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Journal of Intellectual Property Law & Practice - current issue
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The Patents Court has held that some of the main ‘Swiss form’ claims of Pfizer's European patent for use of the drug pregabalin to treat pain form of order sought for insufficiency and that even if they were valid, they would not have been infringed by a generic version of the drug marketed for treating epilepsy and generalised anxiety disorder.
Yes, you can! Peaceful coexistence of conflicting marks can be proved by absence of likelihood of confusion
The General Court of the European Union has ruled that the owner of a Community trade mark (CTM) can prove that his mark peacefully coexists with earlier marks, because such marks are not confusingly similar, by supplying evidence showing that the relevant public knew the conflicting marks before the date of filing of the CTM and that that mark has been used for a long enough period of time to influence consumer perceptions of it.
Despite the absence of bad faith on the part of the applicant and disregarding the trade mark law ‘first-to-file’ principle, strictly applied in China, the Beijing IP Court upheld the Chinese Trademark Review and Adjudication Board (TRAB) decision that the Trunkbow trade mark application should be denied registration. Allowing the earlier filed trade mark to be registered would have harmed the public interest and stability of the market, as it would lead to public confusion in light of the fame and reputation of Tencent's Weixin.
Ruling on cross-motions for summary judgment brought by the plaintiff Pro-Football, Inc (PFI), on the one hand, and by the defendant Blackhorse and by the USA, on the other, the court affirmed a decision of the Trademark Trial and Appeal Board (TTAB) of the US Patent & Trademark Office (USPTO) finding: (a) that § 2(a) of the Lanham Act, which prohibits the federal registration of disparaging trade marks, is constitutional under the First and Fifth Amendments to the US Constitution; (b) that six trade marks owned by the Washington Redskins professional US football team that include the term REDSKINS were properly cancelled by the TTAB under § 2(a); and (c) that the doctrine of laches did not bar those six petitions to cancel.
In a reasoned order, the Court of Justice of the European Union (CJEU) ruled that the concept of ‘communication to the public’ within the meaning of Article 3(1) of Directive 2001/29 (the ‘InfoSoc Directive’) must be interpreted as encompassing the transmission in a café-restaurant of works broadcasted via a radio device plugged to speakers and/or amplifiers.
The High Court of Uganda has held that a politician who responds to journalist's questions in an interview does not become an author of the audio-visual recording in which his image and voice were captured and, if such audio-visual recording is converted into sound recordings and used as ringtones or caller tunes, such politician does not have any copyright in the ringtones.
A court has held that the Batmobile is protected as a character under US copyright law and that the defendant's replicas infringed the copyright owner's exclusive rights.
Another case of handbags at dawn: General Court rules out mathematical approach to assessment of overall impression
The General Court has given guidance on the application of ‘design freedom’ in registered Community design (RCD) cases, rejecting a separate, preliminary assessment in favour of a multifactorial analysis. The Court also rejected a comparison involving a mathematical weighted list of similarities and differences between the two designs, in favour of an ‘overall impression’.
Ahead of the curve in terms of investigations into e-commerce and copyright rules is the decision by the European Commission to clear, subject to commitments, a joint venture between music collecting societies in the UK, Sweden and Germany (PRSfM, STIM and GEMA).
The European Court of Human Rights (ECtHR) has recently affirmed its earlier Delfi AS v Estonia decision of 2013, in which the court rejected the complaint of a news portal that was exposed to civil liability before notification in respect of third-party comments made on its website under one of the news items. The Grand Chamber has now upheld the ruling, according to which the imposition of a general obligation to control third-party content can in some circumstances constitute a justified interference with the intermediary's freedom of expression.
Following the authors' earlier article discussing the maze of restrictive copyright rules that could apply to transformative uses of existing works, this article discusses what is the most promising approach for reforming the European copyright regime to introduce more flexibility for transformative users.
The authors consider two reform proposals, both inspired by Canadian law: first, the introduction of a specific exception for user-generated content; secondly, a more ambitious transition to a semi-open ‘fair dealing’ exception, striking a better balance between flexibility and legal certainty than the current EU copyright regime.
The authors argue in favour of this second proposal, which provides the additional advantage of not requiring a legislative reform but being achievable by the Court of Justice of the European Union (CJEU), if only it was willing to follow the footsteps of the Supreme Court of Canada in its ambitious new case law following its landmark CCH decision.
