The UK Supreme Court (the country’s highest court of appeal) has refused permission to appeal in the long-running Assos v Asos trade mark dispute.
As reported in our post on 2 April 2015 here, the Court of Appeal held that online retailer Asos did not infringe Swiss clothing company, Assos’s, Community trade mark as use of the ASOS brand was defensible under the ‘own name’ defence in Community law.
Christian Louboutin (Louboutin) has again been successful in a long running opposition proceeding filed by Roland SE (Roland) against its red sole trade mark in the European Union.
Louboutin has faced legal challenges around the world in registering and enforcing its signature red sole on its shoes. In 2010, Louboutin filed a Community Trade Mark application for the below trade mark in class 25 for “high-heeled shoes (except orthopaedic footwear)” (Louboutin Mark):
(Louboutin Mark)
In November 2013, fashion designer Tory Burch sued Youngran Kim, and three companies controlled by Kim, for counterfeiting and trade mark infringement relating to the sale of jewellery. The jewellery featured a registered logo trade mark design owned by Tory Burch. While this was not the basis of Tory Burch’s legal claim, it is worth noting that, as well as featuring Tory Burch’s logo device, the defendants’ jewellery also closely resembled jewellery designs that had been released by Tory Burch, as seen below.
The Federal Circuit issued a ruling on July 21, 2015 in the Amgen Inc. et al. v. Sandoz Inc., Case No. 2015-1499, appeal after hearing oral arguments on June 3, 2015. See BPCIA: A “Choose Your Own Adventure” Statute? (describing the parties’ oral arguments before the Federal Circuit). Amgen Inc. (“Amgen”) appealed the Northern District of California’s decision holding that the Biologics Price Competition and Innovation Act’s (“BPCIA’s”) “patent dance” provisions are optional and that the 180-day notice provision does not require licensure. See Dancing Not Required: District Court Denies Amgen’s Bid for Preliminary Injunction, Finds BPCIA “Patent Dance” Optional.
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In March, the IP Court of Venice (Court) provided a unique ruling on copyright law.
The Court ruled on an issue concerning the application of Italian copyright laws to protect a legal work created by a lawyer works.
A lawyer (Plaintiff) sued an entity (Entity), which was organizing an exposition for the infringement of Plaintiff’s moral rights due to the non-authorized use of a document containing IP policy guidelines (Document) to be distributed among the exhibitors, which entirely reproduced a document drafted years ago by the Plaintiff for another entity.
After an unsuccessful attempt to obtain a preliminary injunction against Sandoz Inc.’s (“Sandoz”) Zarxio® in the District Court for the Northern District of California, Amgen Inc. (“Amgen”) has prevailed before the Federal Circuit in excluding the biosimilar from the market, at least temporarily. On May 5, 2015, the Federal Circuit granted Amgen’s motion for an injunction “preventing Sandoz [ ] from marketing, selling, offering for sale, or importing into the United States its FDA-approved ZARXIO® biosimilar product until this Court resolves the appeal.” Amgen Inc. et al. v. Sandoz Inc. et al., Appeal No. 2015-1499, Dkt. 105 (Fed. Cir. March 27, 2015).
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On February 2, 2015, (judgment no. 1861) the Italian Supreme Court ruled on a case involving two Italian companies active in the sector of furniture: Natuzzi S.p.A., owner of the Italian and European trademark ‘Divani & Divani’ (Trademark 1), and Divini & Divani S.r.l. (Divini & Divani), which started to use the trademark ‘Divini & Divani’ (Trademark 2).
Natuzzi claimed that the use of Trademark 2 was illegitimate, constituted an act of unfair competition as well as trademark infringement claiming the use generated confusion amongst customers. In particular, Natuzzi stated that, even if Trademark 1 was composed by two common words (literally in English ‘Sofas & Sofas’), it acquired specific distinctiveness. Consequently, Natuzzi sought to prevent Divini & Divani from using Trademark 2 as a company name and a trademark for its products. Divini & Divani counterclaimed that Natuzzi’s requests were groundless because there could not be any confusion between the trademarks and, in any case, Trademark 1 was weak and consequently, not worthy of protection.
Dallas Buyers Club LLC v iiNet Limited [2015] FCA 317
In November 2014, IP Law Watch reported on attempts by the rights holder of the film Dallas Buyers Club to compel Australian ISPs to disclose the identities of BitTorrent users who allegedly shared copies of the film.
On 7 April 2015, Justice Perram of the Federal Court of Australia ruled in favour of Dallas Buyers Club LLC and Voltage Pictures LLC, ordering six ISPs to disclose the details of 4,726 customers.
The judgment has been widely reported in the Australian media as a landmark decision and a game changer in the battle regarding online piracy. In fact, the kind of order granted by Justice Perram is far from revolutionary. For many years, civil procedure rules at both state and federal levels have enabled a party to seek orders requiring a third party to produce documents or give evidence as to the identity of a prospective respondent. There are decisions going back as far as the 1970s in which this kind of preliminary discovery order has been granted (see for example Exley v Wyong Shire Council (10 December 1976, Master Allen, unreported) and Stewart v Miller [1979] 2 NSWLR 128).
On January 7, 2015 the Court of Appeal of Milan (Court of Appeal) rendered a relevant judgment on a dispute involving Yahoo! Italia S.r.l and Yahoo! Inc. vs. Reti Televisive Italiane S.p.A. (RTI), one of Italy’s major broadcasters. RTI sued Yahoo! Italia S.r.l. and Yahoo! Inc. (Yahoo!) because of the reproduction of RTI’s copyrighted videos on the Yahoo! Video-sharing platform (Yahoo! Video Italia). RTI requested the removal of such videos and the implementation by Yahoo! of a filtering and blocking system in order to detect and prevent any infringement of copyright. The Court of Appeal concluded that the hosting provider is only exclusively responsible if it takes active part in the uploading activity or is aware of the unlawful content or use of the material and does not erase them.
In a long-anticipated decision, the Court of Appeal of England and Wales (Court of Appeal) on Wednesday held, by 2-1 majority, that use of the ASOS brand by the popular online clothing retailer was defensible under the ‘own name’ defence in Community trade mark law.
The decision, which reversed the findings of the judge at first instance, will be appealed to the Supreme Court (the highest court in England and Wales) by the Claimants, who own the successful ASSOS cycling clothing business and are the proprietors of a Community trade mark for the ASSOS word mark, which has been registered since 2005.
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