IP Law Watch – Page 48 – Legal issues, law and regulations concerning the world of IP

European Union Trade Mark Law Reform – Revised Drafts Released

Jun 12 2015

On 8 June 2015, the Council of the European Union published the final texts of its proposal to amend the Community Trade Mark Regulation (Regulation) and Trade Mark Directive (Directive).

The revised drafts reflect the key issues which have been the subject of significant debate in the last year, including:

harmonisation of trade mark law and practice between EU member states
measures to protect brand owners’ rights with respect to counterfeit goods in transit
cooperation between Office for Harmonization in the Internal Market (OHIM) and national trade mark offices
governance and finances of OHIM.

ASA and CAP Publish Annual Report 2014

Jun 05 2015

‘Make Every UK Ad a Responsible Ad’

On 27 May, the Advertising Standards Agency (ASA) and the Committee for Advertising Practice (CAP) published their Annual Report for 2014. The Annual Report emphasises the ASA and CAP’s continuing work to implement the strategy unveiled during 2014. This strategy aims to ‘make every UK ad a responsible ad’ through the following five strands:

Understanding
Support
Impact
Proactive
Awareness

Tamawood v Habitare: a Recent Australian Decision on Copyright Infringement in Building Designs

May 22 2015

Earlier this week the Full Court of the Federal Court of Australia (Full Court) delivered its judgment in the case of Tamawood v Habitare Developments, a copyright infringement case in respect of project home designs.

Habitare Developments had engaged designer/builder Tamawood to create designs for project homes for a new development. However, due to a falling out between the parties, Habitare Developments ultimately engaged architects Mondo to create the final plans for the development and engaged another builder to construct the houses. Tamawood commenced proceedings against all parties for copyright infringement. The respondents denied that Tamawood’s designs had been used as a starting point and that copyright had been infringed.

Amgen Prevails on Temporarily Excluding Zarxio® From Market

May 12 2015

After an unsuccessful attempt to obtain a preliminary injunction against Sandoz Inc.’s (“Sandoz”) Zarxio® in the District Court for the Northern District of California, Amgen Inc. (“Amgen”) has prevailed before the Federal Circuit in excluding the biosimilar from the market, at least temporarily. On May 5, 2015, the Federal Circuit granted Amgen’s motion for an injunction “preventing Sandoz [ ] from marketing, selling, offering for sale, or importing into the United States its FDA-approved ZARXIO® biosimilar product until this Court resolves the appeal.” Amgen Inc. et al. v. Sandoz Inc. et al., Appeal No. 2015-1499, Dkt. 105 (Fed. Cir. March 27, 2015).

To read the full alert, click here.

U.S. Copyright Office Chief Testifies: Eight Issues Ready for Legislation

May 08 2015

On April 29, 2015, U.S. Register of Copyrights, Maria Pallante, testified to the House Judiciary Committee providing the Copyright Office’s perspective on updates to U.S. copyright law. In addition to recommending a more autonomous Copyright Office and flagging policy issues that warrant further analysis and attention, Ms. Pallante identified eight issues deserving current legislative action:

1. Music Licensing. After undertaking a comprehensive study last year to assess the impact of copyright law on the music marketplace, the Copyright Office recommends

greater negotiating room for public performance rights while preserving the benefits of collective licensing for smaller actors
U.S. recognition of a full public performance right for sound recordings
federal copyright protection for pre-1972 sound recordings.

Zarxio®, First BPCIA Approved Biosimilar, Added to Purple Book

Apr 27 2015

In September 2014, the FDA published the first edition of the Purple Book: Lists of Licensed Biological Products with Reference Product Exclusivity and Biosimilarity or Interchangeability Evaluations (“Purple Book”), the biological equivalent of the pharmaceutical Orange Book. See FDA Releases a Purple Book for Biosimilars. The Purple Book has now been updated to include Sandoz, Inc.’s (“Sandoz”), Zarxio® (filgrastim), the United State’s first biosimilar approved under the Biologics Price Competition and Innovation Act (“BPCIA”). See FDA Approves First Biosimilar: Sandoz’s Zarxio®.

To read the full alert, click here.