Since 1964, the United States has used a per se standard in post-expiration patent royalty cases. While heavily criticized in Aronson v Quick Point Pencil Co, Scheiber v Dolby Labs, Zila Inc v Tinnell and Kimble v Marvel, the rule has been maintained.
This article will examine post-expiration patent royalties through the legal background of Kimble v Marvel and analyse the shift from per se rules to the rule of reason in antitrust cases. Particular attention will be given to the limitations of the Brulotte rule, the microeconomic advantages provided by the rule of reason, and the policy implications of a Congressional shift to the rule of reason in post-expiration patent royalty cases. This article finds that a switch to case-by-case analysis using the rule of reason would be a more effective method of handling post-expiration patent royalty cases than the current per se requirement.
While previous articles have hinted at Congressional reformation of the Brulotte rule, no article has fully analysed this idea. This article lays a practical policy framework for Congressional reform of the per se rule in post-expiration patent royalty cases.
Data protection and the right of personality with regard to rating platforms: decisions of the German Federal Supreme Court
This article considers two recent decisions of the German Federal Supreme Court (‘Bundesgerichtshof’—‘BGH’) relating to online rating platforms evaluating medical doctors. The first decision highlights the issue of whether a doctor can request the operator of such a platform to delete data collected about him and comments posted by users (irrespective of whether the comments involve untrue facts, libel or otherwise unlawful content). The second decision is related to the question of whether the affected party can request the platform operator to disclose the user's identity in the event the comments involve illegal statements.
The authors analyse the decisions and their impact, in particular with regard to claims to disclose a user's identity where allegedly unlawful statements have been made.
The Traditional Knowledge Digital Library (TKDL), developed by India, was one of the earliest initiatives in protecting traditional knowledge in the world. As a country rich in traditional knowledge largely unknown to the rest of the world, India set up the TKDL to ensure that this knowledge was not misappropriated by third parties using more traditional means of IP protection such as patents. However, the TKDL remains a defensive protection of traditional knowledge that does not fully ensure that the benefits of the information reach its original holders as far as possible. This article looks at the origins of the TKDL, its scope and role, and, finally, at the need for a sui generis protection for traditional knowledge in India.
Although discussions on the development of a universal framework for protecting traditional knowledge are ongoing at the World Intellectual Property Organization, the process of consensus building has been slow. Therefore, legislation and protection mechanisms in each individual country will continue to determine how such knowledge can be used by third parties.
This article suggests that India should adopt a framework for the protection of traditional knowledge similar to that of Peru, in order to provide legal certainty both for the communities that hold such traditional knowledge and for the third parties that seek to make use of it. Keeping in mind the many benefits that traditional knowledge has to offer, the objective of such framework would be to make the knowledge available for beneficial exploitation, while ensuring that the local communities receive their due.
A harmonized approach to prohibitory injunctions: reconsidering Article 12 of the Enforcement Directive
The level of a court's discretion in deciding whether to grant a prohibitory injunction is an important issue, in particular in the context of patent litigation.
Article 12 of the Enforcement Directive offers a basis for a harmonized European approach to this issue.
This article examines the reasons for not implementing the provision and explores the relevance of the provision to current debates on the enforcement of patent rights.
Article 8(3)(e) of Directive 2004/48 on the enforcement of intellectual property rights must be interpreted as precluding a national provision, such as that at issue in the main proceedings, which allows, in an unlimited and unconditional manner, a banking institution to invoke banking secrecy in order to refuse to provide, pursuant to Article 8(1)(c) of that directive, information concerning the name and address of an account holder.
The new Rules of Procedure of the General Court of the European Union entered into force on 1 July 2015, replacing the Rules of Procedure dating from 1991. This has led to substantial changes regarding disputes relating to intellectual property rights. The simplification of such proceedings and the reduction of their duration was one of the declared objectives of the reform (see Recitals 5 and 7 to the Rules of Procedure). The new Rules introduce the possibility of a ruling being delivered by a single judge. The rights of interveners are clarified; the Office for Harmonisation in the Internal Market (‘OHIM’) remains the defendant in inter-partes proceedings. The language regime has been simplified and the proceedings are concentrated by means of the abolition of the second exchange of pleadings. These changes are explained in some detail below.