Archive: June 2016

1
Can Trademarks Constituted by the Shape of a Product be Protected in the Jewelry Sector?
2
Vademecum on the Assessment of the Likelihood of Confusion Between Trademarks
3
Design Confusion Post-Trunki?
4
Sometimes Borrowing Isn’t Stealing: De Minimis Sampling of Music Sound Recordings Isn’t Copyright Infringement, Say Two Key Courts in the United States and Germany
5
When the Designer Using his Patronymic Infringes Third Parties’ Rights
6
Italian Supreme Court on Secondary Meaning: When a Registered Generic Sign can Become a Trademark
7
When a picture can be considered deceptively similar to a word
8
Federal Circuit Holds That an Offer to Sell a Drug Product Was a Patent-Invalidating Offer for Sale under Pre-AIA § 102(b) Even Though the Offer Lacked “Safety and Liability Terms”
9
ANDA Filing May Subject a Pharmaceutical Company to Personal Jurisdiction in Patent Infringement Suits Anywhere in the U.S.

Can Trademarks Constituted by the Shape of a Product be Protected in the Jewelry Sector?

Cartier Wins Over the Request of Interim Relief by an Italian Company

Recently, an order of the court of Venice raised the matter of the shape of the product intended as a ground for refusal to registration and invalidity of a trademark.

The case is also interesting because it relates to the luxury sector and involved a leading firm in the jewelry sector, Cartier. An Italian jewelry producer, Fope S.r.l., sued Cartier alleging trademark counterfeiting and unfair competition for having marketed a jewelry collection reproducing a particular element of its icon product.  This iconic shape was previously registered as an Italian and European trademark. Cartier claimed the registered trademarks were invalid on the basis that they are composed by the shape giving a substantial value to the product and such circumstance represents a ground for refusal to registration by law.

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Vademecum on the Assessment of the Likelihood of Confusion Between Trademarks

Italian Supreme Court Outlines Criteria to Conduct a Proper Likelihood of Confusion Test

On 27 May 2016, the Italian Supreme Court released a judgement recalling with clarity and completeness most of the consolidated principles concerning the assessment of the likelihood of confusion between trademarks. This judgement is to become a good instrument for professionals when addressing to the topic at issue as well as a reference for future decisions of the Courts of merit.

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Design Confusion Post-Trunki?

The UK Intellectual Property Office Publishes Helpful Guidance on the Use of Representations When Filing Registered Design Applications.

Following the recent Supreme Court judgement in PMS International Limited v Magmatic Limited [2016] UKSC 12, otherwise known as the ‘Trunki case’, the UK Intellectual Property Office has published helpful guidance on the use of representations when filing Registered Design applications. The guidance is directly relevant to design applications filed in the UK but will also be useful for Community design applications filed at the EUIPO.

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Sometimes Borrowing Isn’t Stealing: De Minimis Sampling of Music Sound Recordings Isn’t Copyright Infringement, Say Two Key Courts in the United States and Germany

Setting music sampling up for a potential U.S. Supreme Court battle, the Ninth Circuit sided with Madonna Louise Veronica Ciccone and her producer (Shep Pettibone) in emphatically rejecting the Sixth Circuit’s bright-line rule that all unlicensed sampling constitutes copyright infringement.  Just days earlier, Germany’s highest court ruled against seminal electronic band Kraftwerk in a similar dispute. While the reasoning in both cases overlapped in some respects, the German court went further by expressly protecting the artistic freedom of samplers and rejecting the requirement — which the Ninth Circuit embraced — that the sample not be recognizable as coming from the plaintiff’s song.

