The September issue of Managing Intellectual Property has a nice little article on IP in the Finance and Banking sectors.
I have assisted clients with IP Strategy in these fields for a while now, and I’m amazed at how exposed some of the big institutions in this sector are to IP risk. The article looks at one example – the risk of patent infringement suit from a patent ‘troll’. From experience, i can say that things have moved pretty rapidly in IP in these sectors in the past year, but there’s still some way to go.
Another indicator of the level of sophistication in the industry is the licensing practices and litigation currently ongoing over the use of stock exchange indices such as the S&P500, the Dow Jones, etc.
In the nicest possible way, and putting it mildly, it was always quite unlikely that Dow Jones and McGraw-Hill could possibly win the trade mark infringement case for a use of the index without the trade mark. They didn’t use the name of the index as a sign of origin, the index is not a product, nor a service of either company. No infringement, period. (Appeal dismissed by the Court of Appeals for the Second Circuit in June last year.)
A similar situation is playing out in Germany at the moment – Deutsche Borse is suing Commerzbank over the use of the term DAX (the German Stock Exchange Index). Commerzbank is possibly on shakier ground, as they want to use the same name for the index (in a neutral way) – held infringed at first instance, overturned on appeal and currently before the German Federal Supreme Court.
There seem to be some better ways to protect indices and the like than hoping for a penumbrum of protection from a trade mark.
What do you think?