Archive: 2019

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If the purple colour may not be subject to the effect of time, trade marks certainly are
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Supermac takes a bite out of McDonald’s as it loses the BIG MAC trade mark in the European Union
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USPTO Clarifies Alice/Mayo Step 2A with New Patent Subject Matter Eligibility Guidance

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

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.

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

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.

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

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.

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