Intellectual Property

“UK: How To Protect Your Design Rights”

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Source: Gowling WLG via mondaq.com 14 September 2017

When it comes to design protection, there are different rights – all of which can be used to protect different aspects of a design.

In this podcast/transcript, John Coldham of Gowling WLG discusses practical considerations in getting a ‘design for life’ and what you can do with it once you have it.

Source article here

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Chinese Court rules that decorative patterns similar to Chivas’s trademarks constitute infringement

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Source: Wanhuida Peksung via International Law Office, 4 September 2017

“The Beijing High People’s Court recently granted protection to the three-dimensional (3D) bottle and device marks covering Chivas Holding (IP) Limited’s Chivas Regal label and packaging and held that the accused product, which featured a decoration similar to Chivas’s trademarks, constituted trademark infringement.”

“Brand owners should strengthen their Chinese trademark portfolio by registering not only their name, but also the label, packaging and shape of their bottles as 3D trademarks.”

Source article here

 

A Rum Do

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Source: Marks & Clerk via mondaq.com, 11 July 2017

“Captain Morgan has not found imitation to be the sincerest form of flattery and in a swashbuckling face-off, has forced Admiral Nelson to retreat from Canadian liquor store shelves.”

“While the Court found there was little scope for confusion between the wording ADMIRAL NELSON’S and CAPTAIN MORGAN when spoken, a likelihood of visual confusion between the fanciful depictions of an historical naval figure wearing a nautical uniform with buttons and a cape as represented by each of the ADMIRAL NELSON’S and CAPTAIN MORGAN characters was considered to exist.  The Court concluded there would be a likelihood of confusion from the perspective of the somewhat hurried consumer who would not pause to examine the points of similarity or difference between the marks. This “illusion of sameness” would lead to confusion as to source.”

Source article here

 

Specialist Intellectual Property Firm Wynne-Jones Opens London Office

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This launch comes as the firm has achieved double digit growth for the third year running.

The continued popularity of entrepreneurial business trends such as crowd-funding has led to a surge in interest in brand and invention protection generally and increased client opportunities for Wynne-Jones IP.

The new London office will also accommodate the UK Head Office of Aipex BV, the pan-European IP law firm that Wynne-Jones IP owns in conjunction with a small number of other prominent European IP firms.

The office will be headed up by Partner Victor Caddy, who has more than twenty years’ experience as a Trade Mark and Design Attorney and Litigator.

Commenting on the opening of the London office, Caddy said: “A year ago, we set out to launch our first London office within four years and have achieved this in less than twelve months.

“This is thanks to the high quality of the team we have managing our business planning, and the dedication and enthusiasm of all our staff.

“Aipex is a ready-made solution to intellectual property challenges of Brexit, and, for Aipex to open a London Head Office at this time is a no-brainer”.

Wynne-Jones website here

Trademarks – “A BrewDog’s Breakfast”

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Source: ENSafrica via monaq.com

This article is of local interest to me.

“The recent storm in the UK about Scottish craft brewing company BrewDog’s decision to invoke its trade mark rights against much smaller rivals highlights the difficulties and negative repercussions that can arise when it comes to enforcing trade mark rights.

So, when BrewDog started pursuing much smaller companies on trade mark issues it became a major story, with people seeing their actions as hypocritical.

The allegation that it was acting like ”just another multinational corporate machine” stung, and the company made it known that one of the two founding partners would personally take care of the situation.

It went on to blame its lawyers for the whole debacle, claiming they had been overzealous and stating that: ”Although they wear suits and are mostly sensible folks, lawyers can sometimes go a bit crazy and forget the kind of business we are and how we behave. They are sorry for their actions and we have put them on washing up duty for a week.”

Trade mark rights are, of course, enormously important, and they should be enforced. But a thoughtful and nuanced approach is often required.

In the case of a company that has a very particular image (like BrewDog), that approach should include a consideration of the brand’s DNA.”

Source article here

 

Great Technology! Pity About the Value.

