Tag:trademark litigation

1
Burger Wars: The Big Beef Between McDonald’s and Hungry Jack’s–McD Asia Pacific LLC v. Hungry Jack’s Pty Ltd [2023] FCA 1412
2
Artificial Sweeter Decision Sours Halal Authority: Halal Certification Authority Pty Limited v Flujo Sanguineo Holdings Pty Limited [2023] FCAFC 175
3
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
4
Honey, I Lost the Trade Mark: MANUKA HONEY Declared not Exclusive to New Zealand
5
Proposed PTAB Rules up for Comment
6
EUIPO 2 : AC Milan 0 – AC Milan Fails to Register Its New Club Crest in the EU
7
Registrability of Shape Marks and Technical Function of Complex Products: The Pirelli Case
8
After the CJEU’s decision now there is a final High Court judgment in the Sky v SkyKick case
9
We have a decision in the Sky v SkyKick case… and the long-awaited CJEU’s decision is good news for brand owners!
10
Court confirms additional tools for trade mark owners to protect their brand where they operate a selective distribution system in the EU

Burger Wars: The Big Beef Between McDonald’s and Hungry Jack’s–McD Asia Pacific LLC v. Hungry Jack’s Pty Ltd [2023] FCA 1412

In McD Asia Pacific LLC v. Hungry Jack’s Pty Ltd [2023] FCA 1412, fast-food giant McDonald’s and Australian dinner-time rival Hungry Jack’s faced off in the Federal Court of Australia over their burger names BIG MAC vs BIG JACK and MEGA MAC vs MEGA JACK.

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Artificial Sweeter Decision Sours Halal Authority: Halal Certification Authority Pty Limited v Flujo Sanguineo Holdings Pty Limited [2023] FCAFC 175

The Halal Certification Authority Pty Ltd (HCA) is a for-profit company that provides certification services to third parties. It is the owner of the following trade mark registered for issuing halal certification to businesses and individuals for goods and services if religious and technical requirements are met:

(HCA Badge).
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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

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).

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

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

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Proposed PTAB Rules up for Comment

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.

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EUIPO 2 : AC Milan 0 – AC Milan Fails to Register Its New Club Crest in the EU

AC Milan is one of Europe’s most decorated football clubs with seven European Cup/Champions League titles and 18 Serie A (Italian league) titles. However the Rossoneri, as the club is affectionately known, recently came up against an unfamiliar opponent in an unfamiliar field of play, being in the General Court of the European Union (the General Court), following their attempts to register their club crest as a trade mark.

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Registrability of Shape Marks and Technical Function of Complex Products: The Pirelli Case

The CJEU has rendered its decision on the invalidity actions brought by Yokohama against the below shape mark filed by Pirelli. The mark represents a single groove of a tyre tread, covering “tyres, solid, semi-pneumatic and pneumatic tyres, rims and covers for vehicle wheels of all kinds, vehicle wheels of all kinds, inner tubes, wheel rims, parts, accessories and spare parts for vehicle wheels of all kinds“ in class 12.

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After the CJEU’s decision now there is a final High Court judgment in the Sky v SkyKick case

After the CJEU’s ruling earlier this year (as discussed here), the Sky v Skykick case has now returned to the English High Court and Lord Justice Arnold on 29 April 2020 issued a final judgment in the case (see full text of the judgment here).

Although Sky’s trade marks were found to be partially invalid on the ground that they were applied for in bad faith, Sky was still ultimately successful in establishing infringement.

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We have a decision in the Sky v SkyKick case… and the long-awaited CJEU’s decision is good news for brand owners!

On 29 January 2020 the Court of Justice of the European Union (CJEU) handed its decision in the referral from the English High Court in the Sky v SkyKick case. We have previously covered this case and its importance for EU and UK trade mark law (including with our summary of the opinion issued by Advocate General Tanchev, which can be seen here).

The CJEU’s ruling provides good news for trade mark owners as it largely maintains the status quo for EU and UK trade mark law, departing from the AG’s Opinion in a number of important ways.

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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

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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