Establishment of the Intellectual Property (IP) List in the Court of First Instance of the Hong Kong High Court

According to the 2018 Global Competitiveness Report released by the World Economic Forum, Hong Kong was ranked 9th out of 140 economies in terms of IP protection.  In accordance with the recommendations made by the Working Group on IP Trading in 2015 (of which the writer is a member), a wide range of measures were introduced to enhance Hong Kong’s role as an IP trading hub to serve overseas IP owners/users as well as those in Mainland China (rising as a major intellectual property user, buyer, provider and seller) including those on legal services and  dispute resolution. Continue Reading

Simon Cowell picks bone with “The Pets Factor” UK trade mark

When TV format creator Mark Duffy struck upon the tongue-in-cheek name “The Pets Factor” for what was (presumably) a talent competition for domestic animals, he might well have smiled at his own ingenuity. Conversely, when Simon Cowell heard about the name (via Mr Duffy’s application to register it as a UK trade mark in classes 9 (software) and 41 (entertainment services)) we can guess he probably wasn’t smiling (or if he was, it was probably more of a grimace). Instead, and acting via his company Simco Limited (in conjunction with Freemantle Media) (Simco), Mr Cowell wasted no time in instructing his lawyers to oppose Mr Duffy’s application, which he had made via his company Duf Ltd.

Simco opposed the application on numerous grounds under the Trade Marks Act 1994 (TMA), relying on both registered and unregistered rights in THE X FACTOR (X Factor brand). An important element of Simco’s opposition was the significant reputation and goodwill that it said had developed in the X Factor brand since the singing competition first aired in 2004. Simco argued that THE PETS FACTOR (Pets Factor brand) would amount to a misrepresentation of the origin of Mr Duffy’s proposed services (so-called “passing off”), and was therefore prohibited under section 5(4)(a) TMA. Continue Reading

Understanding Trademarks Act Changes

On June 17, 2019, Canada’s Trademarks Act changed, resulting in its modernization. Canada has now joined five international intellectual property treaties, including the Madrid Protocol, Singapore Treaty and Nice Agreement, all related to trademarks.

There has been a great deal of activity to get ready for the changes. To implement the changes, the Canadian Trademarks Office had to update its technology, hire and train new staff and modify its processes and procedures. It also held national training events and webinars to inform the public. Lawyers and agents who work in the trademark field have had to alter their processes and procedures and learn about the consequences.  Here are the highlights: Continue Reading

District of Delaware Update

Last August, two new judges joined the United States District Court for the District of Delaware, Judge Colm F. Connolly and Judge Maryellen Noreika.  Judge Connolly filled the seat previously held by Judge Sue L. Robinson and Judge Noreika filled the seat previously held by Judge Gregory M. Sleet.  In recent months, both Judge Connolly and Judge Noreika have each adopted new procedures for dealing with case dispositive motions.

Judge Connolly has adopted two form scheduling orders for patent cases, one for cases in which infringement is alleged and one for cases in which only invalidity and not infringement is alleged.  Both form scheduling orders permit case dispositive motions after discovery has closed and follow the practice in the District of Delaware which prohibits early case dispositive motions absent leave of the Court.  Judge Connolly requires that any motion for summary judgment be accompanied by a separate concise statement detailing each material fact as to which the moving party contends that there are no genuine issues to be tried that are essential for the Court’s determination of the summary judgment motion (not the entire case).  Any party who opposes the motion is required to file with its opposing papers a separate document containing a single concise statement that admits or disputes the facts set forth in the moving party’s concise statement, as well as sets forth all material facts as to which it is contended there exists a genuine issue necessary to be litigated.  Continue Reading

Trademark License Rights Survive Rejection in Bankruptcy

Settling a circuit split, the U.S. Supreme Court, in an 8-1 decision, has concluded that a trademark licensee’s rights are not automatically terminated when a debtor in bankruptcy rejects the license agreement.

The case, Mission Product Holdings, Inc. v. Tempnology, LLC (Mission Product), arose from a pre-bankruptcy trademark license agreement between Tempnology, LLC, the bankrupt debtor, and Mission Product Holdings, Inc. (Mission), which was granted a non-exclusive license to use Tempnology’s “Coolcore” trademarks. During the bankruptcy, Tempnology “rejected” the trademark license in accordance with the Bankruptcy Code. The Court held that, because rejection under the Bankruptcy Code operates only as a breach and not a rescission, the rejection did not deprive Mission of its right to use the trademarks under the license. Continue Reading

“Patent Attorneys Academy” established in Greece

While in some jurisdictions the concept of a “patent attorney” or also a “patent judge”, referring to persons who not only have knowledge of patent law but also acquire technical expertise in relation to patents, is common, this is not the case in Greece. Of course, there are lawyers with high-level expertise in patent law, as well as sections of the Courts that try cases related to industrial property law. At the same time though, the technical issues of disputed patents are mostly assessed by technical experts who the parties, as well as the Court, may each appoint in order to assist the Court to reach a decision in each case.