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Two interesting & informative articles from Australian IP Specialists Griffith Hack.

“In a corporate environment preoccupied with the risks and opportunities of disruptive technology, the inadequacies in investment appraisal are alarming. Many early stage tech companies starve through lack of funds. Others feast on funding before fading to irrelevance. Some thrive.”

In an attempt to pick winners, some investors use a simple formula, which incorporates an assessment of the target’s IP.

The first article below asks how the quality of IP protection can be assessed, considering a range of legal rights.

The second is a case study involving a mining equipment company with a patent portfolio protecting novel technology, the benefits of which had been assessed through engineering studies. In order to articulate and quantify its economic potential, the company commissioned an independent valuation of its core asset: its patent portfolio.

The two articles are here:

Great Technology! Pity About the Value.

IP valuation & capital raising

Amazon wins $1.5 billion transfer pricing dispute in US Tax Court

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Source: mental.com, 24 March 2017

“Amazon.com Inc on March 23 won a US Tax Court case, fending off IRS transfer pricing adjustments relating to a cost-sharing agreement (CSA) buy-in payment. The transfer pricing adjustments would have increased the online retailer’s taxable income by more than $1.5 billion in 2005 and 2006.

The case concerns a 2005 CSA pursuant to which Amazon.com, Inc., and its domestic subsidiaries transferred to the Luxembourg subsidiary intangible assets required to operate Amazon’s European website business.

Siding with Amazon, the Tax Court rejected the IRS’s recalculation of the buy-in payment, concluding it was arbitrary, capricious, and unreasonable. The CUT method, used by Amazon, was the best method to calculate the CSA buy-in payment, the Court said.”

Source article here

 

What’s in a name? (Quite a lot really if it’s yours and you want to register it as a trademark.)

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Source: Barker Brettell LLP via Mondaq

“Trading under your name is an appealing idea, especially in the fashion world,  where designers frequently use their own names as brands. A personal name is the ultimate symbol of identity and using that alongside a business can inject a much-needed sense of personality.

So if your name is valuable, or has the potential to be valuable, it is worth thinking about protecting it as a trade mark.

However, use of your name as a trade mark can cause problems later down the line. It is important to remember that although the goodwill which you have built up is attached to your name, it is entwined with that name alone rather than with you as an individual. Read the rest of this entry »

IP Infringement – Intermediary liability in physical and online markets

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Source: ALTIUS via International Law Office, 13 March 2017

“ECJ case law makes it clear that any intermediary whose services are used by a third party to infringe an IP right can be ordered to take measures to end the infringement and prevent further infringements. Although an intermediary may not be required to exercise general and permanent oversight over its customers, it may be forced to take measures to help prevent the same market trader from committing fresh infringements, subject to a recurring penalty payment. Liability can be waived only if service providers, whether offline or online, prove that they have acted expeditiously on receiving information about the illegal character of the acts being committed by third parties.

Online liability remains a hot topic, especially when it comes to copyright. In the context of its Digital Single Market Strategy, the European Commission is discussing the role and responsibilities of online platforms and intermediaries when it comes to tackling copyright infringing content. The commission has addressed the problem of rights holders facing significant difficulties when negotiating with online service providers which store and provide access to large amounts of protected content uploaded by their users, and has suggested imposing an obligation on user-generated content platforms to work towards an agreement with rights holders and to put in place appropriate and proportionate content identification technologies.”

Source article here

 

Canada: IP law and practice: 2016 highlights

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Source: February 06 2017 Contributed by Smart & Biggar/Fetherstonhaugh via International Law Office

  • Patent and trademark agent privilege recognised
  • Comprehensive Economic and Trade Agreement signed
  • Geographically descriptive trademarks law and office practice clarified
  • Test for obviousness-type double patenting clarified
  • Injunctions for retailers of television set-top boxes
  • Norwich order in reverse class action for copyright infringement
  • Issue payment underpayment does not render patent invalid
  • Public display of non-French trademarks in Quebec
  • Competition Bureau releases revised IP enforcement guidelines

Source article here