2017 – Page 6 – IP Law Watch

Distinctiveness of a mark (packaging of Knoppers waffles) – ruling of the EU Court of Justice

May 04 2017

We reported previously, in Bulletin No. 2 /2016 (page 15), on a case of the registration of the graphic trademark (shown below, packaging for Knoppers waffles, without any additional markings, with protection only for the two-colored background) for goods from class 30 of the Nice Classification, namely confectionery products, chocolates, chocolate products, cakes, ice creams, and ingredients for manufacturing such products.

Britax overruled – Federal Court sets record straight for infringement of innovation patents

May 04 2017

The Full Court of the Federal Court’s decision in Coretell Pty Ltd v Australian Mud Company Pty Ltd [2017] FCAFC 54 has clarified the date from which the owner of an innovation patent is entitled to compensation for infringement of the innovation patent. In the case of an innovation patent which has been filed as a divisional application, the Court’s decision significantly alters the time from which relief can be claimed, and has the potential to dramatically reduce the amount of compensation to which the patentee is entitled.

A previous decision of the Federal Court of Australia (Britax Childcare Pty Ltd v Infa-Secure Pty Ltd (No 3) [2012] FCA 1019) held that the owner of a divisional innovation patent was entitled to relief from the date that the “parent” application became open for public inspection (OPI). This allowed a patentee to strategically file a divisional innovation patent with claims tailored to read on to a competitor’s conduct, and then claim relief from the parent’s OPI date (which may have been some years earlier). As Justice Burley noted in Coretell, this produced the unattractive result of a person being liable to pay compensation for acts of infringement pre-dating the existence of the innovation patent said to have been infringed.

Justice Burley (with whom Justice Nicholas and Jagot agreed) corrected this anomaly and made clear that the relevant date for relief for infringement of an innovation patent is its date of grant. This diminishes the strategic benefit of patentees filing divisional innovation patents – although divisional innovation patents can still be tailored to target the conduct of a potential infringer, the patentee will only be entitled to relief from the date the divisional innovation patent was granted, and therefore publicly accessible, and not before.

By: Alex Dunlop and Nakita Wilkinson

Sandoz v. Amgen—Biosimilars at the Supreme Court—Oral Argument

May 02 2017

All nine U.S. Supreme Court justices heard argument on Wednesday April 26th, in Sandoz Inc., v. Amgen Inc. The Supreme Court is reviewing interpretations of the Biologics Price Competition and Innovation Act (BPCIA) made by the U.S. Court of Appeals for the Federal Circuit. Wednesday’s arguments focused on four main issues:

whether the FDA could preliminarily grant licensure prior to the expiration of the 12 year statutory period;
whether the notice of commercial marketing requires official licensure to be made;
whether the “patent dance” was required by the BPCIA; and
whether state law could be used to enforce compliance with the “patent dance” elements of the BPCIA.

Industry watchers hope that the Supreme Court will streamline the process for getting biosimilars to market by providing increased certainty.

To read the full alert, click here.

By: Theodore J. Angelis, Peter Giunta, Kenneth C. Liao, Margaux L. Nair and Jenna Bruce

Kardashian #copyright saga

May 01 2017

Is this the right angle?
Is this the best filter?
Do I have the legal right to post this content?

While the first two questions may be at the forefront of the mind of social media users, the third is arguably as important as the pressure to push content to followers mounts in a saturated market. It is all too easy to download, screen-shot or take a photo of an image and share it across many platforms, however, taking a laissez-faire attitude to copyright ownership can land social media users in hot water.

Not only is uploading and sharing content protected by copyright a breach of the terms of use of most social media platforms (and could lead to a user’s accounts being suspended or terminated in some cases) but it may also lead to copyright litigation, as Khloe Kardashian recently discovered.