The Protection of ‘Weak’ Trademarks Having Acquired Secondary Meaning

Apr 21 2015

On February 2, 2015, (judgment no. 1861) the Italian Supreme Court ruled on a case involving two Italian companies active in the sector of furniture: Natuzzi S.p.A., owner of the Italian and European trademark ‘Divani & Divani’ (Trademark 1), and Divini & Divani S.r.l. (Divini & Divani), which started to use the trademark ‘Divini & Divani’ (Trademark 2).

Natuzzi claimed that the use of Trademark 2 was illegitimate, constituted an act of unfair competition as well as trademark infringement claiming the use generated confusion amongst customers. In particular, Natuzzi stated that, even if Trademark 1 was composed by two common words (literally in English ‘Sofas & Sofas’), it acquired specific distinctiveness. Consequently, Natuzzi sought to prevent Divini & Divani from using Trademark 2 as a company name and a trademark for its products. Divini & Divani counterclaimed that Natuzzi’s requests were groundless because there could not be any confusion between the trademarks and, in any case, Trademark 1 was weak and consequently, not worthy of protection.

The Chinese Translation of a Registered Word Trademark can be Used as a New Figurative Trademark in Italy

Apr 17 2015

On January 9, 2015, a decision of the Italian Patent and Trademark Office (Ufficio Italiano Brevetti e Marchi, hereafter ‘UIBM’) rejected an opposition made by Jaguar Land Rover Limited (Land Rover), in order to prevent the registration, in Italy, by China Depend Limited (China Depend) of a figurative trademark. The trademark was formed by two Chinese ideograms corresponding to the sign used in China by Land Rover to identify its activity, which once translated means ‘land’ and ‘tiger’, but allegedly commonly translated into ‘Land Rover’ ( Ideogram Trademark).

Land Rover, owner of the two Italian word trademarks ‘Land Rover’ and ‘Range Rover’ (Land Rover Trademarks), filed an opposition pursuant to Article 12, paragraph 1, letter d) of the Italian Intellectual Property Code setting forth the likelihood of confusion between similar trademarks. In particular, the provision provides that signs cannot be registered as trademarks if, at the date of the registration filing, they are similar or identical to other trademarks previously registered by third parties in the same country or are enjoying protection in the same country.

Australian ISPs Ordered to Hand Over Customer Details in P2P Copyright Action

Apr 09 2015

Dallas Buyers Club LLC v iiNet Limited [2015] FCA 317

In November 2014, IP Law Watch reported on attempts by the rights holder of the film Dallas Buyers Club to compel Australian ISPs to disclose the identities of BitTorrent users who allegedly shared copies of the film.

On 7 April 2015, Justice Perram of the Federal Court of Australia ruled in favour of Dallas Buyers Club LLC and Voltage Pictures LLC, ordering six ISPs to disclose the details of 4,726 customers.

The judgment has been widely reported in the Australian media as a landmark decision and a game changer in the battle regarding online piracy. In fact, the kind of order granted by Justice Perram is far from revolutionary. For many years, civil procedure rules at both state and federal levels have enabled a party to seek orders requiring a third party to produce documents or give evidence as to the identity of a prospective respondent. There are decisions going back as far as the 1970s in which this kind of preliminary discovery order has been granted (see for example Exley v Wyong Shire Council (10 December 1976, Master Allen, unreported) and Stewart v Miller [1979] 2 NSWLR 128).

Yahoo! Vs. Reti Televisive Italiane S.p.a: A Turning Point in ISP’s Liability in Italy?

Apr 07 2015

On January 7, 2015 the Court of Appeal of Milan (Court of Appeal) rendered a relevant judgment on a dispute involving Yahoo! Italia S.r.l and Yahoo! Inc. vs. Reti Televisive Italiane S.p.A. (RTI), one of Italy’s major broadcasters. RTI sued Yahoo! Italia S.r.l. and Yahoo! Inc. (Yahoo!) because of the reproduction of RTI’s copyrighted videos on the Yahoo! Video-sharing platform (Yahoo! Video Italia). RTI requested the removal of such videos and the implementation by Yahoo! of a filtering and blocking system in order to detect and prevent any infringement of copyright. The Court of Appeal concluded that the hosting provider is only exclusively responsible if it takes active part in the uploading activity or is aware of the unlawful content or use of the material and does not erase them.