September 2016 – IP Law Watch

A dog of a trade mark dispute

Sep 29 2016

A long running trade mark dispute between Black Dog Ride Pty Ltd (Ride) (http://www.blackdogride.com.au/) and the Black Dog Institute (Institute) has concluded almost four years after an acrimonious dispute arose between the two organisations ended what had been a mutually beneficial relationship. The Delegate of the Registrar of Trade Marks who heard the dispute ultimately dismissed each of the respective oppositions filed by the parties and confirmed the rights of Ride to register BLACK DOG RIDE (stylised) and the Institute to register BLACK DOG for various goods and services.

In 2002, the Institute was founded as a non-profit organisation specialising in the diagnosis, treatment and prevention of mood disorders. In 2008, Steve Andrews created Ride to organise charitable motorcycle rides to raise awareness of depression and suicide prevention. Importantly, the Delegate found that both Ride and the Institute adopted names including the words BLACK DOG as a result of Winston Churchill’s well known use of the phrase BLACK DOG when referring to his battles with the mood illness.

Remicade® Update: Double Patenting Redoubles in Post-Gilead Biosimilar Case

Sep 21 2016

On August 17, 2016, in Janssen Biotech, Inc. v. Celltrion Healthcare Co., District of Massachusetts Judge Mark Wolf faced a double patenting fact pattern that had not been adjudicated in a district court case since the Federal Circuit decided Gilead Sciences Inc. v. Natco Pharma Ltd. [1] Judge Wolf held U.S. Patent No. 6,284,471 (the “’471 patent”) invalid for obviousness-type double patenting over U.S. Patent No. 6,790,444 (the “’444 patent”) because the ’471 patent expired later due to the changes to patent terms under the Uruguay Round Agreements Act (“URAA”), even though both patents claim priority to the same application and the ’471 patent issued years before the ’444 patent. [2]

Please click here to view the full alert.

By: Margaux L. Nair, Trevor M. Gates, Peter Giunta, Theodore J. Angelis

Court of Milan Grants Copyright Protection to Après-ski Boots Moon Boots

Sep 15 2016

According to the Italian court, an industrial design can enjoy copyright protection if it has an artistic value

According to the Italian court, an industrial design can enjoy copyright protection if it has an artistic value

In July, the Court of Milan issued an interesting decision that granted copyright protection to the famous après-ski boots “Moon Boots” on the basis that they have recognized artistic value. In fact, the court recognized that Moon Boots have a particular aesthetic appeal capable of deeply changing the concept of après-ski boots, so that they have become an actual icon of Italian design.

In this case, the producer of the famous après-ski boots sued the producer and the distributor of a similar type of boots, called “Anouk Boots”. They alleged they constituted copyright infringement, infringement of the registered community design as well as unfair competition and asked for applicable remedies and compensation.

“Blank” blocking orders on “alias” targeted web sites cannot be issued

Sep 15 2016

According to the Court of Milan, such injunctions would be contrary to local procedural rules as well as to Italian and European fundamental principles of law

In July, a famous Italian broadcaster asked the Court of Milan to block access to a specific portal, in order to stop its unlawful communication to the public of football matches of major Italian teams and of the UEFA Champions League to which the broadcaster holds the exclusive broadcasting rights.

Italian Government signs an agreement with Alibaba regarding “Made in Italy” agricultural products

Sep 13 2016

The Agreement will Properly Protect Italian Agribusiness Against Counterfeiting on the Chinese Marketplace

On 4 September, the Italian Government signed an agreement with the Chinese online platform Alibaba for the promotion and the protection of “Made in Italy” agricultural products.

Cooperation between the Italian government and Alibaba against counterfeiting of such products started last year when a huge quantity of fake parmesan and Prosecco wine appeared on the Chinese platform.

Green with Envy: Colour Trade Marks in Australia

Sep 05 2016

Frucor Beverages Limited (Frucor), the manufacturer of energy drink, V, has unsuccessfully tried to register a trade mark for the colour green. Last month, Coca-Cola Company (Coca-Cola), the manufacturer of Mother energy drinks, successfully opposed registration of the trade mark filed in 2012 in relation to energy drinks which consisted of the colour green (Pantone 376c), as shown below.

Coca-Cola opposed the trade mark application on the basis that Pantone 376c Green was not capable of distinguishing Frucor’s energy drinks and that the application was defective. While the opposition failed on the latter ground, Coca-Cola was successful in its argument that Pantone 376c Green was not capable of distinguishing V energy drinks from the energy drinks of other traders.

Archive:September 2016