Week’s news headlines – May 26th 2017

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GCC Trade Mark Law: Finding Consistency Across the Gulf
When will the Gulf Cooperation Council Trade Mark Law be fully implemented? Will it unify the protection and enforcement of trademarks? WIPR puts these questions to two lawyers in the region.

Joe Ferretti: Working the World Stage of IP
Joe Ferretti, Vice-President & Chief Counsel, Global Trademarks for PepsiCo, Inc. and 2017 INTA President, is tackling the challenges of representing trademark owners worldwide. He talks to Ed Conlon about his work so far.

Dot Brand Domains: A Work In Progress
The number of active “dot brand” domain names is growing at a steady pace, and some interesting use cases have emerged. Ed Conlon spoke to Martin Sutton of the Brand Registry Group to find out more.

Netflix: Challenging Conventional Wisdom
With its 20th birthday approaching, Netflix has transformed from renting DVDs to providing original and third-party content online. Ali Buttars, Trademark Specialist at the company, tells Ed Conlon how trademarks fit into the ever-expanding business model.

INTA 2017: No Perfect Compensation Structure, Says INTA Panel
As law firms increasingly turn from a lockstep compensation structure, based on seniority, to a merit-based system, it’s clear there is no perfect model for the approach, a panel discussion found yesterday.

Opening Ceremony: The Evolving Role of Brands
Issues such as the European Union, the protection of trade secrets, the fight against counterfeits, and anti-piracy education were highlighted by speakers during the Annual Meeting’s Opening Ceremony yesterday. Sarah Morgan reports.

INTA 2017: Bad-Faith Filings: Exploring the TM5’s Case Studies
Representatives from the five trademark offices known as the TM5 came together to discuss bad-faith trademark filing yesterday, with the focus on using case studies to formulate enforcement strategies.

Etienne Sanz de Acedo: INTA’s New Strategic Plan
Following the launch of INTA’s Strategic Plan 2018–2021, CEO Etienne Sanz de Acedo discusses its key aims and why the Association is well placed to meet those goals. Ed Conlon reports.

INTA 2017: The Gummy Bear Uprising
Was the GOLDBÄREN decision in the dispute between Haribo and IGE made correctly by the Swiss Federal Administrative Court, and would the outcome be the same if it were decided in a different jurisdiction?

Ambush Marketing: Striking the Right Balance
As the countdown to the 2018 World Cup finals in Russia begins, legal and brand specialists will be monitoring developments around ambush marketing. But as Naomi Jeffreys finds out, it is important for legislators to achieve the right balance between sponsors, trademark owners, and other groups.

CIPO: Looking Ahead To 2019
In 2014, the Canadian government passed legislation which will amend the country’s Trademarks Act in 2019. Mesmin Pierre, Director General of the Trademarks Branch for the Canadian Intellectual Property Office (CIPO), says Canada is seeking to accede to five World Intellectual Property Organization treaties: the Singapore Treaty; the Madrid Protocol; the Nice Agreement; the Patent Law Treaty; and the Hague Agreement on Industrial Designs.

INTA 2017: Acting Out the Benefits of Mediation
Lawyers recreated an Italian family business conflict on stage at INTA to highlight the advantages that a mediation process can offer to solve a trademark dispute.

Brand Restrictions: Changing the Conversation
The tobacco industry may have lost battles against plain packaging, but the war is not over, say the Co-Chairs of INTA’s 2017 Brands Restrictions Presidential Task Force, Kathryn Park and Burkhart Goebel, and INTA Chief Policy Officer Bruce MacPherson, in an interview with Sarah Morgan.

Tobacco Packaging: Smoke Signals From India
Plain tobacco packaging legislation has been implemented in countries including Australia and the United Kingdom, and while India has made moves to follow suit, there is as yet no sign of any such laws. Naomi Jeffreys reports ahead of a special session at the Annual Meeting.

PayPal targets Pandora in battle of the Ps
Online payment platform PayPal has taken aim at internet radio station Pandora Media, claiming the company has deliberately modelled its new logo on PayPal’s ‘P’ trademark

Day One report from INTA 2017 in Barcelona: publishing war, keynote controversy, Brexit blues and much more
The beautiful city of Barcelona is currently packed to the rafters with trademark experts attending INTA’s 2017 Annual Meeting. Over 10,000 are in town for this year’s event IAM’s sister publication World Trademark Review has a crack team of reporters on the ground – Trevor Little (TL), Joff Wild (JW) and Tim Lince (TJL). Here are their highlights and observations from the first full day of the conference.

