Tag: Court Decisions

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Court confirms additional tools for trade mark owners to protect their brand where they operate a selective distribution system in the EU
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If the purple colour may not be subject to the effect of time, trade marks certainly are
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Descriptive Character and Geographical Origin: Bad News for the Souvenir Industry
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Federal Circuit holds that reissue application of hemodialysis shunt patent impermissibly recaptured surrendered subject matter
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U.S. patent case updates: IPR proceedings
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CJEU provides some clarity on when a design is ‘solely dictated by its technical function’
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Thunder Road toasts success in “Pacific Ale” case again (Stone & Wood’s appeal dismissed)
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Western Australian Court orders ex-customers and architect to pay damages to house designer for unauthorised use of plans
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EasyGroup finds proving the distinctiveness of its trade marks not so easy in the UK High Court
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Sixth Circuit rules knurling pattern on rifle scopes could be nonfunctional trade dress

Court confirms additional tools for trade mark owners to protect their brand where they operate a selective distribution system in the EU

A recent decision by the Court of Milan found that a trade mark owner who had consented to products being sold in the European Economic Area (EEA), but only through authorised retailers, could make a claim for trade mark infringement where the product was sold by an unauthorised retailer. This case highlights the effectiveness of implementing a selective distribution system for product manufacturers looking for new ways to protect their brand.

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If the purple colour may not be subject to the effect of time, trade marks certainly are

When it comes to non-traditional trade marks in the EU, the requirement of a clear and precise description can be quite complex to put into practice, as demonstrated in the recent UK Court of Appeal decision in Cadbury v The Comptroller General of Patents Designs and Trade Marks.

In 2013, in Cadbury v Nestle, the Court of Appeal held that the graphic representation and the description of the purple mark did not constitute a sign within section 1 of the Trade Marks Act but rather an attempt to register multiple signs with different permutations, presentations and appearances, which are neither graphically represented nor described with any precision.

As a result, Cadbury attempted to amend the (same) description of another of its colour marks, registered in 1998 and now at risk of invalidity as a consequence of the Cadbury v Nestle decision. However, both the Comptroller and the High Court denied Cadbury’s request to amend the mark description.

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Descriptive Character and Geographical Origin: Bad News for the Souvenir Industry

If you are one of those intellectual property lawyers that likes to tell brand stories while travelling, this post is for you.

Last September, the European Court of Justice (ECJ) dismissed the appeal of the German Souvenir Federation (Bundesverband Souvenir), which had filed an invalidity action based on the descriptive character of the term “Neuschwanstein” (the name of a beautiful castle located in southwest Bavaria, Germany). The appellant argued that the mark may be used in trade to designate the geographical origin of the goods and services concerned (handbags, clothing, soft drinks, jewelry, etc.).

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Federal Circuit holds that reissue application of hemodialysis shunt patent impermissibly recaptured surrendered subject matter

The Federal Circuit, in a nonprecedential decision, held that claims of a reissue application were properly rejected because they recaptured subject matter surrendered during the original prosecution of U.S. Patent No. 8,282,591 (“the ’591 patent”).[1]

The ’591 patent is directed to an arteriovenous shunt that connects a graft to an artery and passes returned blood through a “single lumen venous outflow catheter” into the right atrium of a patient’s heart.  This system reduces the risk of infection, clotting, and hyperplasia compared to systems that remove and return blood through a graft connected to a vein.[2]

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CJEU provides some clarity on when a design is ‘solely dictated by its technical function’

The Court of Justice of the European Union (CJEU) recently confirmed that the “no-aesthetic-consideration” test is the preferable approach when deciding whether a design is “solely dictated by its technical function”.  As a result, if aesthetic considerations are completely irrelevant the design should not be registered.  However, this does not mean that the legislation requires a design to have an aesthetical merit in order to be registered as a Community Design.

Last month, the CJEU published their long-waited decision on the request for a preliminary ruling raised by the Oberlandegericht Düsseldorf (the “German Court”) back in 2016.

The CJEU has provided some clarity on the interpretation of Article 8(1) of the Community Design Regulation (CDR) and how to determine if a product’s features are “solely dictated by its technical function”. The CJEU took the chance to stress, once again, that the determination “must be interpreted in a uniform manner in all Member States”, which strongly reiterates the EU’s objective for cohesive legal application.

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Thunder Road toasts success in “Pacific Ale” case again (Stone & Wood’s appeal dismissed)

On 9 March 2018, Byron Bay brewery Stone & Wood lost an appeal in the Australian Full Federal Court of Appeal to Brunswick based brewer Thunder Road with respect to their respective uses of the word PACIFIC for their rival beers.

Stone & Wood sells craft beer, including its best-selling beer “Pacific Ale”. Thunder Road launched its “Thunder Road Pacific Ale” in 2015, which it renamed “Thunder Road Pacific” later that year following letters of demand from Stone & Wood.

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Western Australian Court orders ex-customers and architect to pay damages to house designer for unauthorised use of plans

On 22 January 2018, Justice Martino of the Supreme Court of Western Australia delivered his judgment in the case of Milankov Designs & Project Management Pty Ltd v Di Latte & Anor, a copyright infringement case in respect of house plans.

Mr and Mrs Di Latte engaged the plaintiff, Milankov Designs & Project Management Pty Ltd (Milankov), to design and prepare drawings for a home to be built at the Di Lattes’ property.  The agreement provided that Milankov would prepare plans for stages of the design and build process – first, the development stage and, second, the construction drawing stage. The Di Lattes agreed to pay Milankov a percentage of the build cost, to be billed to the Di Lattes at various stages throughout the process.

After Milankov had prepared the stage one plans (including plans submitted to council for building licence approval) and the Di Lattes had paid several invoices issued by Milankov, the relationship between the parties broke down.  The engagement contract was terminated by the Di Lattes, and Milankov promptly wrote to the Di Lattes putting them on notice that Milankov owned copyright in the plans it had created and that the Di Lattes were not entitled to reproduce the plans without its permission, including by building the house at their property.

Nonetheless, the Di Lattes proceeded to engage an architect to create plans including construction drawings by copying Milankov’s plans, and then to construct a house in accordance with the design.

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EasyGroup finds proving the distinctiveness of its trade marks not so easy in the UK High Court

EasyGroup Ltd has suffered a blow in a High Court case against W3 Ltd, with the judge finding that its word mark, EASY, was invalid.

EasyGroup found itself facing a claim from W3 Ltd for groundless threats, in relation to letters of complaint it sent regarding the branding of one of W3’s businesses, EasyRoommate. As a counterclaim, EasyGroup alleged that W3’s use of the registered word mark and logo EASYROOMMATE, infringed its community registered trade mark, EASY, with W3 in turn stating that such a mark should be invalidated for being too descriptive under Article 7(1)(c) of the EU Trade Mark Regulation.

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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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