IP Law Watch

Legal issues, law and regulations concerning the world of IP.

 

1
Sixth Circuit rules knurling pattern on rifle scopes could be nonfunctional trade dress
2
A successful year for trade marks and designs worldwide
3
Pushing the limits of Australia’s grace period
4
EU case recap: Sprinter vs Diesel SpA “D” Marks (Case T‑521/15)
5
EU case recap: A dispute over registration of the mark “Dricloud” (Massive Bionics, SL vs Apple Inc.)
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When recording also means communication to the public – interaction between copyright and cloud-based video recording services
7
Recycling or Remaking – Exhaustion of Patent Rights
8
EU: Report of the European Commission on the Enforcement of Intellectual Property Rights
9
EU: The obligation to translate in a motion for invalidation (Mediaexpert v EUIPO)
10
The descriptive character of the two-letter trademark “QD” (LG Electronics) – Ruling of the EU General Court in Case T-650/16

Sixth Circuit rules knurling pattern on rifle scopes could be nonfunctional trade dress

The Sixth Circuit Court of Appeals recently held that a reasonable jury could find a design pattern on rifle scopes is “nonfunctional” and thus potentially amenable to trade dress protection. Since 2002, Leapers, Inc. has been selling adjustable rifle scopes with knurling on the surface. Knurling is a common manufacturing technique that allows users to grip and fine-tune products more easily.

Leapers asserted “that it uses a unique knurling pattern that is distinctly ‘ornamental’ and by which customers recognize [Leapers] as the source of the product.” Leapers had executed an exclusive manufacturing contract with a Chinese company, but chose to end that relationship in 2011. The manufacturer agreed to cease using all technical specifications and designs, but later a factory manager from the manufacturer formed his own company and began manufacturing scopes allegedly using Leapers’ knurling design.

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Pushing the limits of Australia’s grace period

Australia’s “grace period” provisions allow a patent applicant to disclose or use their invention within 12 months before filing a complete patent application in Australia.  In an interesting interpretation of those provisions, the Australian Patent Office has found that the grace period applies to whole of contents citations published after a patent application has been filed.

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EU case recap: Sprinter vs Diesel SpA “D” Marks (Case T‑521/15)

On 20 June 2017, a ruling between Sprinter megacentros del deporte SL and Diesel SpA was made regarding similar trademarks indicating there would be a risk of consumers being misled in relation to two similar figurative marks in the form of the letter “D” in respect of identical goods. A consumer would have to examine the marks very closely, which is unlikely since the average consumer seldom has the opportunity to compare trademarks side by side.

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EU case recap: A dispute over registration of the mark “Dricloud” (Massive Bionics, SL vs Apple Inc.)

On 14 July 2017, the EU General Court issued a ruling in case T-223/16 between Massive Bionics SL and Apple Inc. and the EUIPO concerning the registration.  In the end, the General Court also found that the Board of Appeal had rightly found that the marks are similar. The matter was based on the following trademark:

On 9 April 2013, Massive Bionics SL submitted an application for the registration of the trademark in classes 35, 42 and 44, against which registration Apple Inc. filed an opposition based on:

the word mark “iCloud” and the following word-figurative and figurative marks:
– the international word mark “iCloud”, designated in Cyprus in classes 9, 35, 38, 42 and 45
– the following EU figurative trademarks registered in classes 9, 35, 38, 41 and 42:

The Opposition Division of the EUIPO dismissed the opposition in its entirety, and Apple Inc. appealed. The Board of Appeal amended the decision of the Opposition Division of the EUIPO within the scope of all services from class 35 and certain services from class 42.

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When recording also means communication to the public – interaction between copyright and cloud-based video recording services

On 29 November 2017, the Court of Justice of the EU (CJEU) released its judgment in response to a reference from an Italian court relating to cloud recording and computing services provided by VCAST Limited (VCAST). The services enabled VCAST’s customers to select live broadcasts of television programmes that VCAST then remotely, through its own systems, recorded and made available in a cloud data storage space. The Italian court asked whether VCAST could provide this service without the permission from the owner of the copyright over the programme, with a specific query as to the application of the private copying exception provided in Article 5(2)(b) of the Information Society Directive (2001/29/EC) (InfoSoc Directive).