Visit the Pro Bono Clearinghouse!
Are you aware of all of the benefits that Pro Bono legal services can provide? Not only do pro bono services help the legal community as a whole, but they can greatly assist an attorney’s career.

Read All About It: The TM5 Subcommittee
One of INTA’s youngest subcommittees covers the TM5, a cooperative effort between five major trademark offices. The subcommittee’s Chair, Elisabeth Escobar, speaks with Naomi Jeffreys about its importance

INTA and QBPC: Continuing the Collaboration
INTA’s President and China’s QBPC Chairman have renewed a cooperation agreement designed to protect and promote the use of trademarks among their members

Private Labels: Keeping an Eye on Consumers
Private labels need to be carefully designed so that they don’t mimic those of popular brands too closely, registrants at the Annual Meeting heard yesterday. Sarah Morgan reports

INTA Staff Interview: In Search of Harmonization
INTA’s Regional Offices are working hard to promote trademark harmonization, but there are many challenges on the way. Sarah Morgan speaks to three INTA staff members working in this area

Smoothing the Path of Cross-Border Litigation
In November 2017 discussions on updating a multilateral treaty governing foreign judgments will resume at the Hague Conference, an intergovernmental organization. Its First Secretary, Marta Pertegás, speaks with Uldduz Larki about the potential impact on trademarks

Procter & Gamble: Keeping the IP House Clean and Tidy
Managing a global trademark operation at Procter & Gamble is no easy feat, especially when dealing with hurdles such as piles of papers and changes of address, as Deborah Brincat, Senior Legal Manager, tells Ed Conlon

Mexico: Getting to Grips with the New Regime
Almost a year after Mexico implemented a trademark opposition system, rights owners are coming to grips with the new regime

EUIPO: New Name, New Tasks
The European Union Intellectual Property Office has a lot on its plate, especially as a new batch of trademark reforms are set to come into force later this year, as Luis Berenguer, Member of the Executive Director’s Cabinet and Spokesperson of the Office, tells Sarah Morgan

ASEAN and Madrid: Six Down, Four to Go
The ASEAN region has embarked on a ten-year IP plan, with accession to the Madrid Protocol one of the core aims. Ed Conlon analyzes progress so far

Mr. Justice Arnold Talks Brexit
Mr. Justice Arnold, the judge in charge of the English Patents Court, talks Brexit and its impact on trademark law in the country

Keeping it Real: Fighting Back Against Fake News
“Breaking News: Donald Trump Shot on Stage” might be a gripping headline, but it is just an example of the growing phenomenon of “fake news,” which panelists discussed yesterday in IM01 Industry Breakout: Trademark Issues in the News and Publishing Industries

Futurist Thinking: From Products to Experiences
Futurist Gerd Leonhard suggested during the Lunch and Learn event at the INTA Annual Meeting yesterday that IP lawyers may have to rethink how to protect intellectual property in an environment where intangible goods are rapidly overtaking the value of tangible ones. At the same time, their job roles are likely to change too

Day Two at INTA Barcelona – Strikes, Brexit, fake news, more Brexit and a whole lot more
Often the busiest day for attendees, the Monday of the INTA Annual Meeting usually features a full schedule of meetings, sessions, table topics and receptions reaching a crescendo that often goes into the early hours of Tuesday. Reporters from our sister publication World Trademark Review Trevor Little (TL) and Tim Lince (TJL), plus yours truly Joff Wild (JW), report on the action

US Supreme Court to hear case on PTAB
The US Supreme Court has agreed to hear a dispute that should clear up rules surrounding the inter partes review procedure at the US Patent and Trademark Office

Looking Ahead to the 2018 Annual Meeting
Seattle will host the 140th INTA Annual Meeting in 2018, and as the Co-Chairs, Dr. Axel Nordemann and Dana Northcott explain to Naomi Jeffreys, there is much to look forward to

Lunch and Learn: How to Be a Creative IP Lawyer
During yesterday’s Lunch and Learn session, corporate management guru Paul Birch suggested a few solutions to make oneself more creative at work

Impact Studies: Making the Most of Trademarks
Combining data with on-the-ground knowledge helps to make INTA’s impact studies more successful, says Sheila Francis, INTA’s Director of Marketing and Liaison for the Impact Studies Committee, in an interview with Sarah Morgan

Trademarks in South Korea: Making Life Easier
Through assisting trademark owners and working with neighboring IP Offices, the Korean Intellectual Property Office is working hard to make the country’s trademark system a better place, as Director General Choi Gyuwan of the Trademark and Design Examination Bureau tells Uldduz Larki

