Week’s news headlines – September 15th, 2017


UKIPO outlines approaches to combat fakes online
The availability of counterfeits has continued to increase with the expansion of e-commerce platforms, but this threat is being met head on with an innovative range of approaches

US sports associations unite to tackle counterfeiters
In a claim filed at the US District Court for the Northern District of Illinois, Eastern Division, on Monday, September 11, the sports associations alleged that an interrelated group, that resides in China or “other foreign jurisdictions”, had infringed their trademarks

Tag Heuer looks to ensure counterfeiters time is up
The complaint was filed at the US District Court for the Northern District of Illinois, Eastern Division, on Tuesday, September 5

YouTube doesn’t have to reveal IP addresses: German court
The Higher Regional Court of Frankfurt handed down the ruling last week on Tuesday, September 5, after the video streaming website was challenged by a German filmmaker



Harley-Davidson steps up fight against Chinese fakes with another suit
Motorcycle manufacturer Harley-Davidson has filed another trademark infringement lawsuit against a group of Chinese counterfeiters

IP rights shouldn’t be undermined by Brexit, says European Commission
Unitary IP rights, such as the EU trademark, should remain enforceable after the UK exits the EU, according to a position paper released today

Wrigley sues e-cigarette seller over ‘juicy fruit’ mark amid FDA crackdown
Chewing gum company Wrigley has sued the owner of a company selling liquids for electronic cigarettes over the use of the ‘Juicy fruit’ trademark

Trademark a Band Name: What’s in a Rock Band’s Name?
Trademark law may not be very “Rock and Roll”, but it sure is important these days. When it comes to rock and roll bands, trademarking the band name is an essential part of legal protection

AG advises on Schweppes trademark exhaustion dispute
Advocate General Paolo Mengozzi of the Court of Justice of the European Union (CJEU) has outlined what he believes are the criteria that determine whether Schweppes can oppose the importation into Spain of Schweppes-branded goods from the UK

Five celebrities who’ve tried to trademark their slogans
Last week, Swift applied to trademark the lyrics to her upcoming album “Reputation”

WeWork sues UrWork over name
The complaint was filed yesterday, September 12, at the US District Court for the Southern District of New York, and accused Beijing-headquartered UrWork of “attacking” the WeWork trademark ahead of UrWork’s upcoming launch in New York

Kroger and Lidl end trademark clash
In July, WIPR reported that just after opening its first store in the US, budget retailer Lidl was hit with a lawsuit over its ‘Preferred Selection’ range

“Certified” quality doesn’t prevent EU trademarks from cancellation
On June 8, 2017, the European Court of Justice (‘ECJ’) (Case C‑689/15), decided  that the requirement of right- prevailing/genuine use of individual EU trademarks registered by legal entities, or associations licensing its trademarks, ensure that certain quality standards–either humanitarian or technical–be met

Kodi hits out at ‘trademark trolls’
In a statement, released on Friday, September 8, Kodi accused the “trolls” of attempting to register the Kodi mark in various countries outside the US, with the goal of earning money from the name

TM-intensive industries contributed 50% to Singapore’s GDP: INTA
Trademark-intensive industries contributed 50% to Singapore’s gross domestic product (GDP) between 2012 and 2015

Baskin-Robbins sues former franchisee
Ice cream chain Baskin-Robbins has sued a former franchisee, accusing the company of continuing to use the Baskin-Robbins trademarks after defaulting on the agreement



Gigi Hadid faces legal action over Instagram post
The July 2016 post by the model, wearing a customised Adidas jacket, has received over 1.2 million ‘likes’ on Instagram

Dr. Phil wins copyright case against former segment director who had alleged false imprisonment
It’s not everyday that a copyright case involves claims of false imprisonment but an order granting summary judgment entered on August 30th in the Eastern District of Texas granted a legal win to American TV personality and psychologist Dr. Phil and his production studio in just such a case

Trends in Copyright Litigation for Tattoos
An increasing trend in copyright infringement suits filed in the United States has tattoo artists bringing suit against entertainment entities, and in some cases against the tattoo bearer themselves, for the reproduction or recreation of tattoos they created

Picture books of famous novels not fair use, holds judge
US District Judge Jed Rakoff has published his opinion on why books which recast famous novels into illustrated books for young children are not fair use

Could a monkey succeed in the UK courts?
Yesterday, WIPR reported that the ‘monkey selfie’ dispute between a photographer and the People for the Ethical Treatment of Animals (PETA) had reached a settlement owner pleads guilty to copyright infringement
On Friday, September 8, the US Department of Justice announced that Artur Sargsyan had pleaded guilty to the offence, two years after the seizure of his computer and three domain names in August 2015

‘Uptown Funk’ copied 80s R&B hit, claims suit
Lastrada Entertainment Company, which owns the right to “More Bounce to the Ounce”, a song written by funk musician Roger Troutman, filed a claim at the US District Court for the Southern District of New York on Tuesday, September 12

Kendall Jenner clothing range at centre of copyright lawsuit
In June, Jenner and her sister Kendall faced criticism over superimposing their own faces over a range of photos of prominent bands and rappers, including Tupac Shakur, Notorious B.I.G. and Redman (click here for NME coverage)



Federal Circuit invalidates Kraft cookie packaging patent
The US Court of Appeals for the Federal Circuit has affirmed the invalidation of a patent covering cookie packaging in a dispute between Kraft (now Intercontinental Great Brands) and Kellogg’s

Fed Circuit affirms invalidation of patent despite faulty PTAB analysis
The US Court of Appeals for the Federal Circuit has affirmed the invalidation of a cable making patent, despite finding that the Patent Trial and Appeal Board’s (PTAB) had erred in its analysis

