General Global Week in Review 10 Oct 2011 from IP Think Tank

Here is Think IP Strategy’s weekly selection of top intellectual property news breaking in the blogosphere and internet.


Highlights this week included:

EU free trade and copyright laws allow use of foreign decoders in pubs, rules ECJ: Football Association Premier League v QC Leisure (Out-Law) (1709 Copyright Blog) (IPKat) (IP Watch)

CAFC affirms limits on using litigation expenses to meet domestic industry requirement: John Mezzalingua Assoc v ITC (ITC 337 Law Blog) (Patently-O) (IPBiz) (ITC 337 Update)

CAFC: No litigation estoppel until all appeals exhausted in inter partes reexamination: Bettcher v Bunzl (Patently-O) (IPBiz) (WHDA) (Patents Post Grant)

Controversial IP rights treaty, ACTA, signed by 8 countries (Out-Law) (Patent Baristas) (Michael Geist) (Ars Technica)


Please join the discussion by adding your comments on any of these stories, and please do let us know if you think we’ve missed something important, or if there is a source you think should be monitored.



Global – General

Become mired in the day-to-day (No. 21 in our list of IP mistakes) (IP Think Tank)

A lesson in strategy (IP Think Tank)

Controversial IP rights treaty, ACTA, signed by 8 countries (Out-Law) (Patent Baristas)

Is ACTA enforceable? (International Economic Law and Policy Blog)

WIPO releases report on IP activity (Patent Docs)

The economic impact of IP: whatever happened to the rest of the world? (IPKat)

KEI Statement to WIPO GA on Advisory Committee on Enforcement (KEI)

KEI general statement to 49th WIPO General Assemblies, 27 September 2011 (KEI)

General statement of Brazil at WIPO General Assembly 2011 (KEI)

General Statement of South African Ambassador on behalf of the African Group at WIPO General Assembly 2011 (KEI)

Statement of Asian Group at WIPO General Assembly 2011: L&Es, AV treaty and broadcasting (KEI)

Bilateral (ish) agreements – Philippines and Singapore (IP Komodo)


Global – Trade Marks / Brands

Tiger Woods comes roaring back (IPKat)


Global – Patents

Litigation risk, tax rates and gains from patent enforcement: a new paper (IP finance)

KEI comments on work of Standing Committee on the Law of Patents (SCP), WIPO GA 2011 (KEI)

Patent deadlines (Inventive Step)

Fighting fire with fire: Strategies for controlling patent troll defense costs (Patent Law Practice Center)

Patent prices may slip, but boardroom and investor interest in IP is here to stay, experts say (IAM)

Featured Resource: (Patent Quality Matters)


Global – Copyright

Audiovisual performers take the stage – diplomatic conference to agree international treaty on rights of performers in their audiovisual performances (1709 Copyright Blog)

Abundance of sources: thoughts on terminology and change in copyright law (IPKat)



More plain packaging for tobacco products (

The future (?) for booksellers (



Ghent Court of Appeal decides infringement action Bollegraaf v Wagensveld (EPLAW)



Brazil scores! President Rousseff refuses certain FIFA requirements for staging 2014 Soccer World Cup (Afro-IP)



Canada signs ACTA: What comes next (Michael Geist)

Counterfeit goods: Significant statutory and punitive damages: Louis Vuitton Malletier v Singga Enterprises (Canadian Trademark Blog)

Changes to expert witness rules in patent litigation: What are the effects on current litigation in Canada? (IP Osgoode)

Debate over ‘hot-tubbing’ in patent litigation (IP Osgoode)



Countries that spend most on R&D: Where is China? (IP Dragon)

Chinese brands not cool in UK? ……… Overseas Chinese show the way (IP Dragon)

Netac president complains about unequal treatment of overseas patents (IP Dragon)

Yixing: Over 200 trademarks registered abroad (China Law Insight)

Registering trademarks in China. What’s in your (Chinese) name? (China Law Blog)

The US and other western democracies still enjoy huge advantages over China (IAM)



Parliament Committee urges EU Commission to support Print Disabilities Treaty (IP Watch)

EPO, European Commission renew commitment to unitary patent (IP Watch)

EU free trade and copyright laws allow use of foreign decoders in pubs, rules ECJ: Football Association Premier League v QC Leisure (Out-Law) (1709 Copyright Blog) (IPKat) (IP Watch)

Andale OHIM! (Class 99)

Component designs – General Court rules on informed user of a motor: Cases T 10/08 and T 11/08 Kwang Yang v OHIM – Honda (Class 99)

Two stripes, three stripes and OUT: General Court decision in Case T-479/08 adidas v OHIM – Patrick Holding (Class 46)

B&O speaker shape has appeal, so loses appeal: General Court decision in Case T-508/08 Bang & Olufsen v OHIM (IPKat) (Class 99)

General Court upholds OHIM’s refusal of PAKI as “contrary to public policy or to accepted principles of morality”: T-526/09 (Class 46) (IPKat)

The king is not dead, all hail king – General Court annuls OHIM rejection in T-99/10 TOFUKING (Class 46)

PASSION FOR BETTER FOOD lacks distinctiveness in Luxembourg: T-251/08 (Class 46)

General Court rejects BoA which held no likelihood of confusion between German word mark A and figurative CTM comprising letter A with two horns: T-174/10 (Class 46)


Equatorial Guinea

A to Z for African official IP website no. 17: Equatorial Guinea (Afro-IP)



Finland accedes to the London Agreement (EPO)


