IP Law Watch – Legal issues, law and regulations concerning the world of IP

Guidance on use of Artificial Intelligence-Based Tools in Practice Before the United States Patent and Trademark Office

Apr 18 2024

On 11 April 2024, the United States Patent and Trademark Office (USPTO) published guidance (referred to herein as the Guidance) on the use of artificial intelligence (AI) based tools, including generative AI, in practice. The USPTO recognizes the benefits of AI and while practitioners are not presently required to disclose whether AI is used as a drafting tool there are a variety of duties that arise with its use. The Guidance outlines the current USPTO policies and illustrates how these rules interact with the use of AI tools. Below, we will highlight different uses of AI tools and provide an overview of potential risks the USPTO discusses in the Guidance.

The UKIPO Updates its Policies to Tackle Ineffective Addresses for Service

Apr 17 2024

The UK Intellectual Property Office (UKIPO) has released an update this month in relation to the issue of trade mark applicants and owners providing a valid address for service. Particularly following Brexit there has been concerns about would-be trade mark owners filing applications with false or ineffective addresses for service and as a result the UKIPO is now taking a more proactive approach using their powers under Rule 11 of the Trade Mark Rules 2008.

Chanel Seeks Permanent Injunction Against WGACA

Apr 12 2024

The public legal dispute between luxury brand Chanel and luxury reseller What Goes Around Comes Around (WGACA) continues with Chanel seeking a permanent injunction that WGACA argues is too broad. As previously reported, a New York jury previously awarded Chanel a US$4 million verdict against WGACA for sales of counterfeit Chanel-branded products Chanel, Inc. v. What Goes Around Comes Around, LLC, et al., 1:18-cv-02253 (SDNY).

A Lidl Decision With Big Implications–Court Of Appeal Edition

Mar 26 2024

The Court of Appeal of England and Wales upheld the previous judgment (see here) that Tesco Clubcard logos infringed Lidl’s trade marks and constituted passing off. Although it found that Tesco did not infringe Lidl’s copyright, it is time for Tesco to rebrand its Clubcard logo.

HACKED! Regain Control of Your Social Media Identity

Mar 22 2024

Imagine receiving a call from a friend asking about a new money-making opportunity you just posted on your social media account. Only, you did not post it. This is a story that many social media users face as the number of hacked social media accounts continues to rise. In a letter dated March 5 2024, 41 state Attorney Generals wrote Meta Platforms Inc. highlighting a significant rise in the number of hacked accounts being reported to their offices, (noting increases from 2022 to 2023: 730% increase in Vermont; 330% increase in North Carolina; 256% increase in Illinois; and 270% increase in Pennsylvania), and urging Meta to take immediate action. In a world where social media is engrained as a daily part of our lives, losing control of your social media identity can cause stress and have an impact on your professional and personal brand. Here are some suggested steps you can take to prevent having your account taken over and address it should hacking occur.

Artistic Value May Prevent Protection of the Vespa Shape as a Trade Mark in Italy

Mar 19 2024

The Italian Supreme Court recently issued a decision addressing whether the Vespa shape, already protected under copyright, was precluded from registration as a 3D mark. According to the Court, a shape’s artistic value usually confers substantial value which prohibits trade mark registration under Italian law.

Full Court Parks Trial Judge’s Decision in Carpark Patent Fight

Mar 14 2024

In a recent update to a lengthy battle over car parking technology used by the City of Melbourne, SARB Management Group Pty Ltd (SARB) has scored a partial win over rival company Vehicle Monitoring Systems (VMS) on appeal in Full Court of the Federal Court of Australia.

New USPTO Guidelines on AI-Assisted Inventions Leave Many Questions Unanswered

Mar 04 2024

The US Patent and Trademark Office (USPTO) recently issued what it labeled as Inventorship Guidance for AI-Assisted Inventions [Docket No. PTO-P-2023-0043].¹ Despite its name, the document provides little in the way of certainty that one could not garner from reviewing recent precedent addressing the issue of artificial intelligence (AI) inventions. To begin with, the USPTO warns that its “guidance does not constitute substantive rulemaking and does not have the force and effect of law.”² Rather, “[t]he guidance sets out agency policy with respect to the USPTO’s interpretation of the inventorship requirements of the Patent Act in view of” controlling jurisprudence, but “[r]ejections will continue to be based on the substantive law, and it is those rejections that are appealable to the PTAB and the courts.”³ Adding to the confusion attendant to the actual purpose thereof, the guidelines admonish that, “[t]o the extent that earlier guidance from the USPTO, including certain sections of the Manual of Patent Examining Procedure. . . is inconsistent with the guidance set forth” in such guidelines, “USPTO personnel are to follow these guidelines,” and “[t]he MPEP will be updated in due course.”⁴

Are You Eligible to Hold a .au Domain Name?

Mar 04 2024

In Australia, domain names under the .au namespace are subject to stringent eligibility and allocation rules. Importantly, non-Australian commercial entities are only eligible for registration for an Australian domain if they have applied for or hold an Australian trade mark registration with an exact match to the relevant domain name.

Battle of the Bags: UNIQLO Sues SHEIN in Japan Over Viral Handbag Dupe

Feb 26 2024

In January 2024, UNIQLO CO., LTD. (UNIQLO) announced that it had filed a lawsuit before the Tokyo District Court against Roadget Business Pte. Ltd., Fashion Choice Pte. Ltd., and SHEIN Japan Co., Ltd. (collectively, SHEIN Parties). UNIQLO alleges that the SHEIN Parties have infringed Japan’s Unfair Competition Prevention Act by selling dupes of UNIQLO’s popular round mini shoulder bag, which went viral on TikTok last year due to its minimalistic, water-repellent exterior and ability to hold a surprisingly large volume of products for its size. UNIQLO is demanding that the SHEIN parties cease selling the dupe bags and pay damages incurred as a result of sale of the SHEIN Parties’ dupe products.