The Düsseldorf first instance district court decided that the trademark of Ferrari has to be cancelled (Decision as of 2 August 2017 – Case no. 2a O 166/16 – juris). However, the decision in not yet final.
On 4 August 2009, the company Interton sp. z o.o. (“Interton”) applied for the word-figurative trademark “A ADORATION” – goods from class 3 (cosmetics, including eye shadow, lash mascara, lipstick, fluids, makeup foundation, nail polish). The Polish Patent Office granted a protection to the mark (R-235773). Fast forward to 21 June 2017 (and after a number of oppositions and disagreements), the Supreme Administrative Court provided a ruling dismissing the PPO’s decision.
In 2016 Zbyszko Bojanowicz sp. z o.o. S.K.A. applied to the EUIPO to have the word-figurative mark “I’m organic” registered for goods and services from classes 16, 32 and 42 of the Nice Classification.
The EUIPO found that, in this case, conditions under Article 7 par. 1 b) and c) of Regulation No. 207/2009 of 26 February 2009 on the Community trademark existed for which the submission of a word-figurative trademark must be rejected.
On 22 June 2017, Advocate General Maciej Szpunar presented an opinion in case C-163/16 concerning a trademark registered for the benefit of the well-known fashion designer Christian Louboutin, in the form of the colour red applied to the sole of a shoe.
In 2010, Louboutin obtained a registration of a Benelux trademark submitted for goods from class 25. This covered shoes (except for orthopaedic shoes), while in 2013, the registration was restricted to high-heeled shoes.
Local entrepreneurs are more and more often taking actions aimed at protecting their trademarks abroad.
The presence of products bearing local trademarks in foreign markets is becoming more and more common. The shaping of an international nature and increased recognition of trademarks usually starts from the development of a distribution network through obtaining new sales markets and concluding commercial contracts with foreign entities. While planning activity in other territories, it is advisable to ensure trademark protection in the selected jurisdictions. Trademark protection is based on the rule of territoriality. A global brand usually emerges when their trademarks are protected in a majority of countries worldwide. An applicant has three types of applications available:
i) domestic (before local trademark office),
ii) international (through the Madrid system) or
iii) regional (i.e., covering the entire European Union).
On September 29, a jury in California awarded Columbia Sportswear more than US$3.4 million for infringement of its design patent on heat-reflective technology for clothing and outdoor gear. Columbia accused Seirus Innovative Accessories of infringing its utility and design patents for its wavy lining material, which reflects body heat, but allows for breathability and moisture-wicking. This appears to be the first jury verdict on a design patent after the Supreme Court’s decision in Samsung v. Apple.
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.
On 1 October 2017, the second part of the European trade mark reform entered into force, completing the implementation of Regulation (EU) 2015/2424 amending the Community trade mark regulation (EUTMR).
Taking a step back, this is in fact the last part of a much longer reform process that began about 10 years after the adoption of the EU trade mark system in 1996. In 2008, the European Commission published the Communication on an industrial property rights strategy for Europe with the intent to review the current practice and bring the European trade mark system to the next level. Subsequently, in depth studies, a public consultation and an impact assessment followed until the approval, in December 2015, of a new amending Regulation and a Directive to harmonise the laws of Member States.
As part of the K&L Gates Business Bytes series, Sydney partner and patent attorney, Nigel Lokan, discusses the use of innovation patents as strategic tools for clients.
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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