2017 – Page 7 – IP Law Watch

Threats Not Groundless Because Proceedings are Ultimately Not Issued

Apr 05 2017

In the UK, in a decision that will provide additional comfort to trade mark owners seeking to protect their intellectual property rights in the UK, the High Court held that a threat issued by a trade mark owner was not groundless simply because it was never followed up by proceedings being issued.

In Vanderbilt v Wallace & Ors [2017] EWCH 45 (IPEC), the High Court held that “the emphasis is on whether the acts actually infringe or, if done, would infringe, not on whether a proprietor actually sues for infringement. The phrase does not impose an obligation to commence legal proceedings for every act complained of.”

The case involved a long running trade mark dispute between the claimant and defendant, including several concurrent actions. In this instance the defendant had argued that section 21 of the Trade Marks Act 1994 established that where threats are made the trade mark proprietor has to bring a claim in relation to everything that is the subject of a threat, and that if they fail to do so then the threats can never be justified, even if there is infringement.

The Court disagreed. It stated that there are often valid commercial reasons why a trade mark owner may elect not to issue proceedings even if there is an obvious infringement. The Court will consider the validity of the claim on its own and whether the acts complained of constitute an infringement, regardless of whether proceedings have been issued following any threats to sue.

In addition to providing clarity, this outcome will please trade mark owners. Provided that they have established infringement they can send cease and desist letters without worrying about issuing legal proceedings that may not be commercially desirable.

By: Nóirín McFadden and Jamie Kershaw

“Vespa” scooters win twice against counterfeiting – Piaggio wins two lawsuits in a month

Apr 04 2017

In just a few weeks, Piaggio – the Italian company manufacturing iconic Vespa scooters – obtained a double victory before Italian courts both under the intellectual property and the copyright perspectives.

U.S. Supreme Court Rules that Cheerleader Uniform Elements May Be Eligible for Copyright Protection

Mar 23 2017

Yesterday, in a decision that will be welcomed by the fashion industry, the United States Supreme Court ruled that certain design elements of cheerleader uniforms may be eligible for copyright protection. Star Athletica, L.L.C. v. Varsity Brands, Inc. The Court held that, “a feature incorporated into the design of a useful article is eligible for copyright protection only if the feature (1) can be perceived as a two- or three-dimensional work of art separate from the useful article and (2) would qualify as a protectable pictorial, graphic, or sculptural work—either on its own or fixed in some other tangible medium of expression—if it were imagined separately from the useful article into which it is incorporated.” Justice Clarence Thomas authored the 6-2 majority opinion, addressing disagreement among lower courts as to the proper test for determining if certain design elements could ever qualify for copyright protection.

This case involved lines, chevrons, and colorful shapes on cheerleader uniforms. In finding that these elements could be covered by copyright, the appeals court below had identified nine different approaches that various courts and the Copyright Office had employed over the years to address “separability.” The appeals court fashioned its own test and found that the design features of Varsity Brands’ cheerleader uniform played no role in the overall function of the article as a cheerleading uniform, and the elements were separable from the utilitarian aspects of the uniform and thus eligible for copyright protection.

The Supreme Court affirmed. Applying § 101 of the Copyright Act, the Court found that the decorations on the uniforms at issue could be identified as having pictorial, graphic, or sculptural qualities, and the arrangement of the decorations could be placed in another medium (e.g. placed on a painter’s canvas) without replicating the uniforms themselves. Thus, the two-dimensional work of art fixed in the uniform fabric met both the separate-identification and independent-existence requirements of the statute. Importantly, the Court held only that the uniform elements are eligible for protection in concept; now the trial court must determine whether Varsity Brands’ specific lines, chevrons, and shapes are original enough to merit copyright protection.

