Author - rachel.young

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Importance of Renown and Proof Thereof
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The Italian Government Launches a Tender for Granting Allowances for the Promotion of Historical Trademarks
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Italy ratifies UPC Agreement and Introduces Provisions Against Indirect Counterfeiting
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Netflix and Italian SIAE Reach Agreement for Protection of Music Catalogue on Online Platform
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An Apple a Day Doesn’t Keep Litigation at Bay
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2016-2017 Technical Review of Gene Technology Regulations 2001
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Software as a Service (Saas): Is it a Good or Service?
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New Developments in Amgen v. Apotex
9
To Perform a Technical Function or Not: This is Rubik’s Question.
10
The Australian Patent Office Once Again Allows Claims Directed to Nucleic Acids

Importance of Renown and Proof Thereof

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.

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

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

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

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

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.

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2016-2017 Technical Review of Gene Technology Regulations 2001

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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Software as a Service (Saas): Is it a Good or Service?

The United States Federal Circuit Court of Appeals (CAFC) recently vacated a Trademark Trial and Appeal Board (TTAB) ruling that had ordered the cancelation of JobDiva’s JOBDIVA service marks for personnel placement and recruitment services on the basis of abandonment. In re Jobdiva, Inc., No. 2015-1960, 2016 WL 7187434 (Fed. Cir. Dec. 12, 2016).

JobDiva’s software provides a database of employment applications for hiring managers to fill job openings. The software uses automated “harvesters” to find job candidates, reviews resumes, and helps hiring managers directly communicate with job candidates. The product is often delivered on a software-as-a-service or “SaaS” model. With the SaaS format, customers access JobDiva software remotely via the internet, rather than through software downloaded on a personal computer.

JobDiva initially petitioned to cancel the registration for JOBVITE service marks owned by Jobvite, Inc., alleging a likelihood of confusion. But Jobvite counterclaimed and petitioned to cancel JobDiva’s marks, arguing that JobDiva did not actually perform personnel placement and recruitment services, but merely used its marks on software offerings. A registration may be cancelled for abandonment if the mark has not been used for the goods or services specified in the registration. The TTAB agreed with Jobvite, appearing to apply a bright-line rule that required JobDiva to show “it performed the ‘personnel placement and recruitment’ services in a way other than having its software perform those services.”

A three-person panel of the CAFC disagreed. It acknowledged that “the line between services and products sometimes blurs.” But “[e]ven though a service may be performed by a company’s software, the company may well be rendering a service.” To determine whether a mark is used in connection with services described in a registration, a key consideration is user perception. Thus, the ultimate question is whether purchasers would perceive JobDiva’s marks to identify personnel placement and recruitment services, even if the software performs each step of the service. Because consumer perception is a fact-based inquiry determined on a case-by-case basis, and the TTAB applied the wrong legal standard, the opinion below was vacated and remanded. This CAFC opinion rejects a rigid test and states that “careful analysis is required to determine whether web-based offerings, like those JobDiva provides, are products or services….” Rather, a more nuanced assessment, based on consumer perception must be applied. U.S. trademark practitioners should consider this approach in crafting appropriate goods and services and formulating enforcement strategies.

By: David Byer and Shamus Hyland

The CAFC opinion can be found here.

New Developments in Amgen v. Apotex

Apotex petitioned the Supreme Court for a writ of certiorari on September 9, 2016, seeking review of the following two issues: (1) “[w]hether the Federal Circuit erred in holding that biosimilar applicants that make all disclosures necessary under the BPCIA for the resolution of patent disputes . . . must also provide the reference product sponsor with a notice of commercial marketing under 42 U.S.C. § 262(l)(8)(A)”; and (2) “[w]hether the Federal Circuit improperly extended the statutory 12-year exclusivity period to [12.5] years by holding that a biosimilar applicant cannot give effective notice of commercial marketing . . . until it receives [FDA approval].” The Supreme Court denied the petition on December 12, 2016, without comment.

However, the questions Apotex presented are narrower than the cross-petitions taken from Amgen Inc. v. Sandoz Inc., 794 F.3d 1347 (Fed. Cir. 2015), which remain pending before the Supreme Court. The Court sought the opinion of the Acting Solicitor General concerning the Sandoz petitions, and in an amicus brief filed on December 7, 2016, the Acting Solicitor concluded that the Court should hear the case. If the Court agrees, it may address Apotex’s questions in the course of deciding Sandoz. Meanwhile, biosimilar applicants and other interested parties should continue to watch the Sandoz petitions and take any decisions into account in developing strategies.

For further information, please see the update to a recently published alert on this case.

By: Margaux L. Nair, Kenneth C. Liao, Trevor M. Gates, Peter Giunta

To Perform a Technical Function or Not: This is Rubik’s Question.

After the CJEU decision in case C-30/15 P, fans of three-dimensional trade marks will be wondering if the opportunity to register them is as straightforward as it appears from the recent reform of the Regulation No. 207/2009.

For 10 years, Simba Toys and Seven Towns have been involved in the Rubik’s cube saga, which began in 1999, when the three-dimensional sign reproducing the popular Hungarian toy was registered as a Community trade mark.

The application for a declaration of invalidity filed in 2006 by Simba Toys was based mainly on the infringement of Article 7(1)(e)(ii) of Regulation No 40/94, which prevents a trade mark consisting exclusively of the shape of goods which is necessary to obtain a technical result to be registered.

The EUIPO Cancellation Division as well as the Board of Appeal and the General Court rejected the arguments of the German firm on the grounds that the essential characteristics of the sign at issue are a cube and a grid structure on each surface of the cube and that they do not perform any technical function.

Hence, the appellant’s argument was rejected because the rotating capability of the lattices did not result from the shape presented, but from the invisible internal mechanism which was not part of the graphical representation filed in the trade mark application.

As often happens, the above decisions have been overturned by the CJEU. In particular, the approach of the lower courts was found to be too narrow as they did not take into account the additional elements relating to the function of the actual goods in question.

Lastly, the court held that not taking into account the rotating capability of the cube would extend the trade mark protection to any other kind of puzzle with a similar shape. On the other hand, the technical function behind the cube falls within the scope of Article 7(1)(e)(ii), which precludes the granting of a permanent monopoly on technical solutions. Therefore, in this case it would be more appropriate to consider a patent protection as it has a limited life unlike trademarks.

In conclusion, while the Rubik brand will continue to ensure its exclusivity through other trademarks, copyright, passing off and unfair competition protection, this case made it clear that an effective access to the registration of unconventional trade marks remains as uncertain as the interpretation of Article 7(1)(e)(ii).

By: Serena Totino and Michał Ziółkowski

The Australian Patent Office Once Again Allows Claims Directed to Nucleic Acids

In Commonwealth Scientific and Industrial Research Organisation v BASF Plant Sciences GmbH [2016] APO 83, the Australian Patent Office has once again confirmed that nucleic acids are patentable in Australia.[1]

The opposed application relates to methods of producing polyunsaturated fatty acids in the seeds of transgenic plants. The application included claims directed to a recombinant nucleic acid molecule comprising nucleic acid sequences coding for a polypeptide with Δ6-desaturase activity, a polypeptide with Δ5-desaturase activity, a polypeptide with Δ6-elongase activity and a polypeptide with Δ5-elongase activity, as well as one or more copies of a promoter and a terminator.

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