Korean Patent Court Finds: Use of Outback motel mark unfairly competes with mark for restaurant services

In a suit alleging trademark infringement and unfair competition, the Korean Patent Court concluded that the use of the mark “” in connection with “unmanned lodging services” used for so-called love motels with an image of a naked woman, did not infringe Outback Steakhouse’s trademark.  But it did constitute unfair competition because that use harmed the good image and fame of the well-known mark “” owned by Outback Steakhouse (Case No. 2016 Na 1691, decided on June 29, 2017).

Facts

Outback Steakhouse has been doing business in over 20 countries (including South Korea) under the names “OUTBACK”, “아웃백” (“OUTBACK” in Korean) and “” since its founding in 1988 in the U.S.  Recently it discovered that the defendants were operating unmanned lodging facilities under the names “아웃백” (“OUTBACK” in Korean), “OUTBACK”, “”, or “아웃백 무인텔” (“OUTBACK UNMANNED LODGING TEL” in Korean).  Outback Steakhouse filed suit against the hotel operator, based on trademark infringement and under the Unfair Competition Prevention Act. Continue Reading

“EACH DAY HAS A COLOR, A SMELL…”: Searching For New Trademark Worlds

The search for spices, and the gold that one expected to find nearby (or earn through sale of the spices), in many ways drove the Age of Exploration.  And spices still hold a special place in our economy and in our imagination; in fact, we believe that spices “all hold magic.” Part of that magic is that spices give “[e]ach day … a color, a smell,” as we are told by The Mistress of Spices herself.  Well, color and smell (or the more delicate scent) are now adding spice to trademark law around the world as businesses explore new ways to differentiate their goods and services from those of their competitors.  Getting trademark protection for color and scent may depend where you seek such protections, as the rules vary from country to country.

Spicing Up Trademarks: Before charting the different approaches found across jurisdictions, some basics will help one understand the course of such considerations.  At its most basic level, according to World Trade Organization Agreement on Trade-Related Aspects of Intellectual Property Rights (or TRIPS, which this blog has addressed before), trademarks encompass “any sign…capable of distinguishing the goods or services of one undertaking from those of other undertakings” (TRIPS, article 15(1)).  Color can be such a “sign” according to INTA (or the International Trademark Association) (as quoted in AdWeek), but only where the trademark owner can “’show that the consumer, upon seeing the color used in connection with the goods or services, views the color not as merely ornamental but, rather, as a means of indicating the origin of those goods or services.’” Many jurisdictions also recognize that smell/scent can be such a “sign” because “scents do have the ability to convey information through our olfactory system,” but others do not do so because, as INTA notes, “[s]cent marks are more problematic than visual trademarks as they are defined subjectively and are therefore open to interpretation. The complications that arise from human perceptions of odors lead to the argument that subjective views are inadequate when determining whether the scent mark functions as a trademark.” Indeed, “temperature, humidity levels, and wind conditions can greatly affect both potency of a scent and the scent itself,” which one commentator noted is problematic not only for registration and enforcement, but for recognition itself (after himself previewing his legal analysis with a fairly biologically and anatomically detailed definition and explanation of the term “olfactory”).  Trademark offices, such as the USPTO, nevertheless do have procedures for submitting scent (and event taste) samples. Continue Reading

Moscow Region Commercial Court rendered a precedent decision in an originator-generic dispute

On September 27, 2017, the Moscow Region Commercial Court published a significant decision in a patent dispute between Novartis AG, Swiss originator, and Nativa LLC, Russian generic producer (case No. A41-85807/2016).

Under the auspices of the case, Novartis AG filed a patent infringement lawsuit against Nativa LLC claiming that its active patent on «Tyrosine kinase inhibitors» (No. 2348627) is used both in the “original” drug “Tasigna” and “generic” drug “Nilotinib-native”[1], while registration of the “generic” drug before the Ministry of Health threatens to violate the patent.

