IP Law Watch

Legal issues, law and regulations concerning the world of IP.

 

1
Remicade® Update: Double Patenting Redoubles in Post-Gilead Biosimilar Case
2
Court of Milan Grants Copyright Protection to Après-ski Boots Moon Boots
3
“Blank” blocking orders on “alias” targeted web sites cannot be issued
4
Italian Government signs an agreement with Alibaba regarding “Made in Italy” agricultural products
5
Green with Envy: Colour Trade Marks in Australia
6
Humira® Update: Big Guns Take Aim at Top-Selling Biologic
7
IP Australia Announces New Official Fee Structure For Australian Trade Marks
8
Federal Circuit Confirms Post-Licensure Notice of Commercial Marketing Is Mandatory in Biosimilar Litigation
9
ECJ Confirms that Brand Owners can Seek Remedies for IP Infringement Against Owners and Operators of Physical Marketplaces Selling Counterfeit Goods as “Intermediaries”
10
New Balance Unsuccessfully Challenges Trade Mark Infringement Claim in China but Walks Away with a Significantly Reduced Liability

Remicade® Update: Double Patenting Redoubles in Post-Gilead Biosimilar Case

On August 17, 2016, in Janssen Biotech, Inc. v. Celltrion Healthcare Co., District of Massachusetts Judge Mark Wolf faced a double patenting fact pattern that had not been adjudicated in a district court case since the Federal Circuit decided Gilead Sciences Inc. v. Natco Pharma Ltd. [1]  Judge Wolf held U.S. Patent No. 6,284,471 (the “’471 patent”) invalid for obviousness-type double patenting over U.S. Patent No. 6,790,444 (the “’444 patent”) because the ’471 patent expired later due to the changes to patent terms under the Uruguay Round Agreements Act (“URAA”), even though both patents claim priority to the same application and the ’471 patent issued years before the ’444 patent. [2]

Please click here to view the full alert.

By: Margaux L. Nair, Trevor M. Gates, Peter Giunta, Theodore J. Angelis

Court of Milan Grants Copyright Protection to Après-ski Boots Moon Boots

According to the Italian court, an industrial design can enjoy copyright protection if it has an artistic value 

According to the Italian court, an industrial design can enjoy copyright protection if it has an artistic value

In July, the Court of Milan issued an interesting decision that granted copyright protection to the famous après-ski boots “Moon Boots” on the basis that they have recognized artistic value. In fact, the court recognized that Moon Boots have a particular aesthetic appeal capable of deeply changing the concept of après-ski boots, so that they have become an actual icon of Italian design.

In this case, the producer of the famous après-ski boots sued the producer and the distributor of a similar type of boots, called “Anouk Boots”. They alleged they constituted copyright infringement, infringement of the registered community design as well as unfair competition and asked for applicable remedies and compensation.

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“Blank” blocking orders on “alias” targeted web sites cannot be issued

According to the Court of Milan, such  injunctions would be contrary to local procedural rules as well as to Italian and European fundamental principles of law

In July, a famous Italian broadcaster asked the Court of Milan to block access to a specific portal, in order to stop its unlawful communication to the public of football matches of major Italian teams and of the UEFA Champions League to which the broadcaster holds the exclusive broadcasting rights.

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Italian Government signs an agreement with Alibaba regarding “Made in Italy” agricultural products

The Agreement will Properly Protect Italian Agribusiness Against Counterfeiting on the Chinese Marketplace

On 4 September, the Italian Government signed an agreement with the Chinese online platform Alibaba for the promotion and the protection of “Made in Italy” agricultural products.

Cooperation between the Italian government and Alibaba against counterfeiting of such products started last year when a huge quantity of fake parmesan and Prosecco wine appeared on the Chinese platform.

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Green with Envy: Colour Trade Marks in Australia

Frucor Beverages Limited (Frucor), the manufacturer of energy drink, V, has unsuccessfully tried to register a trade mark for the colour green. Last month, Coca-Cola Company (Coca-Cola), the manufacturer of Mother energy drinks, successfully opposed registration of the trade mark filed in 2012 in relation to energy drinks which consisted of the colour green (Pantone 376c), as shown below.

image 1

Coca-Cola opposed the trade mark application on the basis that Pantone 376c Green was not capable of distinguishing Frucor’s energy drinks and that the application was defective. While the opposition failed on the latter ground, Coca-Cola was successful in its argument that Pantone 376c Green was not capable of distinguishing V energy drinks from the energy drinks of other traders.