Justice Ruth Bader Ginsburg concurred in the result, pointing out that the Court did not have to discuss the separability test at all because the designs at issue were not themselves useful articles, but rather standalone, two-dimensional pictorial and graphic works reproduced on a useful article. Justice Stephen Breyer, joined by Justice Anthony Kennedy, dissented, arguing that even under the majority’s test, the designs cannot be perceived as separate from the cheerleading uniform.

Thus, although the majority offers some clarity about the proper approach to separability, the dissent demonstrates that analysis may yield divergent results. The decision is likely to be embraced by fashion industry leaders and other garment design stakeholders for its recognition that certain garment design elements may be protectable under the Copyright Act. K&L Gates will continue to monitor litigation in this area and provide updates.

A link to the opinion can be found here: https://www.supremecourt.gov/opinions/16pdf/15-866_0971.pdf

By: David Byer, John Cotter, Shamus Hyland and Eric Lee

Importance of Renown and Proof Thereof

Feb 06 2017

In a ruling on 1 September 2016, the EU General Court invalidated a ruling of the European Union Intellectual Property Office (EUIPO) Board of Appeal in a case begun by a submission for the registration of a trademark showing an animal from the cat family leaping. The applicant was the Italian company Gemma Group Srl with its registered office in Cesarola Ausa. An objection was lodged by Puma SE with its registered office in Herzogenaurach, Germany.

The applicant submitted the following graphic mark for registration:

for machines for processing wood, aluminum, and PCV.

The plaintiff based its argumentation on two earlier international trademarks:

Those marks were registered for numerous types of goods in general use, including bags, clothing, accessories, footwear, toys, and sports equipment.

In addition, Puma SE raised the argument of the renown of its marks in all EU member states and for all goods covered by the registration. The objection was based mainly on the renown of those marks. In accordance with Article 8 paragraph 5 of Regulation No. 207/2009, a trademark similar to an earlier renowned mark is not registered if the unjustified use of that mark would result in undue benefits being reaped, or would harm the distinctiveness or renown of the earlier mark.

Use of another company (business name) in Internet advertising – ruling of the Court of Appeal in Bialystok (Poland)

Feb 04 2017

In a ruling on 3 February 2017, the Court of Appeal in Białystok (Poland) considered an appeal by a defendant in a case concerning the right to combat unfair competition (case file I ACa 740/16). The dispute arose over the use by the defendant of the business name of the plaintiff when marketing services on the Internet.

The plaintiff’s business is debt recovery. Its activities involve acquiring debts from third parties or acting on behalf of creditors. The plaintiff became aware that the effectiveness of its activities was declining and believed the cause of this lay in the unlawful, in its opinion, activities of the defendant. The defendant conducts business involving consultancy services for debtors of banks and other institutions.

The Italian Government Launches a Tender for Granting Allowances for the Promotion of Historical Trademarks

Jan 23 2017

2017 provides companies based and operating in Italy with a new opportunity for promoting their IP assets.

The Italian Government has launched a tender for granting allowances intended to support historical trademarks, for a total amount of 4,5 million Euro. The purpose of this new initiative is to promote and boost the historical and cultural entrepreneurial heritage of Italy by supporting specific national trademarks.

Allowances are granted for expenses related to manufacturing and commercial promotion of the historical trademark. This includes the purchase of goods and services for manufacturing purposes based on a plan for the promotion of the trademark involving goods and services falling under the scope of protection of the trademark – i.e. Nice classes for which the trademark is registered.

Further allowances could be also granted for activities related to the strengthening of the historical trademark, its extension at European and international level and to Nice classes other than those for which the trademark was previously registered, provided that their application comes along with another one for allowances related to the promotion of the trademark as described above.

In order to obtain the benefit of such allowances, companies of micro, small and medium dimensions complying with specific requirements must prove that their historical trademark is valid, registered before the Italian Patent and Trademark Office (UIBM) or the EUIPO with seniority claim for registration before the UIBM, not revoked, and that its application for registration was filed before the UIBM before January 1, 1967.