Hong Kong

Should Hong Kong (also) get its own “normal” patent system? (IP Dragon)



DIPP invites suggestions on reforming the Patents & Trademarks Office (Spicy IP)



Hebrew University does deal with General Motors giving them first right of refusal (The IP Factor)

Wrangler takes Crocker to the cleaners – trademark dispute over W pattern stitching on jean pockets (The IP Factor)



Philippines Customs Bureau and counterfeit goods (IP Komodo)


South Africa

ZAWCHC: Amarula decision on unfair advantage: Southern Liquer Company v SLD Liquor Manafacturer (Afro-IP)



Valencia court takes jurisdiction over fakes in transit (Class 46)



New Swiss Patent Court’s regulations and guidelines online (German versions only, translation will follow soon) (Kluwer Patent Blog)


United Kingdom

Damages cap introduced for Patents County Court rulings on copyright and trade mark disputes (Out-Law)

Online inspection of patent application files possible following law change (Out-Law)

ACID welcomes the latest government initiative to raise business awareness to avoid falling foul of current IP laws (Class 99)

PCC Page 40: IPOff in privileged company (PatLit)

Rhythmix: nadir or Nirvana for band names? (IPKat)


United States

US General

US signs ACTA (Ars Technica)

KEI comment on US signing of ACTA (KEI)

Private federal civil actions for trade secret infringement (Patently-O)


US Patent Reform

Big laws, small businesses: what will be the AIA’s impact (IP finance)

Sarnoff: Derivation and prior art problems with the new patent act (Patently-O)

America Invents Act: How the new law impacts your clients and your patent practice, part 2 (Patent Law Practice Center)

Does the recent U.S. patent reform prove that American politicians are the best that money can buy? (America-Israel Patent Law)

The New U.S. Patent Law: A Hybrid patent law combining a first-to-file and a first-to-invent (first-to-publish) (WHDA)


US Patents

USPTO receives 850 fast-track applications in first week (Patentology)

Quality continues to rise (Director’s Forum)

USPTO implements prioritized examination (track I) for patent applications (IP Spotlight)

Inter partes review estoppel to unmask anonymous filers? (Patents Post-Grant)

AUTM survey shows significant increases in university patent filings and issuances in FY2010 (Patent Docs)

Pending Supreme Court and en banc Federal Circuit patent cases (Patently-O)


US Patents – Decisions

Shift in grounds of USPTO reexamination rejection examined by CAFC: In re Stepan Company (Patents Post-Grant) (IPBiz)

CAFC tackles “consisting of” in In re Taylor (IPBiz)

Federal Circuit affirms limits on using litigation expenses to meet domestic industry requirement: John Mezzalingua Assoc v ITC (ITC 337 Law Blog) (Patently-O) (IPBiz) (ITC 337 Update)

CAFC: No litigation estoppel until all appeals exhausted in inter partes reexamination: Bettcher v Bunzl (Patently-O) (IPBiz) (WHDA) (Patents Post Grant)

CAFC discusses DJs in Powertech v Tessera (IPBiz)

CAFC: Winning by arguing both trade secret misappropriations and patent infringement: Atlantic Research Marketing Systems v Troy Industries (Patently-O) (IPBiz)

No CAFC en banc resolution of standard for preliminary injunctions: Kimberly-Clark v. First Quality Baby Products (Patently-O)

Supreme Court denies sham patent reexamination dispute: Lockwood v. Sheppard, Mullin, Richter & Hampton (Patents Post-Grant)

District Court C D California: TP tops Despatch as court rules up is not down: Despatch Industries v TP Solar (Green Patent Blog)


US Patents – Lawsuits and strategic steps

Late Allergan Reduction – “The allergans” requires all allergans not just one or more: Late Allergen Reduction v Dynarex (Chicago Intellectual Property Law Blog)

Mondis – Public statements by foreign defendant’s CEO reflecting “affront to the United States patent system” warrant strong enhancement of ongoing royalty: Mondis v Chimei InnoLux (Docket Report)

Trading Technologies – Court maintains existing protective order: Trading Techs v BGC Partners (Chicago Intellectual Property Law Blog)

Trading Technologies – Settlement and consent judgment: Trading Techs. Int’l v TradeHelm (Chicago Intellectual Property Law Blog)

Westinghouse Solar – New complaint filed over importation of integrated solar power systems (ITC 337 Update) (ITC 337 Law Blog)


US Copyright

Senators Harkin and Sanders send letter to USPTO supporting the Treaty on Copyright Exceptions for Blind and Visually Impaired (KEI)


US Trade Marks – Decisions

District Court W D Washington finds Glassbaby’s trade dress generic: Glassbaby v Provide Gifts (Seattle Trademark Lawyer)

District Court W D Washington pares back big jury award in Hendrix trademark dispute: Experience Hendrix v (Seattle Trademark Lawyer)

TTAB finds FIRE ISLAND primarily geographically descriptive of beer (TTABlog)

Finding PAVEWAY generic for laser-guided bombs, TTAB sustains Lockheed opposition versus Raytheon (TTABlog)

Test your TTAB judge-ability: Is this a case of trademark mutilation?: In re Mastronardi Produce, Ltd. (TTABlog)

An embarassment of ownership issues:  TTAB decision in Restifo v. Power Beverages, LLC (Property, intangible)


US Trade Marks – Lawsuits and strategic steps

Foamation – From decease to de-cheese: Foamation takes on the Grim Reaper (IPKat)

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