Archive:2024

1
Artistic Value May Prevent Protection of the Vespa Shape as a Trade Mark in Italy
2
Full Court Parks Trial Judge’s Decision in Carpark Patent Fight
3
New USPTO Guidelines on AI-Assisted Inventions Leave Many Questions Unanswered
4
Are You Eligible to Hold a .au Domain Name?
5
Battle of the Bags: UNIQLO Sues SHEIN in Japan Over Viral Handbag Dupe
6
The UK Fails to Agree to a Voluntary Code of Practice for Copyright and Gen AI
7
Victory for Chanel in Luxury Reseller Trial
8
The Cloudy World of Look-a-Like Products – Aldi Successfully Defends Allegations of Trade Mark Infringement
9
Jury Clears Los Angeles Tattoo Artist of All Copyright Infringement Claims In One of the First Significant Post-Warhol Transformative Use Cases
10
PayPal Inc. [2023] APO 54: PayPal Machine Stalls in the Face of Intangible Resistance

Artistic Value May Prevent Protection of the Vespa Shape as a Trade Mark in Italy

The Italian Supreme Court recently issued a decision addressing whether the Vespa shape, already protected under copyright, was precluded from registration as a 3D mark. According to the Court, a shape’s artistic value usually confers substantial value which prohibits trade mark registration under Italian law.

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Full Court Parks Trial Judge’s Decision in Carpark Patent Fight

In a recent update to a lengthy battle over car parking technology used by the City of Melbourne, SARB Management Group Pty Ltd (SARB) has scored a partial win over rival company Vehicle Monitoring Systems (VMS) on appeal in Full Court of the Federal Court of Australia. 

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New USPTO Guidelines on AI-Assisted Inventions Leave Many Questions Unanswered

The US Patent and Trademark Office (USPTO) recently issued what it labeled as Inventorship Guidance for AI-Assisted Inventions [Docket No. PTO-P-2023-0043].1 Despite its name, the document provides little in the way of certainty that one could not garner from reviewing recent precedent addressing the issue of artificial intelligence (AI) inventions. To begin with, the USPTO warns that its “guidance does not constitute substantive rulemaking and does not have the force and effect of law.”2 Rather, “[t]he guidance sets out agency policy with respect to the USPTO’s interpretation of the inventorship requirements of the Patent Act in view of” controlling jurisprudence, but “[r]ejections will continue to be based on the substantive law, and it is those rejections that are appealable to the PTAB and the courts.”3 Adding to the confusion attendant to the actual purpose thereof, the guidelines admonish that, “[t]o the extent that earlier guidance from the USPTO, including certain sections of the Manual of Patent Examining Procedure. . . is inconsistent with the guidance set forth” in such guidelines, “USPTO personnel are to follow these guidelines,” and “[t]he MPEP will be updated in due course.”4

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Are You Eligible to Hold a .au Domain Name?

In Australia, domain names under the .au namespace are subject to stringent eligibility and allocation rules. Importantly, non-Australian commercial entities are only eligible for registration for an Australian domain if they have applied for or hold an Australian trade mark registration with an exact match to the relevant domain name.

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Battle of the Bags: UNIQLO Sues SHEIN in Japan Over Viral Handbag Dupe

In January 2024, UNIQLO CO., LTD. (UNIQLO) announced that it had filed a lawsuit before the Tokyo District Court against Roadget Business Pte. Ltd., Fashion Choice Pte. Ltd., and SHEIN Japan Co., Ltd. (collectively, SHEIN Parties). UNIQLO alleges that the SHEIN Parties have infringed Japan’s Unfair Competition Prevention Act by selling dupes of UNIQLO’s popular round mini shoulder bag, which went viral on TikTok last year due to its minimalistic, water-repellent exterior and ability to hold a surprisingly large volume of products for its size. UNIQLO is demanding that the SHEIN parties cease selling the dupe bags and pay damages incurred as a result of sale of the SHEIN Parties’ dupe products.

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The UK Fails to Agree to a Voluntary Code of Practice for Copyright and Gen AI

An initiative to create a voluntary code of practice on copyright and Generative AI (“Gen AI”) has failed to reach an agreement. The UK Intellectual Property Office (UKIPO), who led the conversations that started mid-2023, has not been able to reach consensus within the working group in relation to the use of copyright protected works to train Gen AI models. The announcement is a disappointment to many including the creative industry, who were awaiting clarification on their position in protecting their works and retrieving compensation, and technology industry who were seeking clarity how future technologies can be developed.

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Victory for Chanel in Luxury Reseller Trial

A New York federal jury sided in favor of Chanel on all of it claims against luxury reseller What Goes Around Comes Around (WGACA), awarding Chanel US$4 million in statutory damages for sales of counterfeit Chanel-branded handbags. In Chanel, Inc. v. What Goes Around Comes Around, LLC, et al., 1:18-cv-02253 (SDNY), WGACA was found liable for trademark infringement, false association and unfair competition, and false advertising claims. The jury further found that WGACA acted willfully, with reckless disregard, or with willful blindness. 

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The Cloudy World of Look-a-Like Products – Aldi Successfully Defends Allegations of Trade Mark Infringement

Recently the High Court of Justice of England and Wales handed down its judgment in a trade mark infringement proceeding between Aldi v Thatcher’s that had been being watched by many.

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Jury Clears Los Angeles Tattoo Artist of All Copyright Infringement Claims In One of the First Significant Post-Warhol Transformative Use Cases

On 26 January2024, a federal jury in Los Angeles handed down its verdict in one of the first copyright infringement cases to grapple with fair use after the Supreme Court’s 2023 Warhol decision.1 The trial concerned a dispute over a tattoo inked by Katherine Von Drachenberg (known as Kat Von D), and related social media posts. In the Kat Von D case, plaintiff Jeffrey Sedlik argued the tattoo and posts infringed upon his copyright in a photograph of jazz musician Miles Davis that was indisputably utilized to create the tattoo and featured in one of the posts. Emphasizing the case-specific nature of fair use, the Los Angeles jury handed down a complete defense verdict.

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PayPal Inc. [2023] APO 54: PayPal Machine Stalls in the Face of Intangible Resistance

The recent refusal of a patent application by PayPal Inc. at the Australian Patent Office sheds light on the challenges surrounding the patentability of AI and machine learning systems (PayPal Inc. [2023] APO 54). The rejected application, which proposed a system for generating more accurate recommendations using AI machine learning, faced scrutiny on the grounds that, while the combination of machine learning models was innovative, it did not offer a substantial technical contribution beyond standard computer usage.

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