The lawsuit was partially satisfied: the first-instance court (1) recognized the use of the patent in the opposing drugs and (2) prohibited the defendant to market the “generic” drug until the patent expires. Continue Reading

Can Trademarks Related to Cannabis be Protected?

Suppose that you want to federally register a trademark that identifies a source of goods or services related to your cannabis business.  What if the trademark covers merchandise indirectly related to cannabis or products directly related to the use of cannabis?  Should you attempt to register your trademark with the U.S. Patent and Trademark Office?  Can you obtain a registration from the U.S. Patent and Trademark Office?  The answer is it depends on the cannabis related goods and services.

To qualify for a federal trademark registration, the use of a mark in commerce must be “lawful”. See, The John W. Carson Found. V. Toilets.com, Inc., 94 U.S.P.Q.2d 1942, 1947-48 (T.T.A.B. 2010); In re Midwest Tennis & Track Co., 29 U.S.P.Q.2d 1386 (T.T.A.B. 1993); In re Stellar Int’l, Inc., 159 U.S.P.Q. 48, 50-51 (T.T.A.B. 1968). Continue Reading

New era for Collective Management in Greece and the legal uncertainty for AEPI, the major Greek CMO

  1. Introduction

The Collective Management Organisations in Greece are subject to the legal framework of the Law 2121/1993, as amended recently by Law 4481/2017 regarding the collective management of copyright and related rights, thereby the Greek legislation was harmonised with the Directive 2014/26/EU.

In this article we aim to focus on one aspect of the new statute and, particularly, to clarify the types of entities that can collectively manage copyright and related rights, to illustrate their main differences, concerning both their operation mode as well as the management rights attributed to them, and to highlight one of the new law’s basic purposes, the reinforcement of their transparency and accountability, taking into consideration the management problems that, the Hellenic Society for the Protection of Intellectual Property (AEPI SA), the biggest CMO in Greece, dealt and deals with. Continue Reading

FTC Brings First Ever Enforcement Action Against Individual Social Media Influencers; Updates Warnings and Guidance for Influencers and Marketers

On the heels of issuing more than 90 letters to celebrities, bloggers and other influencers in April 2017, as well as receiving continued petitions by watchdog organizations such as Public Citizen, the Federal Trade Commission (FTC) brought its first direct action against individual influencers for failing to disclose their material connections on social media.

At the same time, the FTC sent a second round of warning letters to a subset of the original 90 letter recipients, and also updated its staff publication “The FTC’s Endorsement Guides: What People are Asking” (the FAQs) with additional guidance and clarification for both influencers and marketers. Continue Reading

Will It Be Known As “Michelin Star Athletica”?: Why The US Supreme Court May Have Given American Chefs A Reason To Cheer

Recent years have witnessed a surge in the United States in the appreciation for fine food and those who create it.  Indeed, the concept of the “celebrity chef” has taken such hold in the United States that there are entire television networks and countless magazines (on-line and in print) to cooking, recipes, chefs and the like, not to mention a wide variety of restaurants at all price points trading on the name and reputation of such chefs.  Indeed, in much the same way that sports fans snap pictures of star athletes or look for Top Ten highlights, diners now post from well-known (or even not so well known) eateries on-line reviews and uploaded photographs of each course served to memorialize their memorable food encounters; would-be diners and others take it all in as they try to decide what and where to eat.