From Colors to Collectives: Trademark Developments in Japan
With the first color trademarks being registered in Japan earlier this year, Sarah Morgan hears about what applicants have to show in order to secure protection, and other changes to trademark law

General Mills: A Household Name
While trademarks and trade dress are important for protecting General Mills’ many food products, brand value itself goes deeper than just a legal registration. Josh Burke, senior IP counsel, talks to Ed Conlon about protecting rights and keeping consumers happy

Mary Boney Denison: Hitting Targets and Tackling Dead Wood
Mary Boney Denison, Commissioner for Trademarks at the U.S. Patent and Trademark Office, must stay on top of targets, keep customers happy, fight fraud, and root out the dead wood, as she told Sarah Morgan

AB InBev: Keeping a Clear Head
International brewer AB InBev requires clear documentation of trademark rights when buying or merging with another company, as Associate General Counsel Jeremy Roe tells Ed Conlon

Neon signs give Heineken a headache
The Netherlands-based company, alongside its Mexican subsidiary Cervezas Cuauhtemoc Moctezuma, has accused Bright Neon Signs of promoting and selling signs that use the trademarks ‘Heineken’ and ‘Dos Equis’

Harley-Davidson sues custom clothes maker for trademark infringement
The complaint was filed in the US District Court for the Eastern District of Wisconsin Milwaukee Division on Friday, May 19

Day Three INTA Barcelona report – CPA planning for change, .sucks momentum, top in-house teams and more
The INTA 2017 Annual Meeting is coming to an end after five action-packed days in Barcelona. Here’s the final round-up of what has been going on from World Trademark Review reporters Trevor Little (TL) and Tim Lince (TJL), and me, Joff Wild (JW)

Nearly half of brand owners unsure about TM strategy post-Brexit: Hogan Lovells
The report, “Brand Benchmarking 2017”, was released today, and surveyed 200 brand owners across 12 industry sectors throughout Europe, North America and Asia-Pacific

Nestlé Purina sued over bacon trademark
Pet food company Nestlé Purina Petcare has been sued by Hormel Foods, a producer of meat and food products, for Purina’s use of Hormel’s ‘Black Label’ trademark for its dogfood product

Bayern midfielder Arturo Vidal wins TM dispute over energy drink
The disputed trademark resolved around an energy drink called ‘King Artur’, which various sources at the time of its creation in November 2015 say was in honour of the Chilean midfielder.



Sessions to Watch: Counterfeit Goods and Enforcement
The threat of counterfeit goods is a global problem and brand owners need different strategies depending on where their goods are being infringed. Ed Conlon and Sarah Morgan preview some of the must-attend sessions that focus on counterfeit goods around the world.

eBay: Helping Brands to Combat Counterfeit Goods
Internet marketplace eBay plays an important role in the fight against counterfeit goods, but there are challenges on different fronts. Julien Dudouit, Global Brand Manager at eBay, spoke to Ed Conlon about the platform’s approach to fake goods.

Patagonia: The Company That Recycles Counterfeits
As a company that enhances environmental protection as much as its profits, apparel brand Patagonia has adopted some innovative ways of dealing with trademark infringement. IP Counsel Robert Tadlock talks to Ed Conlon.

Maintaining a Life of Luxury: Combating Online Infringement
Luxury goods companies can be particularly vulnerable to attempts by counterfeiters to trade off their brands, often online. Sarah Morgan and Naomi Jeffreys explore some of the problems they face and how they are responding.

Pakistan: New Customs Rules On Counterfeits
Companies operating in Pakistan should take note of the amended Customs Rules, which contain important updates on intellectual property, says Junaid Daudpota, Managing Partner at Daudpota International.

Chinese Customs: Working Hard to Combat Counterfeits
Chinese Customs officers are assisting trademark owners with trying to stamp out counterfeit goods in a country that still struggles with counterfeiting problems, but brands need to play their part too. Sarah Morgan reports

Staying Ahead of the Curve: The Anticounterfeiting and Unreal Campaign Committees
INTA’s Anticounterfeiting Committee and Unreal Campaign are working hard to fight fakes and educate young people about IP, as their Chairs and Vice Chairs explain to Sarah Morgan

Growing Success for EU Customs
With EU customs detaining an increasing number of counterfeit goods, what impact have the goods-in-transit and other reforms to the EU trademark system had so far? Ed Conlon investigates

Turkey: New Code Fights the Fakes
Turkey has been singled out as a hub for counterfeit goods, but new legislation will help in the battle against fake products, as Habip Asan, President of the Turkish Patent and Trademark Office, tells Uldduz Larki.

