Tag: Litigation

1
Frucor given red card over ‘V’ green trade mark
2
Australian liquor company may not get off scot(ch) free
3
Getting closer to put the UPC into force
4
Thunder Road toasts success in “Pacific Ale” case again (Stone & Wood’s appeal dismissed)
5
U.S. Federal Court rules embedding a Tweet could be copyright infringement
6
Western Australian Court orders ex-customers and architect to pay damages to house designer for unauthorised use of plans
7
Sixth Circuit rules knurling pattern on rifle scopes could be nonfunctional trade dress
8
Petitioners bear the burden of proving invalidity of amended claims in IPR proceedings
9
Emerging trends in U.S. Defend Trade Secrets Act litigation
10
UK to introduce new Unjustified Threats Bill across IP law

Frucor given red card over ‘V’ green trade mark

On 2 July 2018 the Federal Court of Australia dismissed Frucor Beverages Ltd’s appeal regarding the registrability of the colour Pantone 376C with respect to the energy drink ‘V’.

The Frucor mark in question, Australian trade mark no. 1496541, was first filed with IP Australia on 5 June 2012. Registration of this mark was opposed by the Coca Cola Company on two grounds. First, Coca Cola alleged that while the trade mark was filed for Pantone 376C, the swatch attached to the application that visually demonstrated the colour was not actually Pantone 376C. Furthermore, it argued that regardless of the colour actually filed, it was not capable of distinguishing Frucor’s goods from other similar goods and services. The Registrar of Trade Marks dismissed the first ground of opposition but supported the second and the registration was denied.

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Australian liquor company may not get off scot(ch) free

Proceedings recently commenced in the Federal Court of Australia by the Scotch Whisky Association (SWA) serve as a reminder of the ability to use the trade mark system to protect Geographical Indications (GIs) in Australia.  The use and protection of GIs in Australia will be of particular interest to followers of the Australian-European Union free trade negotiations, where GIs have been flagged by the European Union as a critical issue.

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Getting closer to put the UPC into force

April 26, 2018 is a remarkable date: first it’s World IP Day celebrating IP around the world. Second, and this is unique, the British IP Minister Sam Gyimah MP announced that the UK ratified the Unified Patent Court Agreement (UPC Agreement). By doing so the UK agreed to be bound to both the UPC agreement and the UPC’s Protocol on Privileges and Immunities (PPI). The UPC will be a court common to the contracting member states within the EU having exclusive competence in respect of European Patents and European Patents with unitary effect.

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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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U.S. Federal Court rules embedding a Tweet could be copyright infringement

A federal district court in New York recently held that embedded tweets could violate the exclusive right to display a copyrighted image. In 2016, Plaintiff Justin Goldman snapped a photo of New England Patriots quarterback, Tom Brady, with Boston Celtics General Manager, Danny Ainge. Goldman then uploaded the photo to his Snapchat Story. The image went viral, making its way onto Twitter, where it was uploaded and re-tweeted by several users. From there, media outlets and blogs published articles which featured the photo by embedding the tweets on their webpages. Goldman sued the media outlets for copyright infringement.

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

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.

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Emerging trends in U.S. Defend Trade Secrets Act litigation

U.S. Congress created the first statutory private federal cause of action for trade secret misappropriation when it enacted the Defend Trade Secrets Act (DTSA) on May 11, 2016.  Now, more than a year since its enactment, the DTSA is being shaped and interpreted by various federal court decisions and enforcement trends are emerging.

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UK to introduce new Unjustified Threats Bill across IP law

The United Kingdom’s new Intellectual Property (Unjustified Threats) Act 2017 (the Act) was recently granted royal assent and is set to come into force in October 2017. The Act should make it easier to advise clients, avoid litigation and facilitate the negotiation of settlements by outlining what types of threats are unjustified. The Act will also harmonise the UK law on unjustified threats across patents, trade marks and design rights.

Currently, the law allows those accused of infringing intellectual property to sue for damages if threats of legal action against them are revealed to be groundless. This can lead to rights-holders becoming wary of challenging perceived threats to their intellectual property because they do not want to risk their threats being perceived as groundless and, as a result, do not exercise full protection of their intellectual property rights.

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