Archive: 2019

1
Zara v Zara: The evolving world of “fashion”
2
Proposed Changes to the Singapore Copyright Act – Enhancing Creators’ Rights and Users’ Access to Copyrighted Works
3
Iceland’s trade mark nothing but a puddle
4
St. Regis Mohawk Tribe petition for centiorari denied
5
Webpage specimens not automatically use in commerce
6
Fashion & Food Industry Update: More Companies Adopting Blockchain Solutions
7
Final Approval given to EU Copyright Directive
8
Can the mere registration of company name infringe? In the case of BMW, yes!
9
U.S. Supreme Court Decides Two Copyright Cases and Impacts Registration Strategy for Copyright Owners
10
US: Helpful Guidance From Judge Bryson Regarding Stays Pending IPR

Zara v Zara: The evolving world of “fashion”

The recent decision in Inditex v EUIPO demonstrates the far reaching, evolving nature of fashion brands and the markets they can operate in and are expanding into.

In this case, Inditex (one of the world’s largest fashion retailers and owner of the fashion brand Zara) appealed the EUIPO’s decision to grant registration of the ‘Zara Tanzania Adventures’ mark in classes 39 (travel and tourism) and 43 (travel agency services). The appeal was based on the registration of its own ‘Zara’ mark in class 39. But how can a fashion brand object to a mark in the travel sector?

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Proposed Changes to the Singapore Copyright Act – Enhancing Creators’ Rights and Users’ Access to Copyrighted Works

On 17 January 2019, the Singapore Ministry of Law and the Intellectual Property Office of Singapore issued the Singapore Copyright Review Report (the Report), which proposes a number of important amendments to the Singapore Copyright Act (the CA), following several rounds of public consultations in 2016 and 2017.

The objective of the proposed amendments is to ensure that the Singapore copyright regime keeps abreast of technological developments which have significantly changed how creative works are created, distributed and consumed. In this regard, the proposed amendments seek to enhance creators’ rights and users’ access to copyrighted works.

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Iceland’s trade mark nothing but a puddle

After a challenge by the Icelandic government, the global supermarket chain Iceland has had its European Union trade mark invalidated. This decision comes merely five years after finally obtaining registration after a lengthy (12 years) application process in which the mark was opposed by a number of Icelandic companies.

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Webpage specimens not automatically use in commerce

On April 10, 2019, the Federal Circuit issued a precedential opinion, at the request of the U.S. Patent and Trademark Office (USPTO), regarding submissions of webpages as specimens of use. In re Siny Corp is an important reminder to applicants and practitioners to carefully consider whether webpage specimens to be submitted to the USPTO actually comprise the offering of goods and/or services at the point of sale, or whether they are mere advertising.

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Fashion & Food Industry Update: More Companies Adopting Blockchain Solutions

While still an emerging technology, more companies are implementing blockchain technology to manage supply chains, track goods, prevent counterfeiting, increase security, and ensure traceability. In a recent survey of global leaders, by auditing and financial services company KPMG, 48% of respondents stated they believe it is highly likely that blockchain will change the way their companies do business over the next three years, and 41% stated their company intends to implement blockchain technology during the next three years.

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Final Approval given to EU Copyright Directive

On 27 March 2019, the European Parliament approved, with a vote of 348 to 274, the new Directive on Copyright in the Digital Single Market (the “DSM”) which will significantly tighten copyright on the internet.

While the new Directive has been hailed by record labels, artists and media companies as a move to fairly compensate artists, many tech firms like Google and Reddit, and internet activists argue that it will restrict and even destroy user-generated content, with Google stating that it would “harm Europe’s creative and digital industries.”

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Can the mere registration of company name infringe? In the case of BMW, yes!

On 12 February 2019, car manufacturer (and globally recognised car brand) BMW was granted summary judgment in its claims for passing-off and trade mark infringement against BMW Telecommunications Ltd and Benjamin Michael Whitehouse (the sole director of BMW Telecommunications Ltd). The respondents were a consultancy business providing services for railway signaling and telecommunications.

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U.S. Supreme Court Decides Two Copyright Cases and Impacts Registration Strategy for Copyright Owners

March 4, 2019, marked the first time in over 100 years that the Supreme Court of the United States issued two copyright decisions in the same day[1] – both unanimous and both strict interpretations of statutory language.  In the first of these two decisions, the Supreme Court unanimously held in Fourth Estate Public Benefit Corporation v. Wall-Street.com that copyright owners must obtain a registration from the U.S. Copyright Office prior to filing an infringement action.[2]  The Court, in an opinion authored by Justice Ruth Bader Ginsburg, resolved a long-standing circuit split on whether the “application approach” (merely filing a copyright application) or the “registration approach” (obtaining a copyright registration) is sufficient to file a copyright infringement suit under § 411(a) of the Copyright Act of 1976.  In the second decision, the Court in Rimini Street, Inc. v. Oracle USA, Inc. determined that “full costs” under § 505 of the Copyright Act did not authorize awarding litigation expenses beyond those specified in the general costs statute.

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US: Helpful Guidance From Judge Bryson Regarding Stays Pending IPR

Judge Bryson of the Federal Circuit, sitting by designation in the Eastern District of Texas, issued one of the clearest articulations to date in favor of granting a stay pending inter partes review.[1] Notably, in this case, claim construction had ended, discovery was nearly complete, and trial was set to begin in three months. The defendant, Samsung, had recently joined an instituted IPR covering six of the eleven asserted claims and moved to stay the district court proceeding.

Judge Bryson clearly articulated the three factors that district courts consider when analyzing whether or not to grant a stay:
1) whether the stay will unduly prejudice the non-moving party;
2) whether the proceedings had reached an advance stage, including the stage of discovery and whether a trial date is set; and
3) whether the stay will likely result in simplifying the case before the court.

After noting that the congressional intent of post-grant review before the patent office was to be a “quick and cost effective alternative[] to litigation” to provide a “faster, less costly alternative to civil litigation to challenge patents” and to be “an inexpensive substitute for district court litigation that allows key issues to be addressed by experts in the field” he proceeded to walk through the three factors.

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