Though often motivated by a desire to share the pure joy of delicious meal, this posting trend has become so pervasive, public and indiscriminate that it has engendered a more negative name for its seamier side—food porn!  As one chef noted, food porn “takes away the surprise, and a little bit of my intellectual property.”  Because chefs, especially in the United States, have not always had a clear path to controlling the depiction of their creations, controlling food porn has usually been left to the too-frequently-absent discretion of the diners, much to the chefs’ chagrin.  But that may have changed with the United States Supreme Court’s decision in Star Athletica v. Varsity Brands, 137 S.Ct. 1002 (2017), which we have written about once or twice before.  If Star Athletica is given in food cases the sort of application found in an August 30, 2017 decision by a federal court in the Southern District of New York in a lighting case called JetMax v. Odd Lots, chefs may have something to cheer about.  Continue Reading

Obtaining Statutory Damages for Trademark Infringement – A Cross Border Approach under the Trademark Act of the Republic of Korea

** Originally published by DRI in the DRI IP Committee newsletter**

Recently the Korea Supreme Court issued a significant ruling, providing guidance on the availability of statutory damages in trademark infringement actions.  This article discusses that ruling.

Under the Trademark Act of the Republic of Korea (“the Act”), a trademark owner is entitled to receive compensation for damage arising from its trademark being infringed. The trademark owner can receive one of the following types of damages[1]:

  1. Actual Damages resulting from the infringement;
  2. Estimated Damages – the Act provides various ways of estimating damages, such as an estimate based on the fees normally paid to the owner by someone using the trademark;
  3. Statutory (Legal) Damages – compensation for a reasonable amount, not exceeding 50 million won (approximately $44,000 U.S. dollars).

In ordinary situations, when estimating damages, the trademark owner must prove that its trademark has been infringed as well as the fees that normally would be paid for the trademark’s use. The trademark owner is not required to claim and/or prove the existence of its damages in detail. However, if the trademark owner has simply registered the trademark without actually using it—which is permitted under Korean law, unlike U.S. law – then the infringer typically will deny the existence of any damages. Such an argument effectively would deprive the owner of any right to compensation, even though the owner has properly registered the mark. Continue Reading

Win or lose, you pay PTO attorneys’ fees for challenging decisions in District Court

When the U.S. Patent and Trademark Office (“PTO”) rejects a patent application, the applicant has two options for judicial review. It can either appeal directly to the U.S. Court of Appeals for the Federal Circuit under 35 U.S.C. §141, or file a new (“de novo”) civil action against the Director of the PTO in the U.S. District Court for the Eastern District of Virginia under §145. Unlike an appeal, a de novo proceeding entitles a rejected applicant to some procedural advantages, such as the ability to conduct discovery and to introduce new evidence, rather than relying solely on the record made before the PTO in prosecuting the patent application.

In order to prevent an abuse of this civil action pathway, §145 also expressly provides that “all the expenses of the proceeding” shall be paid by the applicant, “regardless of the outcome.” Traditionally, courts have interpreted the word “expenses” to mean out-of-pocket costs the PTO incurs, such as printing, travel, and expert fees. However, in 2013, the PTO changed its position and began arguing that “all expenses” included its attorneys’ fees.  The Federal Circuit has now held that “all expenses” also applies to the PTO’s attorneys’ fees, regardless of the outcome of the suit. Continue Reading

Extraterritorial Application of Unfair Trade Laws: Foreign Government Agencies May Restrict U.S. Companies from Exercising Their IP Rights in the United States

** Originally published by DRI in August 2017 edition of For The Defense **

Intellectual property laws are aimed at allowing intellectual property owners to hold rights in their property for a certain period of time to the exclusion of all others. Exclusivity is the essential purpose of intellectual property rights. Conversely, the essence of fair trade laws is to prevent monopolies and establish fair competition. The different purposes of these laws often give rise to conflicts.

The tension between these laws is demonstrated when fair trade laws are used to prevent intellectual property owners from exercising their intellectual property rights. This happens with increasing frequency. Countries around the world have established and strengthened rules, such as the “Antitrust Guidelines for the Licensing of Intellectual Property” (prepared jointly by the U.S. Department of Justice and the Federal Trade Commission) or the “Treaty on the Functioning of the European Union” (Articles 101-102). These rules reflect the decisions of courts and administrative bodies that have held that the exercise of certain intellectual property rights can constitute unfair trade practices. Continue Reading

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