This situation does not seem to be about to change drastically any time soon in Greece. This being said however, the term “patent attorney” has very recently been officially added in the Greek legal vocabulary. In particular, Presidential Decree 31/2019, published in the Greek Government Gazette on 5 April 2019 (the issuance of which had been provided in Law 4512/2018, articles 123-124), provides for the establishment of the “Hellenic Industrial Property Academy” (the “Academy”), whose primary purpose will be to develop a system of national education, training and certification in the field of industrial property leading to the acquisition of the title of “certified patent consultant” (“patent attorney”) for successful candidates. “Patent attorney” in this sense would not, necessarily, mean a “patent lawyer” but a “patent consultant” with background studies either in Law or in Science/Technology. Continue Reading

Information on Filed Applications for Registration of Drugs has Become Publicly Available in Russia

Under the Federal Law “On drugs circulation” (Law), information on state registration of drugs in Russia shall be publicly available.

Pursuant to Art. 37(1) of the Law, MoH-s obligation is to disclose information regarding all filed applications for drug registration on its official website.

For a long period, MoH used to turn a blind eye to this obligation, keeping this information confidential. It used to be a negative factor and raised public concerns among professionals. Moreover, absence of this information used to pose additional risks for patent holders lacking information on the upcoming launches of generic drugs.
Continue Reading

Still Standing?: The Sometimes Rocky World Of Public Art

What distinguishes public art is the unique association of how it is made, where it is, and what it means.” The Association for Public Art

To many, the names “Rocky Balboa” and the “Italian Stallion” are as universal and front of mind as the names “Chuck Wepner” and the “Bayonne Bleeder” are regional and tucked into (or have already fallen out of or never made it into) the recesses of memory.  But this writer is not most people.  Though aspiring to be a child of the universe, I am at heart still a ten-year-old kid from Bayonne, New Jersey, at the south end of Hudson County who (in 1975) thought a guy from our neighborhood was about to pull off the greatest upset in sports history (at least in the pre-Miracle-on-Ice/before-Jimmy-V era).

You see, in the 9th round of the heavy weight championship fight that would inspire Sylvester Stallone to write Rocky (and Chuck to sue him on a right of publicity claim that later settled), Chuck Wepner knocked down Muhammed Ali (Really, you can see it for yourself).   Though Chuck’s dreams of wearing the crown and earning lots of money were short-lived after the GOAT got up furious, everybody in Bayonne (and wherever Stallone was) felt like a million bucks during those few moments of believing—including both the struggling actor and a ten-year-old that would later write for an IP blog.  But this isn’t about Wepner v. Stallone—this is about what curiously happened more recently when Chuck Wepner’s hometown wanted to honor him in various ways. Continue Reading

Descendants of Danish well-known scientist could not prevent the use of his name by a large Danish based stated-owned energy company

The descendants of a well-known Danish scientist could not prevent the commercial use of the name ØRSTED as a trademark, domain and company name by the Ørsted Group (former Dong Energy A/S).

The parties to the dispute

Before going into the details of the dispute, the parties are briefly presented in the following. H.C. Ørsted is a well-known Danish physicist and chemist who discovered that electric currents create magnetic fields, thereby establishing proof of a link between electricity and magnetism. This formed the basis for the electricity production we know and use today – especially in respect to more green energy sources. Continue Reading

Federal Circuit Reminds Us That Extrinsic Considerations Are Narrowly Construed in Trademark Matters

2018 saw a number of important trademark cases decided across the United States.  Two cases illustrated the similarities between genericness analysis and one of the likelihood of confusion factors considered by the Trademark Trial and Appeal Board (“TTAB”).  Royal Crown Co., Inc. v. The Coca-Cola Co., 892 F.3d 1358 (Fed. Cir. 2018) and Omaha Steaks Int’l, Inc. v. Greater Omaha Packing Co., 908 F.3d 1318 (Fed. Cir. 2018) showed that there is overlap in the analysis to be conducted under these two different legal theories and provides important lessons for practitioners to remember.

The first of the two cases decided was Royal Crown addressing genericness analysis.  At the TTAB, genericness is a two-step analysis: “First, what is the genus of goods or services at issue? Second, is the term sought to be registered . . . understood by the relevant public primarily to refer to that genus of goods or services?”  H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 990 (Fed. Cir. 1986). Continue Reading