Music sampling, which is common in some musical genres, is the use of snippets from a sound recording — often altered or enhanced in some manner — in a new sound recording.  In Ciccone, the Ninth Circuit affirmed the district court’s grant of summary judgment in favor of defendants Madonna, Pettibone and their associated record labels, music publishers and distributors on the grounds that — contrary to the Sixth Circuit rule set forth in Bridgeport — the de minimis exception to copyright infringement applies to sound recordings just as it does to other types of copyrighted works.  The samples in question were “horn hits” (punctuation-like snippets of horn section chords) that lasted, respectively, less than a second and less than a quarter-second, and the court found that the average listener was unlikely to recognize their source.  In the Kraftwerk case, which involved a two-second drum loop, Germany’s Federal Constitutional Court overturned a finding that electropop producer Moses Pelham had infringed, reasoning that the lower court had not sufficiently considered whether the impact of the sample on Kraftwerk might be negligible.

To read the full alert, please click here.

By Mark Wittow and Eliza Hall

When the Designer Using his Patronymic Infringes Third Parties’ Rights

The Italian Supreme Court Finally Stated on the Long-Standing Fiorucci Case

On 25 May 2016, the Italian Supreme Court released an interesting decision on the use of patronymic as a trademark, which might have significant impact for many fashion and design firms which identify themselves with the name of their founders.

Edwin Co. Ltd., Edwin International and F. Design Office, which had previously acquired from Mr. Elio Fiorucci the ownership and the right of use of several trademarks containing the name ” Fiorucci”, filed an action against the designer because he was using and applying for registration of the trademark “Love Therapy by Elio Fiorucci” to identify a wide range of goods.

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Italian Supreme Court on Secondary Meaning: When a Registered Generic Sign can Become a Trademark

On 19 April 2016, the Italian Supreme Court passed on secondary meaning, overruling two sets of proceedings of the courts of merits which declared the invalidity of a trademark.

The case arose some debate among professionals since the trademark declared invalid was registered by a very well-known bathroom tissue producer which invested substantial efforts for decades to ensure that its registered generic sign (“Rotoloni” which literally means big toilet roll) had acquired distinctiveness by way of secondary meaning.

As a result of its efforts, the defendant offered a public opinion survey evidencing that 51% of interviewed consumers were recognizing the generic sign at issue as distinctive of products coming from a specific company. Read More

When a picture can be considered deceptively similar to a word

The Trade Marks Office has taken a sword to the hopes of applicants wanting to register device trade marks which are perceived to match existing registered word marks in its decision on the SAMURAI WARRIOR (device) submitted for registration by Teraglow Pty Ltd.

IP Australia repeatedly rejected the SAMURAI WARRIOR mark at examination stage under s 44(1) of the Trade Marks Act 1995 (Cth), citing prior registered word mark SAMURAI, owned by Globeride Inc.

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Federal Circuit Holds That an Offer to Sell a Drug Product Was a Patent-Invalidating Offer for Sale under Pre-AIA § 102(b) Even Though the Offer Lacked “Safety and Liability Terms”

On May 13, 2016, the Federal Circuit determined that Merck’s crystalline calcium salt of tetrahydrofolic acid (“MTHF”) had been the subject of a commercial offer for sale, and held Merck’s MTHF claim in U.S. Patent No. 6,441,168 is invalid under the on-sale bar provision of pre-AIA § 102(b).  Specifically, the Federal Circuit held that Merck made an invalidating offer to sell MTHF when it sent a fax that included price, quantity, and delivery terms, and rejected the district court’s determination that additional, industry standard “safety and liability terms” were required for there to have been an “offer for sale.”

Please click here to view the alert.

Trevor M. Gates, Theodore J. Angelis, Peter Giunta

ANDA Filing May Subject a Pharmaceutical Company to Personal Jurisdiction in Patent Infringement Suits Anywhere in the U.S.

By: Trevor M. Gates, Theodore J. Angelis, and Peter Giunta

The Federal Circuit recently held that filing an abbreviated new drug application with the FDA for a generic drug product, and thus indicating an intention to sell that product in every state (including Delaware), subjected Mylan to specific personal jurisdiction in Delaware.

To read the alert, click here.

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