Litigation – IP Law Watch

In Starch Contrast: Australian Patent Office Makes key Finding on use of Trade Marks in Patent Specifications

Sep 26 2023

In the field of intellectual property, the interplay between trade marks and patent claims is very rarely discussed, given the distinct scope of protection provided by each. In Australia and New Zealand, patent examiners tend to raise an immediate clarity objection when a trade mark finds its way into a claim. This concern arises from the fact that a trade mark is an identifier of origin, and products bearing them can undergo variations across jurisdictions and time frames. This makes the intended scope of the claim unclear in many situations. Consequently, Australian and New Zealand examiners commonly raise objections based on clarity when trade marks feature in patent claims during the examination process.

Just Because the Court can, Doesn’t Mean it will: The Difficulty in Seeking to Avoid an Injunction Following a Finding of Copyright Infringement in the UK

Jul 07 2023

As reported previously in our blog post here, earlier this year the High Court of England and Wales found in Lidl’s favour regarding allegations of trade mark infringement, passing off and copyright infringement by Tesco. However, Tesco has suffered a further loss following a supplementary hearing focused on what the most appropriate form of relief was for copyright infringement (although it was agreed by the parties that Lidl was entitled to an injunction in light of findings of trade mark infringement and passing off).

Honey, I Lost the Trade Mark: MANUKA HONEY Declared not Exclusive to New Zealand

Jun 01 2023

An attempt to trade mark the term MANUKA HONEY in New Zealand has come to a sticky end. Assistant Commissioner of Trade Marks Natasha Alley found that the term MANUKA HONEY was descriptive of the goods it claimed and MHAS had “fallen short of establishing the necessary distinctiveness, both inherent and acquired”.¹

The One That Got Away: Popstar Katy Perry Outperformed by Australian Dark Horse in Longstanding David and Goliath Trade Mark Dispute in Australia

May 08 2023

In the recent Australian Federal Court decision of Taylor v Killer Queen, LLC (No 5) [2023] FCA 364, Justice Markovic aptly explained “a tale of two women, two teenage dreams and one name” and held that international popstar Katy Perry infringed Australian clothing designer Katie Taylor’s registered trade mark for KATIE PERRY by selling clothing merchandise in Australia branded with her Katy Perry stage name.

A Lidl Decision with big Implications – UK High Court Finds that Tesco’s Clubcard Logo Infringes Lidl’s logo

May 05 2023

In a recent decision, the High Court of England and Wales has found that Tesco’s use of the yellow and blue Tesco Clubcard logos (reproduced below) infringed Lidl’s trade marks (see the relevant Lidl marks below) and also gave rise to copyright infringement and passing off.

Proposed PTAB Rules up for Comment

Apr 26 2023

The USPTO on April 21, 2023 proposed a variety of changes to the pre-institution requirements and briefing process for post-grant proceedings, including both IPRs and PGRs. Among the proposed changes are broad amendments to the discretionary denial frameworks, which are intended to provide clarity, curb abusive litigation tactics, and generally align procedure with the objectives of the AIA. The deadline for submitting comments and suggestions related to these rules is June 20, 2023. The proposed rules provide valuable insight into the future of post-grant proceedings before the PTAB. An overview of these changes is outlined below, and additional details follow.

Parallel Proceedings – The USPTO is considering changes to the Fintiv framework, including the elimination of current factors 1, 2, and 5, a requirement for a Sotera stipulation, and a grace period that would exempt petitions filed within 6 months of service of the complaint from being discretionarily denied under this rule.
325(d) Framework – The USPTO is considering a rule that would reign in the application of discretionary denial under 325(d) by limiting its application to art or arguments that had been “previously addressed,” or actually evaluated by the patent office as articulated on the record, such as in a rejection, notice of allowance, or examiner interview. Mere citation in an IDS will no longer meet the standard. Prior art will only be considered “substantially the same” where it contains the same teaching relied upon in the petition, and that teaching was addressed by the patent office.
Serial Petitions – The USPTO is considering replacing the existing framework for serial petitions with a rule that will deny any serial or follow-on IPR petition filed by: (1) the same petitioner; (2) a real party in interest to that petitioner; (3) a party with a significant relationship to that petitioner; or (4) a party who previously joined an instituted IPR filed by that petitioner. There will be an exception where the earlier petition was not resolved on the merits of the petition, or where exceptional circumstances are shown.
Prior Adjudications – The USPTO is contemplating stricter requirements where a prior final adjudication by a district court or in a post-grant proceeding upheld the validity of claims that substantially overlap the challenged claims, essentially requiring the petitioner (1) either has standing to challenge the validity of the patent in district court or intends to pursue commercialization, (2) was not a real party in interest to the party who unsuccessfully challenged the claims, and (3) meets the heightened burden of compelling merits.
Micro and Small Entities – The USPTO is mulling changes that would protect under-resourced entities by denying institution where the patent owner (1) claimed micro or small entity status at the time of filing; (2) did not exceed a gross income cap in the calendar year preceding filing of the petition; and (3) was commercializing a product covered by the challenged claim at the time of filing.
For-Profit Entities – The USPTO is contemplating a rule that would deny any IPR or PGR petition by a for-profit entity that has not been sued or threatened with infringement of the challenged patent, is not otherwise practicing in the field of the challenged patent, and is not in “substantial relationship” with an entity to which the rule would not apply.

The USPTO has also proposed changes to the disclosure requirements, what constitutes compelling merits, and termination by settlement filing requirements. An in-depth discussion of each suggested change is included below.

Nothing more than Empty Words: The Difficulty with Registering Slogans as Trade Marks in the EU

Apr 25 2023

Companies continue to face difficulties in achieving EU trade mark protection for their slogans. In separate recent decisions of the EU General Court, two trade mark applications relating to advertising slogans were rejected on the grounds that the marks lacked the ‘distinctive character’ required to be registerable under Article 7(1)(b) of Regulation 2017/1001. These two decisions join a long list of case law rejecting similar applications.

Technical Effect Embodied in Technical Teaching

Mar 28 2023

European Patent Office: Enlarged Board of Appeal decision G2/21

The Enlarged Board of Appeal EBoA is the highest judicial authority under the European Patent Convention. It handles patent examination for about 37 member states including the EU. The EBoA has recently published its decision G2/21 dealing with the principle of free evaluation of evidence in the context of inventive step. This decision is relevant for patents in the pharma, biotech and life science field.

CJEU Paves the way for Red-Soled Heels to Widen the Scope of Liability of E-Commerce Platforms

Mar 14 2023

A recent preliminary ruling by the Court of Justice of the European Union (“CJEU”) in the joint cases (C-148/21 and C-184/21) between a luxury fashion brand known for its signature red-soled heels Christian Louboutin and an e-commerce giant Amazon might mark a start of an era of increased accountability of marketplaces in relation to listings of third parties they accommodate on their platforms.

Some (General Court) Decisions Put a SMILE on Your Face

Feb 20 2023

We are used to decisions about non-traditional trade marks not deserving protection in the European Union, leading to the inevitable conclusion that non-traditional trade marks can be difficult to register and keep on the register.

The recent McCain decision of the EU General Court seems to go into the opposite direction, providing some guidance on which proof of use will be sufficient for a non-traditional trade mark to stay on the EU register (see here).

Tag:Litigation