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To Perform a Technical Function or Not: This is Rubik’s Question.

Dec 02 2016

After the CJEU decision in case C-30/15 P, fans of three-dimensional trade marks will be wondering if the opportunity to register them is as straightforward as it appears from the recent reform of the Regulation No. 207/2009.

For 10 years, Simba Toys and Seven Towns have been involved in the Rubik’s cube saga, which began in 1999, when the three-dimensional sign reproducing the popular Hungarian toy was registered as a Community trade mark.

The application for a declaration of invalidity filed in 2006 by Simba Toys was based mainly on the infringement of Article 7(1)(e)(ii) of Regulation No 40/94, which prevents a trade mark consisting exclusively of the shape of goods which is necessary to obtain a technical result to be registered.

The EUIPO Cancellation Division as well as the Board of Appeal and the General Court rejected the arguments of the German firm on the grounds that the essential characteristics of the sign at issue are a cube and a grid structure on each surface of the cube and that they do not perform any technical function.

Hence, the appellant’s argument was rejected because the rotating capability of the lattices did not result from the shape presented, but from the invisible internal mechanism which was not part of the graphical representation filed in the trade mark application.

As often happens, the above decisions have been overturned by the CJEU. In particular, the approach of the lower courts was found to be too narrow as they did not take into account the additional elements relating to the function of the actual goods in question.

Lastly, the court held that not taking into account the rotating capability of the cube would extend the trade mark protection to any other kind of puzzle with a similar shape. On the other hand, the technical function behind the cube falls within the scope of Article 7(1)(e)(ii), which precludes the granting of a permanent monopoly on technical solutions. Therefore, in this case it would be more appropriate to consider a patent protection as it has a limited life unlike trademarks.

In conclusion, while the Rubik brand will continue to ensure its exclusivity through other trademarks, copyright, passing off and unfair competition protection, this case made it clear that an effective access to the registration of unconventional trade marks remains as uncertain as the interpretation of Article 7(1)(e)(ii).

By: Serena Totino and Michał Ziółkowski

EU recap: Ruling of the Court of Justice of the European Union on the possibility of consumers being misled (Mille Miglia vs e-miglia)

Dec 01 2016

Recap from the K&L Gates publication Trademarks and Unfair Competition, Quarterly Bulletin, 1/2017 – click here.

On 17 February 2011, the company Rebel Media Ltd applied to the European Union Intellectual Property Office for the registration of a community trademark for the following graphic designation:

for goods and services in classes 12 (vehicles, land, air and water transport devices), 14 (including precious metals and alloys thereof, jewellery, gemstones), 18 (including leather, imitation leather and products from such materials), 25 (clothing, footwear, headwear), 35 (including advertising, in particular of electric vehicles, organization of advertising events) and 41 (education, training, recreation, sports and cultural events) of the Nice Classification.

On 16 September 2011, the company Automobile Club di Brescia lodged an opposition to the registration of the above mark in respect of all of the goods and services submitted.

The Australian Patent Office Once Again Allows Claims Directed to Nucleic Acids

Nov 28 2016

In Commonwealth Scientific and Industrial Research Organisation v BASF Plant Sciences GmbH [2016] APO 83, the Australian Patent Office has once again confirmed that nucleic acids are patentable in Australia.[1]

The opposed application relates to methods of producing polyunsaturated fatty acids in the seeds of transgenic plants. The application included claims directed to a recombinant nucleic acid molecule comprising nucleic acid sequences coding for a polypeptide with Δ6-desaturase activity, a polypeptide with Δ5-desaturase activity, a polypeptide with Δ6-elongase activity and a polypeptide with Δ5-elongase activity, as well as one or more copies of a promoter and a terminator.

Use it or Lose it – Exercising ‘Control’ Over use of a Trade Mark

Nov 27 2016

A unanimous appeal judgment handed down by the Full Court of the Federal Court of Australia earlier this year, signals the importance of trade mark owners exercising “control” over use of their trade mark by licensees, or risk cancellation of the trade mark for non-use.

It is very common for the trade mark owner not to be the actual user of the trade mark. Related parties within the same corporate group may have different functions of ownership or use, or local distributors/licensees may be appointed to use a trade mark owned by a foreign brand owner.