The Battle Against Counterfeiting: Collaboration Is Key
Brand owners and government officials are coming together at the INTA Annual Meeting to share best practices for the fight against criminal counterfeiting, as Ed Conlon reports

Counterfeits: The Role of the Middle Man
Awareness campaigns and prosecuting counterfeiters won’t stop consumers being misled by counterfeits, but damages are a great help in the fight, registrants heard yesterday



Protection and Enforcement in Africa
There is much to discuss on the topic of IP in Africa, from design enforcement and the Madrid System controversy to the .africa gTLD. Ed Conlon and Sarah Morgan find out more.

Silicon Valley isn’t anti-patent insist big software players; but some remain to be convinced
The inaugural IP Software Summit, which was hosted by IAM in San Francisco yesterday, explored the at times complex interactions involving the world’s largest software companies and the IP system. With the relationship between open source and proprietary software platforms one of the themes of the day, members of both communities were well represented in a number of sessions that focused on how two very different approaches to software development can co-exist.

Alice Who? Over Half the U.S. Utility Patents Issued Annually are Software Related!
I am continually amazed that for over a decade the legal, technical and academic communities have debated the issue of software patent eligibility

America’s patent system favors low tech, not groundbreaking innovation
The U.S. patent system is not in a good place today

Cisco Successfully Invalidates Patent for Lack of Written Description
Cisco challenged Cirrex’s patent via inter partes reexamination, asserting a lack of written description. The Board affirmed the Examiner’s findings, that the patent, as amended, contained both patentable and unpatentable claims. On appeal, the Federal Circuit affirmed in part and reversed in part, holding that all of the claims are unpatentable for lack of written description.

Disney asks judge to toss out ‘Zootopia’ copyright claim
Esplanade Productions, which was founded by screenwriter Gary Goldman, filed its suit against Disney at the US District Court for the Central District of California in March

Federal Circuit backs Amazon in pillowcase row
The US Court of Appeals for the Federal Circuit has upheld a lower court ruling that cleared Amazon of copyright and trademark infringement claims that had been brought by a pillowcase designer

Navi-X discontinued because of ‘heat’ on Kodi
The developers said in a press release that there was “heat on Kodi” in the UK and elsewhere.


Intellectual Property

São Tomé and Príncipe: a breath of fresh air for IP
The IP law in São Tomé and Príncipe, a country in the Equatorial Atlantic, has been updated and improved in a number of areas. Inês Monteiro Alves and Daniela Dinis of Inventa International report

Indian government may target IP royalty outflows to retaliate for Trump visa limits
A government task force is studying royalty outflows from Indian companies to foreign partners and parent companies, in an initiative some say could lead to the re-imposition of caps on such payments for technology and intellectual property. The country’s top IP body, the Department of Industrial Policy and Promotion, is revisiting the issue as Indian tech companies worry about changes announced by President Trump to the H1-B visa programme. Whether or not the two issues are linked, new measures to curb outflows could unsettle foreign investors, especially those looking to do technology transfer or brand licensing to Indian partners.

Indian government may target IP royalty outflows to retaliate for Trump visa limits
A government task force is studying royalty outflows from Indian companies to foreign partners and parent companies, in an initiative some say could lead to the re-imposition of caps on such payments for technology and intellectual property

SCOTUS to hear SAS Institute v. Lee, could impact estoppel effect of IPR proceedings
On Monday, May 22nd, in addition to deciding the much-anticipated patent venue case TC Heartland v. Kraft, the U.S. Supreme Court granted a petition for writ of certiorari, which means that the nation’s highest court will once again address issues surrounding the controversial Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office (USPTO)

Superbugs Require New Weapons: Strong, Effective Intellectual Property Rights May Be Our Best, Last Hope
The virus that could spark the next global disease pandemic is already circulating – and the world is not ready to respond

Simplified procedures key to soaring IPEC claims, lawyers say
According to a freedom of information request by law firm Hugh James, claims brought by small and-medium-sized enterprises at the Intellectual Property Enterprise Court increased by 68% in 2016 compared to 2015

M&A Deals: IP Shifts to the Center
The importance of intellectual property has grown substantially in mergers and acquisitions transactions, and early involvement of IP lawyers in a potential deal has become essential, Annual Meeting registrants learned yesterday



INTA 2017: Startups: How To Protect Your Innovations
How can technology startups protect their IP? An INTA panel explored how companies just starting out can make the most of their innovations


Geographical Indication

INTA 2017: Geographical Indications: Switzerland and Colombia Fight for Heritage
Panelists from Colombia and Switzerland spoke today about the challenges of protecting geographical indications in the face of multiple threats.



