IP Law Watch – Page 31 – Legal issues, law and regulations concerning the world of IP

EasyGroup finds proving the distinctiveness of its trade marks not so easy in the UK High Court

Feb 01 2018

EasyGroup Ltd has suffered a blow in a High Court case against W3 Ltd, with the judge finding that its word mark, EASY, was invalid.

EasyGroup found itself facing a claim from W3 Ltd for groundless threats, in relation to letters of complaint it sent regarding the branding of one of W3’s businesses, EasyRoommate. As a counterclaim, EasyGroup alleged that W3’s use of the registered word mark and logo EASYROOMMATE, infringed its community registered trade mark, EASY, with W3 in turn stating that such a mark should be invalidated for being too descriptive under Article 7(1)(c) of the EU Trade Mark Regulation.

Change is Coming to Australian Parallel Importation law – What do you Need to Know?

Jan 25 2018

Trade mark holders may need to reassess their commercial and international marketing strategies as the proposed amendments to the parallel importation provisions of the Trade Marks Act 1995 (Cth) (Act) take a step closer to enactment by the Australian Parliament.

The proposed amendments to the Act, contained in the draft Intellectual Property Laws Amendment (Productivity Commission response Part 1 and other measures) Bill (Draft Bill) will favour parallel importers in Australia.

Sixth Circuit rules knurling pattern on rifle scopes could be nonfunctional trade dress

Jan 17 2018

The Sixth Circuit Court of Appeals recently held that a reasonable jury could find a design pattern on rifle scopes is “nonfunctional” and thus potentially amenable to trade dress protection. Since 2002, Leapers, Inc. has been selling adjustable rifle scopes with knurling on the surface. Knurling is a common manufacturing technique that allows users to grip and fine-tune products more easily.

Leapers asserted “that it uses a unique knurling pattern that is distinctly ‘ornamental’ and by which customers recognize [Leapers] as the source of the product.” Leapers had executed an exclusive manufacturing contract with a Chinese company, but chose to end that relationship in 2011. The manufacturer agreed to cease using all technical specifications and designs, but later a factory manager from the manufacturer formed his own company and began manufacturing scopes allegedly using Leapers’ knurling design.

A successful year for trade marks and designs worldwide

Jan 15 2018

Looking back at 2017, statistics give us a better understanding of the big picture and help us interpreting the market to guess in which direction the economy is going to go.

Pushing the limits of Australia’s grace period

Dec 20 2017

Australia’s “grace period” provisions allow a patent applicant to disclose or use their invention within 12 months before filing a complete patent application in Australia. In an interesting interpretation of those provisions, the Australian Patent Office has found that the grace period applies to whole of contents citations published after a patent application has been filed.

EU case recap: Sprinter vs Diesel SpA “D” Marks (Case T‑521/15)

Dec 15 2017

On 20 June 2017, a ruling between Sprinter megacentros del deporte SL and Diesel SpA was made regarding similar trademarks indicating there would be a risk of consumers being misled in relation to two similar figurative marks in the form of the letter “D” in respect of identical goods. A consumer would have to examine the marks very closely, which is unlikely since the average consumer seldom has the opportunity to compare trademarks side by side.

EU case recap: A dispute over registration of the mark “Dricloud” (Massive Bionics, SL vs Apple Inc.)

Dec 11 2017

On 14 July 2017, the EU General Court issued a ruling in case T-223/16 between Massive Bionics SL and Apple Inc. and the EUIPO concerning the registration. In the end, the General Court also found that the Board of Appeal had rightly found that the marks are similar. The matter was based on the following trademark:

On 9 April 2013, Massive Bionics SL submitted an application for the registration of the trademark in classes 35, 42 and 44, against which registration Apple Inc. filed an opposition based on:

the word mark “iCloud” and the following word-figurative and figurative marks:
– the international word mark “iCloud”, designated in Cyprus in classes 9, 35, 38, 42 and 45
– the following EU figurative trademarks registered in classes 9, 35, 38, 41 and 42:

The Opposition Division of the EUIPO dismissed the opposition in its entirety, and Apple Inc. appealed. The Board of Appeal amended the decision of the Opposition Division of the EUIPO within the scope of all services from class 35 and certain services from class 42.

When recording also means communication to the public – interaction between copyright and cloud-based video recording services

Dec 07 2017

On 29 November 2017, the Court of Justice of the EU (CJEU) released its judgment in response to a reference from an Italian court relating to cloud recording and computing services provided by VCAST Limited (VCAST). The services enabled VCAST’s customers to select live broadcasts of television programmes that VCAST then remotely, through its own systems, recorded and made available in a cloud data storage space. The Italian court asked whether VCAST could provide this service without the permission from the owner of the copyright over the programme, with a specific query as to the application of the private copying exception provided in Article 5(2)(b) of the Information Society Directive (2001/29/EC) (InfoSoc Directive).

Recycling or Remaking – Exhaustion of Patent Rights

Dec 04 2017

In the case Seiko Epson Corporation v Calidad Pty Ltd [2017] FCA 1403 (29 November 2017), Seiko sold various Epson inkjet printer cartridges for use with its printers. Ninestar collected used cartridges in Malaysia, made modifications to facilitate their reuse, and refilled them with ink. Calidad purchased the cartridges in Malaysia from Ninestar, then imported and sold them in Australia.

Seiko sued Calidad for infringement of two patents for printer cartridges. Calidad defended the claim on the basis that an implied licence ran with the cartridges, alternatively Seiko’s patent rights had been exhausted when Seiko first put the cartridges on the market.

Ninestar modified some cartridges more than others in order to make them suitable for re-use. Justice Burley found that the defence was available in some cases but not others. It was a question of degree, but the Judge considered that in some cases Ninestar so materially altered the cartridges that “the licence implied by a sale without restriction of the original Epson cartridge does not apply”.

EU: Report of the European Commission on the Enforcement of Intellectual Property Rights

Dec 04 2017

Thanks to increased inspection efforts, there has been an uptick in the number of counterfeit goods stopped at the external borders of the European Union. In 2014, the figure was 35.5 million items of a value of EUR 617 million; in 2015, it was 40 million items of a value of EUR 642 million, while it was 41 million items of a value of EUR 672 million in 2016.