Court Decisions | IP Law Watch

A Win is a Win!

Oct 09 2019

B.E. Technology LLC v. Facebook, Inc., Appeal No. 18-2356 (Fed. Cir. Oct. 9, 2019) identifies what it means to win in a case. More particularly, the Federal Circuit explained how to determine whether a party is “the prevailing party.” B.E. Technology (“B.E.”) brought a patent infringement suit in district court against Facebook and the case was stayed pending inter partes review. The Patent Trial and Appeal Board ultimately held the claims of the patent in question to be unpatentable, which was confirmed on appeal.

The Claridge’s Affair: A win, but at what cost?

Aug 20 2019

Claridge’s Hotel Limited (Claridge’s) recently succeeded in challenging in IPEC the use of the CLARIDGE name by Claridge Candles Limited (Claridge Candles) – a small one-person business.

However, the success came at with a cost for the world renowned hotel as in doing so it lost one trade mark registration entirely and had a second mark reduced in scope due to a non-use counterclaim, highlighting one of the risks of instituting trade mark infringement action.

Bronze, Shape, Glow: A copyright tale destined for Broadway

Aug 15 2019

Stores like Aldi are increasingly popular with UK consumers as a result of offering “copycat” products of well-known brands at drastically lower prices. However, with this rise in popularity, brand owners and creatives are being increasingly frustrated by finding their products and ideas at the mercy of imitation products.

One such aggrieved party was well known makeup brand Charlotte Tilbury (Tilbury), who found their “Starburst” lid design and the “Powder Design” of their “Filmstar Bronze and Glow” set had provided the ‘inspiration’ for Aldi’s own “Broadway Shape and Glow” set. Tilbury filled a UK High Court claim for copyright infringement over the products shown below, with Aldi adamantly rejecting that any copyright had been infringed in their ‘inspired’ makeup set.

IPR of pre-AIA patent not an unconstitutional taking

Jul 31 2019

In a notable, albeit not surprising, U.S. Federal Circuit decision today, the panel in Celgene Corp. v. Peter confirmed that an inter partes review finding of unpatentability of a pre-AIA patent is not an unconstitutional taking. (slip op. 2018-1171 (July 30, 2019)).

Noting an opening in the recent Supreme Court decision in Oil States, the Federal Circuit deemed the circumstances exceptional as their basis for review of an issue not before the PTAB in the underlying proceeding. The panel reasoned that the proceeding being “curative” in nature, and the approximately forty year period of time in which PTAB proceedings have existed subjecting granted patents to potential cancellations for that duration weighted against any unconstitutionality.

Beauty and the Beast – A tale of (trade mark infringement) as old as time

Jul 14 2019

IPEC has ruled over the recent dispute between Beauty Bay (claimant) and Benefit Cosmetics (defendant) which arose after Benefit sold a Christmas gift set contained in a globe shaped box displaying the words “Beauty and the Bay”. The gift set was part of a 13 product collection celebrating 50 years since the Summer of Love and the company’s San Francisco heritage which included products like “Glam Francisco”, “I Left my Heart in Tan Francisco” and “B.Right by the Bay”.

“Three stripes and you’re out!” – The EU General Court rules Adidas’ three stripe trade mark invalid

Jun 20 2019

On 19 June 2019, the EU General decided a case about the validity of Adidas’ EU trade mark registration for three stripes. In the General Court’s decision (see here), the Court upheld the invalidity of the mark on the basis that: (i) the mark wasn’t used consistently and evidence of reversed/amended versions of the mark was inadmissible; and (ii) Adidas failed to show acquired distinctiveness across the EU, providing admissible evidence for only five EU Member States.

A figurative mark? A position mark? Or just a trade mark?

Jun 20 2019

The Court of Justice of the European Union (CJEU) recently confirmed that when assessing the actual use of a mark and the scope of protection afforded by a trade mark, the defining factor is the way in which it is perceived, and it is irrelevant that it is classified as a figurative or a position mark. In the CJEU’s decision in ECLI:EU:C:2019:471, the CJEU rejected German shoemaker Deichmann’s appeal to have Spanish competitor Munich SL’s trade mark revoked. The case revolves around the registered mark below, depicting a solid line cross on the side of a dotted outline of a shoe.

New versions of iconic designs – Can they be protected under EU design law?

Jun 19 2019

We all have memories associated with iconic (car) designs. It could be our grandparents’ car, the car we used to drive when we were younger or that cool model we could not afford as students. Car designs often become icons and reflect socio-economic status and, for this reason, the automotive industry often offers remakes of classic models, such as the new Fiat 500, the new Mini and, of course, the new Porsche 911.

What happens to the design protection for iconic cars when they form part of a new released model? These are the issues that were tested by Porsche in two recent cases decided by the EU General Court (decisions T-209/18 and T-210/18). The key question from an IP perspective was whether a design incorporating a remake has the requisite novelty and individual character and, thus, should be deemed valid.

Zara v Zara: The evolving world of “fashion”

May 13 2019

The recent decision in Inditex v EUIPO demonstrates the far reaching, evolving nature of fashion brands and the markets they can operate in and are expanding into.

In this case, Inditex (one of the world’s largest fashion retailers and owner of the fashion brand Zara) appealed the EUIPO’s decision to grant registration of the ‘Zara Tanzania Adventures’ mark in classes 39 (travel and tourism) and 43 (travel agency services). The appeal was based on the registration of its own ‘Zara’ mark in class 39. But how can a fashion brand object to a mark in the travel sector?

Can the mere registration of company name infringe? In the case of BMW, yes!

Mar 12 2019

On 12 February 2019, car manufacturer (and globally recognised car brand) BMW was granted summary judgment in its claims for passing-off and trade mark infringement against BMW Telecommunications Ltd and Benjamin Michael Whitehouse (the sole director of BMW Telecommunications Ltd). The respondents were a consultancy business providing services for railway signaling and telecommunications.

Tag: Court Decisions