IP Law Watch – Page 34 – Legal issues, law and regulations concerning the world of IP

Duty of examining a mark in the registration stage – judgement of the EU Court in the case of Indeutsch International, Case T-20/16

Aug 06 2017

On 15 February 2010, the company M/S. Indeutsch International (Applicant) filed figurative EU trademark:

for “knitting needles” and “crochet hooks” belonging to the 26th class of the Nice Classification. EUIPO registered the aforementioned mark, however an application for declaration of invalidity of the trademark in question was filed on the basis of the lack of distinctive character of the registered sign.

USPTO Issues Report on Public Views Regarding Subject Matter Eligibility

Aug 06 2017

On July 25, 2017, the United States Patent and Trademark Office (USPTO) issued Patent Eligible Subject Matter: Report on Views and Recommendations From the Public (Report). The Report summarizes public comments on the state of subject matter eligibility law. Comments came from varied sources including industry, private practice, academia, trade associations, inventors, and small business.

After beginning with an overview of eligibility law in the U.S. and abroad, the Report summarizes the comments supportive and critical of the Supreme Court’s Bilski, Mayo, Myriad, and Alice decisions regarding subject matter eligibility. It polls opinions from the two most-impacted technology sectors, and reviews recommendations on how to move forward.

A favourable opinion for the owners of exclusive brands – Does selective distribution guarantee that the luxury image of a brand is maintained?

Aug 05 2017

On 26 July 2017, the advocate general of the EU Court of Justice issued a very interesting opinion of benefit to the owners of exclusive brands. The dispute the opinion addresses has been going on for many years between the companies Coty German GmbH (“Coty”) – a leading supplier of luxury cosmetic products in Germany – and Parfümerie Akzente GmbH (“Parfümerie Akzente”) – an authorized distributor of those products. It concerns the possibility of a supplier prohibiting authorized entities involved in further selling in a selective distribution system from using unauthorized third companies.

The EU Court of Justice will have to consider whether, and within what scope, selective distribution systems for luxury and prestige items that primarily ensure the “luxury image” of those goods constitute an element of competition pursuant to Article 101 par. 1 of the Treaty on the Functioning of the European Union (TFEU).

PL: PROCESS OF DETERMINING A WIDER SCOPE OF AUTHORIZATION FOR LEGAL ADVISORS AND ADVOCATES IN PROCEEDINGS BEFORE THE POLISH PATENT OFFICE – CURRENT STATUS

Aug 02 2017

The 10 May 2017 draft act of the Ministry of Science and Higher Education, amending certain acts in order to improve the legal environment for innovative activities, provided for the introduction of changes in the scope within which authors can be represented before the Polish Patent Office (PPO). The draft stipulated that, in cases related to submitting and considering applications and maintaining protection over inventions, medicinal products, plant protection products, utility designs, industrial designs, geographic signs and integrated circuit topography, attorneys in Poland (adwokat and radca prawny, hereinafter “advocate” and “legal advisor”) would also be able to represent the parties involved – previously, in such cases only patent attorneys or persons providing cross-border services in the meaning of the Act on Patent Attorneys of 11 April 2001 had been able to represent parties.

If and how to restrict the distribution of bot-programs for online-games – The “World of Warcraft II” Decision, Germany

Aug 01 2017

Early in 2017, the German Federal Court of Justice (FCJ) rendered a judgment in relation to the distribution of automation software (“bot-programs”) for the computer game “World of Warcraft”. The claimant developed and owns all rights to the popular online computer game “World of Warcraft”, which it distributes on the Internet. Furthermore, he is the owner of the trademarks “WORLD OF WARCRAFT” and “WOW”. To play the game, users have to acquire client software and register on a server. In the course of registration, the user has to accept the general license terms as well as terms of use of the claimant. The terms of use of the claimant prohibit the use of bot-programs by the user.

Louis Vuitton Seeks Supreme Court Review to Resolve Purported Circuit Split on Trademark Dilution

Aug 01 2017

Louis Vuitton recently petitioned the U.S. Supreme Court to review a Second Circuit ruling that certain handbags are fair-use parodies of Louis Vuitton products, and therefore do not give rise to liability for trademark dilution by blurring. In its petition, Louis Vuitton contends there is a split of authority between the Second and Fourth Circuits regarding parody as a fair-use defense to dilution.

Louis Vuitton is the owner of famous trademarks “that immediately bring… to mind Louis Vuitton as the sole source of handbags and other stylish, high-quality goods bearing its marks.” My Other Bag, Inc. offers handbags with images of Louis Vuitton’s famous marks reproduced on one side, and the phrase “My other bag” inscribed on the back.

A dispute between renowned tire producers – Ruling of the EU Court of Justice in the case of the trademark “XKING”

Jul 30 2017

In a ruling of 26 July 2017 in case C-84/16 P, the Court of Justice upheld a ruling by the EU General Court invalidating a decision of the EUIPO Fourth Board of Appeal dismissing an opposition to the registration of the word-figurative trademark “XKING”.

That ruling benefits the company Compagnie générale des établissments Michelin (“Michelin”) – the entity that submitted the opposition to the registration in a proceeding before the EUIPO and is against the company Continental Reifen Deutschland GmbH (“Continental”), a market competitor of Michelin and the entity that applied for the registration of the contested mark.

Say My Name: Beyoncé files trademarks for her newborn twins’ names

Jul 26 2017

Long gone are the days where the first registration of your child’s name was on their birth certificate. On 26 June 2017, U.S. Trade Mark Application Numbers 87506186 and 87506188 were filed for the names of Beyoncé Knowles-Carter and Shawn ‘Jay-Z’ Carter’s newborn twins ‘Rumi Carter’ and ‘Sir Carter’ by Beyoncé’s holding company, BGK Trademark Holdings.

The protective capacity of 3D trademarks

Jul 22 2017

One of the forms of a trademark more and more frequently encountered in trading is that of the shape mark. Read More