:52

This article explores some territoriality aspects related to copyright infringements occurring online. Faced with a cross-border exploitation of protected subject matter, the right holder will have to establish acts protected under copyright (right of making available to the public, reproduction right) and tie these to the territory of one or more Member States of the European Union. The localisation criteria operated will have an effect on jurisdiction. It will be examined in the applicable European legislation and CJEU decisions where acts protected under copyright are localised and how the jurisdiction of the national courts of the Member States is determined for online infringements. The article will conclude by suggesting how jurisdiction can be established, by reference to the localisation of the protected acts, in order to achieve a satisfactory treatment of an alleged online infringement of copyrights.

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