Allergan’s anti-PTAB patent deal with the Mohawks looks to be a potential US game-changer
Allergan may just have driven a coach and horses through the inter partes review process at the Patent Trial and Appeal Board. The company’s agreement to transfer the six patents underpinning its dry-eye treatment Restasis to the Saint Regis Mohawks has been widely reported since it was announced on Friday

Escaping the Prisoner’s Dilemma: Toward a New Transparency in Patent Licensing
I recently had the opportunity to go on the record with Joe Siino, an IP strategist, entrepreneur and attorney with decades of experience both in Silicon Valley

Finjan forms new subsidiary Finjan Blue to execute web security patent acquisition agreement with IBM
On August 28th, East Palo Alto, CA-based web security firm Finjan Holdings (NASDAQ:FNJN) filed a Form 8-K with the U.S. Securities and Exchange Commission (SEC) which disclosed a patent assignment agreement made with Armonk, NY-based information technology giant IBM

Securing Ownership Rights in Patents in the Real World
“It isn’t easy being a brilliant inventor, always alone. Always misunderstood. Easy to turn bitter, make horrible mistakes. People are more difficult to work with than machines. And when you break a person, he can’t be fixed.”

Nintendo to appeal $10.1M jury verdict of infringement after invalidating 5 of 6 iLife patents at PTAB
On Thursday, August 31st, a jury verdict entered into a patent infringement case in the Northern District of Texas found that Japanese gaming giant Nintendo (TYO:7974) infringed upon a patent asserted by Texas-based medical tech firm iLife Technologies Inc

Auto patents asserted against Hyundai in US court travelled from Ford spin-out to IP Bridge to Michigan NPE
A trove of US patents previously owned by Japan’s IP Bridge has finally wound up in court, targeting Korean automaker Hyundai

Arent Fox Seeks a Patent Agent or Patent Attorney/Associate for its DC Office
The Washington, DC office of Arent Fox LLP is seeking a patent agent or patent attorney/associate with 4-6 years of experience in patent application drafting and prosecution in the chemical and/or material science fields

Acacia subsidiary and Apple reach settlement after $22 million payout
Apple has reached a settlement with Cellular Communications Equipment (CCE), a subsidiary of patent licensing company Acacia, a year after the technology company was ordered to pay CCE more than $22 million in damages

Mylan calls Allergan’s patent deal with Indian tribe a “sham” transaction in PTAB hearing on sovereign immunity defense
On Monday, September 11th, counsel representing multiple parties involved in an inter partes review (IPR) proceeding challenging patents covering the eye treatment Restasis marketed by multinational pharmaceutical company Allergan (NYSE:AGN) called in to a telephone hearing regarding the case at the Patent Trial and Appeal Board

With rumoured HTC smartphone unit acquisition, Google could bring a longtime patent ally into the fold
Three weeks ago, Bloomberg reported that Taiwan smartphone maker HTC has held takeover talks with Google, as the struggling business explores ‘strategic options’.

How the New USPTO Director Can Impact Patent Subject Matter Eligibility and Post-Patent Grant Challenge Proceedings
At long last, the next Director of the U.S. Patent and Trademark Office (USPTO) has been revealed

Patent owners negatively impacted by PTAB file amicus brief with SCOTUS in support of Oil States
Those with any knowledge of the U.S. patent system and changes to that system in recent years will understand that the U.S. Supreme Court’s decision to petition writ to answer the legal question posed by Oil States Energy Services, LLC v. Greene’s Energy Group, LLC could lead to major repercussions felt by all stakeholders in the system

Mixed result for Motorola Solutions in Federal Circuit ruling
The court handed down a split decision yesterday, September 13, affirming the validity of two of IV’s patents, while rejecting the finding that Motorola Solutions had directly infringed one of the patents

Federal Circuit rejects Uber’s arbitration bid in Waymo fight
Yesterday, September 13, the Federal Circuit held that the dispute should be heard at the US District Court for the Northern District of California, San Francisco Division, rather than go into arbitration

EPO ready for the first Unitary Patent as soon as the ratification requirements are met
Grant Philpott is CEO of the Information and Communication Technology technical are at the European Patent Office (EPO)

Michelin settles design patent suit with repair company
Car tyre manufacturer Michelin has settled its design patent infringement dispute over tyre tread designs with a Nashville-based repair company


Industrial Design

Crocs v Dawgs trade dress battle heats up
Nevada-based Dawgs had sued Crocs in July, at the US District Court for the District of Nevada, alleging that Crocs had copied one of Dawgs’ sandal designs


Intellectual Property

Cautious optimism from UK lawyers over European Commission Brexit report
An official paper from the European Commission, which stated that unitary IP rights should be enforceable post-Brexit, provides hope for the future of IP rights in the UK, according to lawyers

Preparing for Brexit – analysis of the European Commission’s position paper on key IP issues
Last week the European Commission published a Brexit position paper on dealing with intellectual property issues raised by the UK’s departure from the European Union – which is scheduled to happen at the end of March 2019

How to Participate in Open Source While Maintaining IP Integrity
Open source software can provide significant benefits to an organization—it can decrease product development time, distribute development across a community, and attract developers to your organization—but some organizations shy away due to perceived risks and disadvantages around intellectual property



Howard Head’s innovative sporting goods revolutionize skiing and tennis for amateurs and pros alike
Although team sports tend to attract the attention of a wider array of American spectators, there are many sports enthusiasts who enjoy the competitive spirit of individual sports

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