IP Law Watch – Page 35 – Legal issues, law and regulations concerning the world of IP

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

Nov 30 2017

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.

Machines with moral compasses – The ethics of ‘driverless’ cars

Nov 30 2017

Artificial intelligence (AI) is increasingly permeating our everyday lives from our voice command ‘smart speakers’ (such as Amazon Echo, Siri and Google Home) to the machine learning based recommendations when online shopping or watching Netflix. As AI becomes increasingly autonomous and accessible, leaders in technology are calling for increased scrutiny and regulatory oversight to ensure society is protected from AI’s implications. Regulatory oversight of AI will need to integrate ethical, moral and legal values in its design process as well as part of the algorithms these systems use. Tech giants are becoming increasingly aware of the need to incorporate ethical principles in the development of AI. Recently, Amazon, Facebook, McKinsey, Google’s DeepMind division, IBM, and Microsoft have founded a new organisation, the Partnership on Artificial Intelligence to Benefit People and Society, to establish best practices in ethical AI.

Australian Patent Office considers plausibility in a test for sufficiency

Nov 24 2017

The emergence of “plausibility” as a test for inventive step, sufficiency and industrial applicability represents a significant legal development in Europe in recent years. Now the concept of plausibility has reached Australian shores, with the Australian Patent Office applying it in a test for sufficiency.

Ferrari “Testarossa” – The great importance for trademark owners of making proper use of trademarks

Nov 19 2017

The Düsseldorf first instance district court decided that the trademark of Ferrari has to be cancelled (Decision as of 2 August 2017 – Case no. 2a O 166/16 – juris). However, the decision in not yet final.

Judgment of the Supreme Administrative Court in the case of Dior v PPO (Poland)

Nov 13 2017

On 4 August 2009, the company Interton sp. z o.o. (“Interton”) applied for the word-figurative trademark “A ADORATION” – goods from class 3 (cosmetics, including eye shadow, lash mascara, lipstick, fluids, makeup foundation, nail polish). The Polish Patent Office granted a protection to the mark (R-235773). Fast forward to 21 June 2017 (and after a number of oppositions and disagreements), the Supreme Administrative Court provided a ruling dismissing the PPO’s decision.

An unsuccessful registration of the trademark “I’m organic” (Europe)

Nov 05 2017

In 2016 Zbyszko Bojanowicz sp. z o.o. S.K.A. applied to the EUIPO to have the word-figurative mark “I’m organic” registered for goods and services from classes 16, 32 and 42 of the Nice Classification.

The EUIPO found that, in this case, conditions under Article 7 par. 1 b) and c) of Regulation No. 207/2009 of 26 February 2009 on the Community trademark existed for which the submission of a word-figurative trademark must be rejected.

The Louboutin red sole – opinion of the Advocate General (case c-163/16 – recap)

Nov 02 2017

On 22 June 2017, Advocate General Maciej Szpunar presented an opinion in case C-163/16 concerning a trademark registered for the benefit of the well-known fashion designer Christian Louboutin, in the form of the colour red applied to the sole of a shoe.

In 2010, Louboutin obtained a registration of a Benelux trademark submitted for goods from class 25. This covered shoes (except for orthopaedic shoes), while in 2013, the registration was restricted to high-heeled shoes.

International protection of trademarks in connection with brand expansion

Oct 25 2017

Local entrepreneurs are more and more often taking actions aimed at protecting their trademarks abroad.

The presence of products bearing local trademarks in foreign markets is becoming more and more common. The shaping of an international nature and increased recognition of trademarks usually starts from the development of a distribution network through obtaining new sales markets and concluding commercial contracts with foreign entities. While planning activity in other territories, it is advisable to ensure trademark protection in the selected jurisdictions. Trademark protection is based on the rule of territoriality. A global brand usually emerges when their trademarks are protected in a majority of countries worldwide. An applicant has three types of applications available:
i) domestic (before local trademark office),
ii) international (through the Madrid system) or
iii) regional (i.e., covering the entire European Union).

Jury awards profits for infringing sales in post-Samsung design patent case

Oct 05 2017

On September 29, a jury in California awarded Columbia Sportswear more than US$3.4 million for infringement of its design patent on heat-reflective technology for clothing and outdoor gear. Columbia accused Seirus Innovative Accessories of infringing its utility and design patents for its wavy lining material, which reflects body heat, but allows for breathability and moisture-wicking. This appears to be the first jury verdict on a design patent after the Supreme Court’s decision in Samsung v. Apple.

Petitioners bear the burden of proving invalidity of amended claims in IPR proceedings

Oct 05 2017

On October 4, 2017, the Federal Circuit held en banc that the proper interpretation of 35 U.S.C. 316(d) and (e) requires the Petitioner in an inter partes review (IPR) to prove all propositions of unpatentability, including for amended claims. Aqua Prods., Inc. v. Matal, No. 2015-1177 (Fed. Cir. Oct. 4, 2017). The en banc Court further determined that the PTAB must consider the entirety of the record when assessing the patentability of amended claims under 318(a), not merely the face of a motion to amend.

The Aqua case resulted in five opinions totaling 148 pages, each presenting views on judgment and underlying rationale, ultimately leading to a narrowly tailored holding. In the decision, the Federal Circuit made clear that the burden of persuasion of patentability does not rest with the Patent Owner; instead, it is left to the Petitioner to establish that any proposed amended claims are not patentable.