Companies can file their application from April 4, 2017 and until allowances stock lasts.

By: Alessandra Feller and Alessia Castelli

Italy ratifies UPC Agreement and Introduces Provisions Against Indirect Counterfeiting

Jan 19 2017

In December 2016 the Italian government ratified the Unified Patent Court Agreement (UPCA). By this ratification, Italian patent law now has a new rule on the prevention of indirect use of an invention (“indirect counterfeiting”), which is unprecedented in Italy.

The text of the new law amends the Italian Industrial Property Code by reference to Article 26 of the UPCA, by stating:

“A patent confers on its proprietor the right to prevent any third party not having the proprietor’s consent, from supplying or offering to supply, within the territory of the state in which that patent has effect, any person other than a party entitled to exploit the patented invention, with means, relating to an essential element of that invention, for putting it into effect therein, when the third party knows, or should have known by ordinary diligence, that those means are suitable and intended for putting that invention into effect.

The above paragraph does not apply when the means are common commercial products, except where the third party induces the person supplied to perform any of the acts prohibited under the qualification of direct use of the invention.”

This law – which was added to the pre-existing Article 66 of the Italian Industrial Property Code – makes reference to a list of persons and acts excluded from being able to exploit an invention. Such a list is contained in Article 68 of the Italian Industrial Property Code, which currently remains unmodified.

The implementation of this rule on “indirect counterfeiting” represents a step forward in legal protection for patents in Italy.

By: Alessandra Feller and Alessia Castelli

Netflix and Italian SIAE Reach Agreement for Protection of Music Catalogue on Online Platform

Jan 17 2017

In November 2016 the Italian collecting society SIAE announced that it closed a license agreement for the use of the musical and audiovisual compositions with Netflix, one of the main international operators for online video-on-demand services. The aim of the agreement is to grant equitable remuneration to authors of audiovisual works as well as remuneration to authors and publishers of soundtracks included in audiovisual works distributed by Netflix to its Italian subscribers.

The president of SIAE commented that the execution of this agreement represents an important achievement for the recognition of creative works in the sector of digital distribution. The economic value generated by the works protected by SIAE and their distribution by Netflix is a concrete contribution to the Italian audiovisual market, providing an important opportunity for product innovation. The agreement also should encourage professional creative activity by younger talent.

By: Alessandra Feller and Alessia Castelli

An Apple a Day Doesn’t Keep Litigation at Bay

Jan 11 2017

Victoria’s Supreme Court of Appeal has granted Apple and Pear Australia Limited’s (APAL) appeal in relation to their dispute with Pink Lady America LLC (PLA) over the refreshed “flowing heart” Pink Lady composite trade mark used in association with everyone’s favourite apple variety.[1],[2]

The dispute brought to light a number of crunchy commercial contract issues relating to agreements between APAL, PLA and the International Pink Lady Alliance (Alliance) that dealt with rights to particular trade marks registered in Chile (one of the key growing regions for the Cripps Pink and Rosy Glow apple varieties which are sold under the “Pink Lady” brand). PLA left the Alliance in June 2010.

2016-2017 Technical Review of Gene Technology Regulations 2001

Jan 10 2017

UPDATE: OGTR Releases Guidelines on Organisms Containing “Gene Drives”

The deadline for submissions on the discussion paper prepared by the Office of the Australian Gene Technology Regulator (OGTR) concerning its review of the Gene Technology Regulations closed on 16 December 2016, and submissions received by the Regulator have yet to be made publicly available.

However, the OGTR has now issued guidelines for Institutional Biosafety Committees (IBCs) and researchers on the regulatory requirements for organisms containing engineered ‘gene drives’ following the discussion paper consultation which revealed that some stakeholders were not aware organisms genetically modified to contain ‘gene drives’ are GMOs. The guidelines reflect the current requirements under the Gene Technology Act 2000 (Act) and will be amended to reflect any changes that are ultimately made.

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