Fashion Law Newsletter – Spring/Summer 2016 Edition

Nov 23 2016

“Fashion has always been a repetition of ideas, but what makes it new is the way you put it together.” – Carolina Herrera

Welcome to the latest edition of Fashion Law, this edition touches on issues that demonstrate the impact of world events and technological changes on all businesses.

Fashion Law gives you the latest updates on legal issues affecting the fashion industry.

Please click here to read the Spring/Summer 2016 edition of Fashion Law.

Contact: Lisa Egan

Review of Australia’s Gene Technology Regulations: An Opportunity to Strengthen Australia’s Biotechnology Industry

Nov 23 2016

As Australia faces the challenges that come with the end of the resources boom and a shift away from many traditional manufacturing industries, the biotechnology industry represents an important opportunity for economic growth. With an increase in the demand for biotech products comes the potential for Australia’s biotechnology sector to offer substantial growth and investment opportunities if supported by the right policy settings. It was recently reported that the sector is expected to grow at a rate of 4.4% a year until 2021, bringing AUD8,675M of revenue to industry.[1]

Further, last year alone, more than 630 biotechnology patent applications including claims referring to “nucleic acids” were filed with the Australian Patents Office – many claiming subject matter that no doubt will test the boundaries of what constitutes patentable subject matter.[2]

In an industry that has undergone rapid technological advancement since the Regulator last conducted a technical review (which resulted in amendments being made to the Gene Technology Regulations 2001 (Gene Technology Regulations) in 2011), it is timely that the Australian Gene Technology Regulator (Regulator) has initiated a technical review of the Gene Technology Regulations.

Proposed Australian-New Zealand Single-Desk Patent System Abandoned

Nov 15 2016

The proposed single application (SAP) and examination (SEP) processes for Australia and New Zealand have recently been abandoned, more than five years after they were first introduced. The SAP and SEP would have allowed applicants wishing to obtain patents in both countries to file a common application that would be examined by a single examiner at either IP Australia or IPONZ. Once accepted under each country’s law, two separate patents would be granted. Patent examiners would have had to learn to apply the laws of the other country.

Jelly-sy – A Warning to e-Commerce Retailers About the Risks of Infringing Copyright

Nov 14 2016

It seems only fitting that with “Schoolies Week”^[^1] around the corner, the Federal Circuit Court has delivered judgment in the matter of Weller & Anor v Smith [2016] FCCA 2827 which relates to intellectual property rights and commercial reputations in the jelly wrestling products industry.

The matter relates to a dispute between the partnership of John Weller and Jake Weller trading as “Crazy Town Parties” and Ian Smith.

The Wellers trade in the party supply and party hire industry. One aspect of their business is the sale of a range of products, including a substance sold in crystalline form, that are used for jelly wrestling. The Wellers utilise a number of photos for marketing purpose in both digital and hardcopy formats including on the packaging of their jelly wrestling products.

Trademark Law Update: SCOTUS to Decide Whether Ban on Registering “Disparaging Marks” Is Unconstitutional

Nov 08 2016

Under section 2(a) of the Lanham Act, the Patent and Trademark Office (USPTO) may refuse to register any trademark that “[c]onsists of . . . matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt or disrepute.” This spring, the U.S. Supreme Court will decide in Lee v. Tam whether this provision of the Lanham Act is facially invalid under the First Amendment. Here’s what you need to know about this important case.

Please click here to view the full alert.

By: Joanna Diakos and Thomas W. Dollar

Bring It On!

Nov 04 2016

On 31 October 2016, the U.S. Supreme Court heard arguments in the ongoing dispute between Star Athletica LLC and Varsity Brands Inc, two major designers and manufacturers of cheerleading uniforms. In what could be considered a bizarre mash up of early 2000s films “Bring it On!” and “Legally Blonde”, the two companies are involved in a stoush as to whether or not the two-dimensional designs of coloured stripes and zig-zags that are applied to cheerleading uniforms can be protected under US copyright law. My U.S. colleagues John Cotter and Shamus Hyland previously discussed the Sixth Circuit Court of Appeal’s decision in this matter here.

It will come as no surprise to readers that U.S. and Australian laws differ in many respects and this is particularly the case when it comes to copyright and designs laws.

In Australia, fashion designers may have recourse to the Designs Act 2003 (Cth) and/or the Copyright Act 1968 (Cth) depending on whether or not they are looking to protect two-dimensional (prints, images etc.) or three-dimensional (cut, shape, fit etc.) designs and how they intend to exploit the designs.

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