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Recycling or Remaking – Exhaustion of Patent Rights

In the case Seiko Epson Corporation v Calidad Pty Ltd [2017] FCA 1403 (29 November 2017), Seiko sold various Epson inkjet printer cartridges for use with its printers.  Ninestar collected used cartridges in Malaysia, made modifications to facilitate their reuse, and refilled them with ink.  Calidad purchased the cartridges in Malaysia from Ninestar, then imported and sold them in Australia.

Seiko sued Calidad for infringement of two patents for printer cartridges.  Calidad defended the claim on the basis that an implied licence ran with the cartridges, alternatively Seiko’s patent rights had been exhausted when Seiko first put the cartridges on the market.

Ninestar modified some cartridges more than others in order to make them suitable for re-use.  Justice Burley found that the defence was available in some cases but not others.  It was a question of degree, but the Judge considered that in some cases Ninestar so materially altered the cartridges that “the licence implied by a sale without restriction of the original Epson cartridge does not apply”.

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EU: Report of the European Commission on the Enforcement of Intellectual Property Rights

Thanks to increased inspection efforts, there has been an uptick in the number of counterfeit goods stopped at the external borders of the European Union. In 2014, the figure was 35.5 million items of a value of EUR 617 million; in 2015, it was 40 million items of a value of EUR 642 million, while it was 41 million items of a value of EUR 672 million in 2016.

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EU: The obligation to translate in a motion for invalidation (Mediaexpert v EUIPO)

On 20 March 2013, the company Mediaexpert S.A. submitted the following word-figurative EU trademark to the EUIPO:

for the following services in classes 35, 39 and 41:

  • 35: Business management; business administration;
  • 39: Transport; packaging and storing of goods;
  • 41: Education; providing training; sports;

and the trademark was registered on 5 March 2014 under number 11674132 for all the services submitted.

On 22 May 2014, the company Mediaexpert sp. z o.o. applied for invalidation of the mark, citing an earlier protection right to a domestic, word-figurative trademark registered on 26 February 2010 under number R.226812 in the form:

for goods and services from classes 7, 9, 11, 12, 16, 20, 35, 39, 41 and 42.

Together with the motion for invalidation, the applicant attached a printout from the Polish Patent Office database and a list of goods and services in the Polish language, without a translation into English, which was the language of the proceeding for invalidation.

Fast forward to a ruling of 20 July 2017, the court dismissed the complaint by the applicant, that there had been a breach of the principle of the protection of justified expectations, and ordered the applicant to pay the costs of the proceedings.

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The descriptive character of the two-letter trademark “QD” (LG Electronics) – Ruling of the EU General Court in Case T-650/16

On 12 January 2015, the company LG Electronics Inc. submitted the mark “QD” to the EUIPO. The application was made for: “television receivers; mobile phone; smartphones; tablet computers; computers; sound recording devices; image recording devices; sound transmission devices; image transmission devices; sound playback devices; image reproduction devices; software; software for interactive television; communications software; computer software” belonging to class 9 of the Nice Classification.

In a decision of 19 August 2015, the application for registration of the mark was dismissed in relation to all goods, on the basis of Article 7 par. 1b) and c) of Regulation No. 207/2009 due to the absence of any distinctiveness of the sign and given that the mark consists solely of a descriptive element in relation to the goods for which it was submitted.

LG Electronics Inc. disagreed with that decision and lodged an appeal with the EUIPO on 9 October 2015. Subsequently, in a decision of 24 May 2016, the Board of Appeal of the EUIPO dismissed the appeal, ruling that the word mark “QD” is descriptive for the goods the submission referred to.

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