Last week, Xposure Photos UK LTD, an “international celebrity photo agency”, filed proceedings against Ms Kardashian in the Central District Court of California alleging that she had infringed its copyright in an image that was posted to her Instagram® account.[1] The image in question had originally been licensed to The Daily Mail and contained a copyright notice “© XPOSUREPHOTOS.COM”. The version of the image that appeared on Ms Kardashian’s account did not contain this notice nor any acknowledgement of Xposure Photos. The unauthorised removal of the copyright notice attracts 17 US Code § 1202 -1203 which provide the basis for a civil action for such conduct. In addition to seeking an injunction to prevent Ms Kardashian from using the image, Xposure Photos is also seeking US$25,000 in statutory damages as well as any profits resulting from the infringement.

While this is arguably small change for Ms Kardashian (who allegedly earns up to US$250,000 for a sponsored post on her social media sites), once legal costs and any time invested in litigation or negotiating a settlement is considered, it seems a hefty price to pay for failing to obtain an appropriate licence from the copyright owner. It is a timely reminder to social media users to ensure that they have the appropriate rights to the content they intend to use.

Xposure Photos UK Ltd v Khloe Kardashian et al, 2:17-CV-3088 (C.D. Cal).

By: Jaimie Wolbers

Australian Patent and Plant Breeder’s Rights Year in Review

Apr 12 2017

K&L Gates has prepared the first edition of Patent and Plant Breeder’s Rights Year in Review which examines the significant judgments, development and events effecting patents and plant breeder’s rights in Australia.

The Review looks at a number of cases over the year including the Australian High Court’s decision in D’Arcy v Myriad Genetics Inc in the biotech industry, whether an Australian affiliate of an international pharma company was an exclusive licensee and whether it had standing to sue, and the Productivity Commission’s “IP Arrangements” Inquiry Report plus other updates. Click here for the summary or click here for the ePublication.

By: Simone Mitchell, Veg Tran, Michael Christie, Alex Dunlop, Jillian Lim, Jamie Wolbers and Jessica Mandla

Momentum.africa – Opening of Top-Level Domain Name to Create Opportunities to IP Right Owners

Apr 11 2017

The new generic top-level domain (gTLD) .africa, a regional domain for users located in and out of the continent, has been officially validated by ICANN.

More than a decade after its other regional counterparts, such as .eu or .asia, the .africa gTLD has been the subject matter of a legal conundrum for years.

Indeed, a conflict between two operators had to be escalated up to U.S. courts before a final decision entrusted the management of the gTLD to a South African company, ZA Central Registry NPC.

This new gTLD will allow the African continent to seize the full potential of the internet revolution, on a continent where the mobile connectivity is now allowing bypassing the expensive copper wire infrastructure development.

The new .africa domain name extension is expected to lead the continent in its global effort to take part in the global information society and become a strategic place to invest.

Accessibility to the new domain name will be gradual: starting on 6 April 2017, a 60-day preliminary phase will allow trademark owners or companies to benefit from a priority right, as well as African countries that intend to protect certain emblematic names such as “Mount Kilimanjaro”. Then, starting on 2 June 2017, an Early Access Phase (EAP) will take place to prevent any hindrance or ransoming by ill-intentioned people.

The .africa TLD will finally be open to all on 4 July 2017, on a first-come/first-serve basis.

K&L Gates has more than 225 lawyers, including approximately 100 registered patent lawyers, agents, and technology specialists with technical or advanced science degrees – nearly 20 with Ph.D.s – who devote their practices to helping clients establish, enforce, and leverage their intellectual property rights worldwide.

We can thus highlight the pitfall to avoid, the topics on which to focus the attention and better defend and protect our clients’ intangible assets with regard to the opening of this new gTLD, on this emerging market.

By: Claude Armingaud, Alexandre Balducci and Solenn Le Guen

Dispute over the similarity of the marks “NIMORAL” and “NEORAL” – ruling of the EU General Court

Apr 06 2017

In a ruling on 6 April 2017, in case No. T-49/16, the EU General Court upheld a decision by the EUIPO Fourth Board of Appeal dismissing a complaint by the company Azanta A/S (Azanta) against a decision to refuse to register the word trademark “NIMORAL.”