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Humira® Update: Big Guns Take Aim at Top-Selling Biologic

AbbVie Inc.’s Humira® (adalimumab) was the top selling drug in 2015.  Unsurprisingly, it is the focus of biosimilar applicants and patent challengers aiming to get into the market.  We provide this update on three events regarding Humira® that took place over the past two months: (1) Amgen Inc., which is pursuing a biosimilar version of Humira®, received a recommendation toward approval from the U.S. Food and Drug Administration (“FDA”); (2) AbbVie sued Amgen for patent infringement in the U.S. District Court for the District of Delaware, alleging that Amgen infringed several of its patents by seeking FDA approval of its biosimilar version of Humira®; and (3) the U.S. Patent and Trademark Office instituted inter partes review (“IPR”) of a Humira® patent at the request of Boehringer Ingelheim.

Please click here to view the alert.

By: Margaux L. Nair, Trevor M. Gates, Peter Giunta, Theodore J. Angelis

IP Australia Announces New Official Fee Structure For Australian Trade Marks

Australian Trade Mark Applications are Getting Cheaper

Following an extensive review of its fee structure, IP Australia has announced a revised official fee structure that is proposed to take effect from 12.00 am AEDT on 10 October 2016.

One of the key changes is that a registration fee will no longer be payable for Australian trade mark applications filed on, or after, 10 October 2016.  Under the existing regime, the usual filing fees for an Australian trade mark application were AUD200 per class, with AUD300 per class payable on registration.  Under the new regime, the usual filing fee will increase to AUD330 per class, but no further official fees will be payable.

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Federal Circuit Confirms Post-Licensure Notice of Commercial Marketing Is Mandatory in Biosimilar Litigation

On July 5, 2016, a unanimous Federal Circuit panel held that Apotex failed to give Amgen proper notice of commercial marketing required by the Biologics Price Competition and Innovation Act (“BPCIA” or “Biologics Act”)[1] and must wait 180 days after giving Amgen post-licensure notice before commercially marketing its FDA-licensed biosimilar product.[2]  In affirming the district court’s preliminary injunction against Apotex until the end of the 180-day period, the Federal Circuit followed its previous holding in Amgen v. Sandoz,[3] a split-panel decision.  The court reiterated the bright-line rule that a biosimilar applicant must provide notice of commercial marketing to a reference product sponsor after the FDA grants licensure of the biosimilar product and cannot launch its product until 180 days following that post-licensure notice.

Please click here to view the alert.

By: Margaux L. Nair, Trevor M. Gates, Peter Giunta, Kenneth C. Liao

ECJ Confirms that Brand Owners can Seek Remedies for IP Infringement Against Owners and Operators of Physical Marketplaces Selling Counterfeit Goods as “Intermediaries”

On 7 July 2016, the Court of Justice of the European Union (ECJ) announced its judgment in case C-494/15, Tommy Hilfiger Licensing LLC and Others v Delta Center a.s.

The case concerned claims for trade mark infringement against Delta Center, the tenant of the “Prague market halls” marketplace, which rented sales spaces to sellers of counterfeit goods. Tommy Hilfiger and other trade mark owners brought an action before the Czech courts seeking an injunction under Article 11 of Directive 2004/48/EC, which states that: “Member States shall also ensure that rightholders are in a position to apply for an injunction against intermediaries whose services are used by a third party to infringe an intellectual property right, without prejudice to Article 8(3) of Directive 2001/29/EC”.

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New Balance Unsuccessfully Challenges Trade Mark Infringement Claim in China but Walks Away with a Significantly Reduced Liability

In a recent appeal decision in China, the international sportswear brand New Balance has unsuccessfully challenged a finding of trade mark infringement with respect to a Chinese language equivalent for NEW BALANCE. However, New Balance was able to reduce the amount payable as a result of its infringement by 95%.

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