Archive: 2021

1
AI Can Invent – Australia is First to Recognise Non-Human Inventorship
2
Registrability of Shape Marks and Technical Function of Complex Products: The Pirelli Case
3
Australia’s Greatest Liability: Parodic Fair Use or Copyright Infringement?
4
“All Aboard” As Guerlain Departs From the Norm: The General Court of the EU Finds Distinctive Character in Boat Hull Shaped Lipstick Packaging
5
Finally – German Constitutional Court Clears the Way for the Unified Patent Court
6
Planet Plumbing Trade Marks Head Down the Drain
7
State AGs Join the Push to Restore FTC Powers to Obtain Monetary Relief
8
Unicolours v. H&M: Copyright Registration Validity
9
USPTO Proposes Rulemaking to Implement Provisions of the Trademark Modernization Act of 2020
10
Copyright Infringement? The Court is “Not Gonna Take It”

AI Can Invent – Australia is First to Recognise Non-Human Inventorship

The Australian Federal Court recently handed down its first-instance judgement in Thaler v Commissioner of Patents [2021] FCA 879 where the central issue considered was whether an artificial intelligence (AI) system could be an ‘inventor’ for the purposes of the Australian Patents Act 1990 (Act) and its corresponding regulations. The Court found that an AI system can be an inventor – where ‘inventor’ may be construed broadly to include a ‘person or thing that invents’1. This decision puts Australia in the spotlight as a favourable country to patent AI-created inventions – for now. Given the subject-matter and controversy generated by this decision, an appeal to the Full Federal Court is almost certain.

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Registrability of Shape Marks and Technical Function of Complex Products: The Pirelli Case

The CJEU has rendered its decision on the invalidity actions brought by Yokohama against the below shape mark filed by Pirelli. The mark represents a single groove of a tyre tread, covering “tyres, solid, semi-pneumatic and pneumatic tyres, rims and covers for vehicle wheels of all kinds, vehicle wheels of all kinds, inner tubes, wheel rims, parts, accessories and spare parts for vehicle wheels of all kinds“ in class 12.

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Australia’s Greatest Liability: Parodic Fair Use or Copyright Infringement?

Many companies and activists toe the line of trade mark and copyright infringement in the name of parody, satire and criticism. In Australia, the fair dealing copyright exception for the purpose of parody or satire had rarely been judicially considered. There have now been two recent cases considering the defence.

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“All Aboard” As Guerlain Departs From the Norm: The General Court of the EU Finds Distinctive Character in Boat Hull Shaped Lipstick Packaging

In what will be welcomed by innovative design brands, on 14 July 2021, the General Court of the EU handed down a decision annulling the EUIPO and Board of Appeal’s decisions that a mark filed by Guerlain lacked distinctive character. This decision emphasises that a distinctiveness assessment of a three-dimensional mark must be undertaken by reference to the specifics of common practice in the market for the relevant products.

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Finally – German Constitutional Court Clears the Way for the Unified Patent Court

Today the German Federal Constitutional Court rejected two applications for an interim injunction against the German implementation of the Unified Patent Court Agreement (UPCA). The outcome of the decisions is a clear yes to a European patent court system!

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Planet Plumbing Trade Marks Head Down the Drain

The importance of ensuring trade mark registrations accurately reflect the marks in usage has been brought into sharp relief by the recent decision of a Delegate of the Registrar of Trade Marks in Planet Plumbing SW Works Pty Ltd v Green Planet Maintenance Pty Ltd [2021] ATMO 32.

The Hearing Officer directed that registrations for two “Planet Plumbing” logos be removed from the Register after the owner, Planet Plumbing SW Works Pty Ltd (PP) failed to defend against a non-use application by Green Planet Plumbing Pty Ltd (GPP) under section 92 of the Trade Marks Act 1995 (Cth) (the Act).

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State AGs Join the Push to Restore FTC Powers to Obtain Monetary Relief

On June 28, 2021, the Attorneys General from New York and Colorado co-authored a letter to congressional leaders supporting the restoration of the Federal Trade Commission’s right to seek equitable relief, an affirmation urgently sought by the pending Consumer Protection and Recovery Act (H.R. 2668).  Twenty-eight attorneys general joined en masse to support the passage of H.R. 2668, which was introduced in April 2021 by Representative Tony Cárdenas (D-CA) to “to affirmatively confirm the authority of the Federal Trade Commission to seek permanent injunctions and other equitable relief for violations of any provision of law enforced by the Commission.”

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Unicolours v. H&M: Copyright Registration Validity

On June 1, 2021, the Supreme Court granted certiorari in the ongoing case of Unicolors v. H&M Hennes & Mauritz, L.P., No. 20-915.  With a nearly $1 million copyright verdict on the line, pattern manufacturer Unicolors, Inc.’s (“Unicolors”) fate is now at the Supreme Court to decide whether courts should refer copyright registration validity challenges to the Copyright Office where there is a known misrepresentation in the registration, but no evidence of intent to defraud.

 A copyright registration certificate is not valid if obtained by offering false information and that information, if known, would have resulted in the registration being denied. Under 17 U.S.C. §411(b)(2), where knowingly inaccurate information is included in an application for copyright registration, “the court shall request the Register of Copyrights to advise the court whether the inaccurate information if known, would have caused the Register of Copyrights to refuse the registration.” 

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USPTO Proposes Rulemaking to Implement Provisions of the Trademark Modernization Act of 2020

On 18 May 2021, the U.S. Patent and Trademark Office (USPTO) published a notice of proposed rulemaking concerning the Trademark Modernization Act of 2020 (TMA). The USPTO proposed to amend the rules to implement certain provisions of the TMA, as detailed below. The proposed new and amended rules:

  1. establish procedures and fees for ex parte expungement and reexamination proceedings
  2. provide nonuse grounds for cancellation before the Trademark Trial and Appeal Board (TTAB)
  3. establish flexible office action response periods, and
  4. amend the existing letter-of-protest rule to indicate that letter-of-protest determinations are final and nonreviewable.

Amendments are also proposed for the rules concerning the suspension of USPTO proceedings and rules governing attorney recognition in trademark matters. Finally, a new rule is proposed to address procedures regarding court orders cancelling or affecting registrations. The USPTO must receive written comments regarding these proposed rules on or before 19 July 2021.

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Copyright Infringement? The Court is “Not Gonna Take It”

A clear cut case of copyright infringement involving Twisted Sister’s hit song “We’re Not Gonna Take It” (WNGTI) has demonstrated the Court’s willingness to award significant financial penalties where intellectual property rights have been “flagrantly” infringed.

In Universal Music Publishing Pty Ltd v Palmer (No 2) [2021] FCA 434, Justice Katzmann of the Federal Court ordered Australian businessman and United Australia Party (UAP) founder Clive Palmer to pay AU$1.5 million in damages after finding that he had infringed copyright in WNGTI. Katzmann J notably awarded AU$1 million in additional damages, two-thirds of the total award, under section 115(4) of the Copyright Act 1968 (Cth) (Act).

The action was brought against Mr Palmer by joint applicants Universal Music Publishing Pty Ltd and Songs of Universal (collectively, Universal), which are the exclusive Australian licensee and copyright assignee respectively.

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