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

Court confirms additional tools for trade mark owners to protect their brand where they operate a selective distribution system in the EU

Feb 14 2019

A recent decision by the Court of Milan found that a trade mark owner who had consented to products being sold in the European Economic Area (EEA), but only through authorised retailers, could make a claim for trade mark infringement where the product was sold by an unauthorised retailer. This case highlights the effectiveness of implementing a selective distribution system for product manufacturers looking for new ways to protect their brand.

Act on financial support for audiovisual production published in the Journal of Laws

Jan 29 2019

An Act on financial support for audiovisual production was published in the Journal of Laws on 10 January 2019. The Polish Film Institute (PISF) will soon provide financial support for the production of audiovisual works created in Poland.

If the purple colour may not be subject to the effect of time, trade marks certainly are

Jan 23 2019

When it comes to non-traditional trade marks in the EU, the requirement of a clear and precise description can be quite complex to put into practice, as demonstrated in the recent UK Court of Appeal decision in Cadbury v The Comptroller General of Patents Designs and Trade Marks.

In 2013, in Cadbury v Nestle, the Court of Appeal held that the graphic representation and the description of the purple mark did not constitute a sign within section 1 of the Trade Marks Act but rather an attempt to register multiple signs with different permutations, presentations and appearances, which are neither graphically represented nor described with any precision.

As a result, Cadbury attempted to amend the (same) description of another of its colour marks, registered in 1998 and now at risk of invalidity as a consequence of the Cadbury v Nestle decision. However, both the Comptroller and the High Court denied Cadbury’s request to amend the mark description.

Supermac takes a bite out of McDonald’s as it loses the BIG MAC trade mark in the European Union

Jan 18 2019

Although it may be one of the most famous burgers in the world, on 15 January 2019, Supermac’s (Holdings) Ltd was successful in seeking the cancellation of McDonald’s International Property Company Ltd (McDonald’s) EU trade mark registration for BIG MAC for burgers or restaurants.

USPTO Clarifies Alice/Mayo Step 2A with New Patent Subject Matter Eligibility Guidance

Jan 09 2019

For the last several years, a major part of prosecuting software-related patents at the U.S. Patent and Trademark Office (“USPTO”) has been dealing with theUSPTO’s inconsistent interpretation of patent subject-matter eligibility issues under 35 U.S.C. § 101 arising from the Supreme Court’s decisions in Alice Corporation Proprietary Ltd. v. CLS Bank International[1]and Mayo Collaborative Services. v.Prometheus Labs.[2] However, new guidance from the USPTO concerning the Alice/Mayo test regarding patent subject-matter eligibility was released for public comment on January 7, 2019. This guidance attempts to provide more examination consistency for entities prosecuting software-related patents. We describe the primary features of the new guidance below and offer insights into what this means for companies pursuing such patents at the USPTO going forward.

Fashion Law – December 2018 Edition

Dec 13 2018

“People will stare. Make it worth their while.” – Harry Winston

Welcome to the latest edition of Fashion Law. In this edition we review the Australian Government’s measures to tackle modern slavery, a New Zealand trade mark opposition highlighting the importance of trade mark watching services, superannuation payments for full time, part time or casual workers, protecting brands in international markets, and the changes to parallel importation laws.

IP Exemptions to Competition Laws to be Removed: Restrictions in Licences to be Subject to Competition and Consumer Act 2010

Nov 27 2018

The Australian Federal Parliament has been debating the Treasury Laws Amendment (2018 Measures No. 5) Bill 2018 (Bill), which seeks to repeal section 51(3) of the Competition and Consumer Act 2010 (CCA).
The Bill is expected to pass during this session of Parliament (by 6 December 2018). Section 51(3) of the CCA presently provides an exemption from most of the competition law prohibitions for certain types of transactions involving intellectual property (IP). The current exemption covers conditions in licences or assignments of IP rights in patents, registered designs, copyright, trade marks and circuit layouts.

Once passed, commercial transactions involving IP rights will be subject to the same competition laws as all other transactions involving other types of property and assets. The repeal will apply retrospectively but IP owners will have six months to review existing licences and agreements. It is important for brand owners to consider their key licensing arrangements and the possible competitive implications of those arrangements.

K&L Gates releases 2017/18 Patents Year in Review – Second Edition

Nov 07 2018

2017/18 was an intriguing 12 months in the Australian patent landscape, with Courts being called upon to deliver decisions in relation to a number of issues that have not previously been judicially considered. The judgments delivered in this period have dealt with the patentability of methods claims deploying genetic information, patent term extensions for “Swiss-style” claims and whether applying to list a product on the Pharmaceutical Benefits Scheme constitutes an act of patent infringement.

A Modern Melody for the Music Industry: The Music Modernization Act is Now the Law of the Land

Oct 11 2018

On October 11, 2018, President Trump signed the Orrin G. Hatch-Bob Goodlatte Music Modernization Act (MMA) into law. The MMA is intended to “modernize copyright law” as applied to songwriters, music publishers, digital music providers, record labels, and others involved in the creation and distribution of music.

USPTO Announces Final Rule Changing Claim Construction Standard in Inter Partes Review, Post-Grant Review and Covered Business Method Patent Proceedings

Oct 11 2018

The United States Patent and Trademark Office is publishing a final rule revising the claim construction standard used by the Patent Trial and Appeal Board (the “Board”) in inter partes review, post-grant review, and covered business method patent review proceedings. The Board will no longer interpret claims under the broadest reasonable interpretation standard and will instead use the claim construction standard enunciated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc) and its progeny and followed by federal courts and the United States International Trade Commission (“ITC”). The changes to the claim construction standard will only apply to proceedings in which a petition is filed on or after the effective date of the final rule.