Helmet manufacturers embroiled in patent dispute
The case, which was filed on Thursday, May 18 at the US District Court for the Eastern District of Texas Marshall Division, alleged that Riddell had infringed three of Schutt’s patents

Industry reaction to SCOTUS patent venue decision in TC Heartland v. Kraft Food Group
Earlier today the United States Supreme Court issued its much-anticipated decision in TC Heartland LLC v. Kraft Food Group Brands LLC

TC Heartland v Kraft Foods: SCOTUS deals ‘staggering blow’ to NPEs
In an 8-0 ruling, the court tightened the rules on where a patent lawsuit can be filed, holding that 28 USC, section 1400(b) is the sole and exclusive provision governing venue in patent infringement actions

SCOTUS tightens patent venue rules in ‘seismic’ decision
The US Supreme Court has tightened the rules on where a patent lawsuit can be filed, in a decision handed down today.

Personnel behind new Korean NPE suggest a campaign to enforce Pantech patents in the US may be in the offing
Last October, a significant US patent portfolio owned by Korean smartphone maker Pantech was assigned to a new entity called GoldPeak Innovations

Roxane ordered to pay $2.3m attorneys’ fees
A district court has ordered Roxane Laboratories to pay Camber Pharmaceuticals and InvaGen Pharmaceuticals $2.3 million in attorneys’ fees

Top five UPC considerations for patentees
Patentees need to start preparing their portfolios for the European Unified Patent Court and unitary patent, which are set to be ready by December 2017. Martyn Fish and Estelle Senior of HGF give their top five recommendations

International report – Patentee’s claim construction and evidence can be used to show unpatentability
On May 11 2017 the Federal Circuit in Rovalma, SA v Bohler-Edelstahl GMBH & Co KG held that the Patent Trial and Appeal Board (PTAB) did not exceed its authority when it adopted a patentee’s claim construction and submissions, during inter partes review, to find the patentee’s own patent unpatentable

Defending against a patent attack
Russian and Eurasian patent applicants should closely examine the scope of their dependent claims during patent prosecution to secure a strong defence strategy against a possible invalidity action, say Victor Lisovenko and Maria Nilova of Patentica

Hulu takes on TiVo over patents
Filed at the US District Court for the Northern District of California, San Jose Division, on Tuesday, May 23, the suit sought declaratory judgment of patent non-infringement

Supreme Court Reverses Federal Circuit on Venue for Patent Infringement Suits
Venue for patent infringement cases are governed by 28 U.S.C. § 1400(b), which states that patent infringement suits can be brought in the district where the defendant “resides” or where the defendant has committed acts of infringement and has a regular and established place of business. In Fourco Glass Co. v. Transmirra Products Corp., 353 U.S. 222 (1957), the Supreme Court held that for purposes of § 1400(b), a domestic corporation “resides” only in the state of its incorporation.

Eagle Forum remembers Conservative legend and champion of inventors, patent system
Last night at the Capitol Hill Club in Washington, DC, the Eagle Forum remembered Conservative icon Phyllis Schlafly, who passed away on September 5, 2016. Schlafly, the founder of the Eagle Forum, is perhaps best remembered for leading grass-roots campaigns against Communism, abortion and the Equal Rights Amendment. Perhaps less well known, Schlafly was a champion of inventors, and a defender of a vigorous and strong patent system.

Former Cisco Executive Giancarlo peels back ‘false narrative’ on patent trolls, patent reform
The mainstream narrative surrounding the U.S. patent system has been hijacked in recent years by individuals and entities who have sought to weaken a patent owner’s ability to assert patent rights, most notably by labeling any patent owner trying to assert those rights as a “patent troll.” As Sen. Dick Durbin (D-IL) recently noted during a Senate Judiciary Committee hearing on intellectual property as a driver of American innovation that the term “mischaracterize[s] anyone who goes to court to assert patent rights.”


Technological Innovation

How the U.S. Can Inspire the Next Generation of Innovators
To inspire innovation, nations rely on measures like R&D grants, tech incubators, venture capital tax breaks, mentoring schemes, support groups, training programs, networking events and more. But these focus on existing entrepreneurs and businesses, not future innovators. What can be done to support new innovators?

Balancing act for technology and rights
Should legislation be adjusted in light of technological developments such as artificial intelligence and the internet of things? Max Oker-Blom of ECTA finds out



Domain Name

Philip Morris smokes out Marlboro typosquatter
Philip Morris USA has successfully transferred a domain name that deliberately played off its Marlboro brand of cigarettes to spread malware to internet users


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