Azanta submitted that mark on 23 October 2013, applying for protection in respect of goods belonging to class 5 of the Nice Classification corresponding to the following description: “Pharmaceutical preparations improving the effectiveness of radiotherapy in treating cancer patients.” On 2 December 2013, an objection against that registration was raised by the company Novartis AG based on the previous registration of the EU trademark “NEORAL” for goods belonging to class 5 of the Nice Classification corresponding to the following description: “Pharmaceutical preparations.”

Markush Madness: Watson Avoids Infringement by Adding an Element to a Formulation

Apr 05 2017

On February 1, 2017, in Shire Development, LLC v. Watson Pharmaceuticals, Inc., the U.S. Court of Appeals for the Federal Circuit held that Watson’s proposed generic version of Shire’s LIALDA® did not infringe claims 1 and 3 of Shire’s U.S. Patent No. 6,773,720 (the “’720 patent”).[1] In reversing the district court, the Federal Circuit determined that Shire’s claim to an outer layer “consisting of” a list of specific elements closes the universe of elements for infringement purposes, and Watson’s addition of an ingredient (“magnesium stearate”) to the outer layer of its accused product created non-infringement because it was outside the claimed list of elements.[2] The Federal Circuit’s opinion rests on a strict reading of the Markush groups within the ’720 patent and a rejection of the district court’s broad reading of the Federal Circuit’s opinion in Norian Corp. v. Stryker Corp.[3]

Background
A Markush-type claim (also known as a Markush group) allows a patent drafter to capture independent, related claim elements in a single limitation. The claim is characterized by the form “selected from the group consisting of A, B and C.”[4] The “consisting of” language closes the group from including other members, such as “D.” “Consisting of” limits an element to only the named members of the group, and an element selected from outside that group will not be covered by the claim. In contrast, patent drafters frequently use an alternative preamble “comprising” to keep the claims open to additional, unrecited elements.[5]

Here, Shire sued Watson for infringing claims 1 and 3 of the ’720 patent by filing an Abbreviated New Drug Application (“ANDA”) with the Food and Drug Administration seeking to market a generic version of Shire’s drug LIALDA®. The ’720 patent is directed to a controlled-release oral composition of mesalamine (5-amino-salicylic acid) used to treat Crohn’s disease and ulcerative colitis. The claimed composition includes the mesalamine active ingredient; an inner, lipophilic matrix that “resists dissolving in water”; an outer, hydrophilic matrix that “readily dissolves in” water; and other optional excipients.

To read the full alert, click here.

By: Kenneth C. Liao and Peter Giunta

The Laguiole trademark saga: Victory can be a double-edged knife

Apr 05 2017

The European Union Court of Justice confirmed the intellectual property rights owned by the French company “Forge de Laguiole”, but solely in areas in which it pursued an actual business activity.

A decision [1] dated 5 April 2017 of the European Union Court of Justice (EUCJ) put an end to the longstanding series of court decisions about the Laguiole trademark before the European Union jurisdictions (EU Jurisdictions), on which relied the right for French company “Forge de Laguiole” to keep using its business name. This decision also gave the EUCJ the opportunity to clarify the application of national case law by the EU Jurisdictions within the framework of proceedings based on Article 8 (4) of Regulation No 207/2009 (the “Regulation”) [2].

Proceeding on a submission of a graphic trademark – ruling of the European General Court (Anta (China) vs. EUIPO)

Apr 05 2017

The EU General Court upheld a decision by the EUIPO Board of Appeal in the case of Anta (China) vs. EUIPO, in accordance with which a graphic mark consisting of two lines forming an acute angle, submitted in respect of various goods from classes 18, 25, and 28, does not possess distinctiveness (case No. T-291/16 of 5 April 2017). In this context, it is worth paying some attention to the conditions concerning distinctiveness for a trademark that is purely graphic in form (i.e., that has no verbal component whatsoever), in particular in respect of goods such as footwear and clothing.

Archive:2017