General Global Week in Review 13 June 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:

Supreme Court affirms CAFC result but not ‘deliberate indifference’ standard: Global-Tech v. SEB (Patently-O) (ArsTechnica) (Inventive Step) (271 Patent Blog) (IPBiz) (Orange Book Blog) (Patent Docs) (IP Law Blog) (Ladas & Parry) (Patent Law Center) (IP Dragon) (ipwars) (IP Osgoode) (PatLit) (ipeg)

Federal Circuit en banc decision on inequitable conduct in prosecution of patent applications: Therasense v. Becton Dickinson (Ladas & Parry) (Patently-O) (Patent Law Practice Center) (WHDA) (Inventive Step) (Patent Docs) (IP Whiteboard)

Intellectual Property Office launches UK Peer to Patent Pilot (Patently-O) (IPKat) (IP Osgoode)

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

Highlights CIP Forum 2011(IP Think Tank) (IAM)

Which wall is your ladder on? (IP Think Tank)

Most people touting IP Strategy are selling snake oil – don’t believe them (IP Think Tank)

IAM names the world’s leading IP strategists (IAM)

Global – Trade Marks / Brands

How to ‘verb up’ your brand naming (NameWire)

Fifa scandal: the sponsors awaken (IPKat)

Global – Patents

Top NPE counsel Ray Niro attacks new Article One service (IAM) (IPBiz)

Global – Copyright

Final version of ACTA posted (Michael Geist)

Goodbye Cathy: Hello Kitty and Miffy settle copycat case (IPKat)


Cadbury objections to Nestle amendment too little, too late: Societe des Produits Nestle S.A v Cadbury Holdings Limited (Patentology)

Dispute over claim construction fails to limit discovery: Siemens Water Technologies Corp v GE Betz Pty Ltd (Patentology)

 ‘Mere Failure’ no excuse for missed convention filing deadline: Kmart Australia Limited v Joseph Joseph Limited (Patentology)

Government responses to ACIP enforcement reviews (ipwars)


Brazil: artistic and cultural works under one roof (IP tango)


Supreme Court clarifies role of geography in attacks on registration: Masterpiece v. Alavida (Seattle Trademark Lawyer) (IPblog) (IP Osgoode)

Chet Baker – ‘Pending Lists’ settlement a ‘Strong Financial Resolution’ for undercompensated artists (IP Osgoode)

Stanley Cup playoffs spark trademark activity (Canadian Trademark Blog)

Canadian Chamber of Commerce justifies fake counterfeit claims with more false numbers (Michael Geist) (Michael Geist)

AUCC complains to Copyright Board re AC refusal to provide transactional licenses (Excess Copyright)

Access Copyright claims pay-per-use licences create incentive to infringe (Michael Geist)


Shenzhen Chinese hop border Hong Kong for porn movie in three dimensions (IP Dragon)

China IP: The easy fix for U.S. economic woes? (China Hearsay)

The 2nd China Patent Counsel Conference (IP Factor)

Special IP Alert: Unauthorized Mickey Mouse spotted at Bird’s Nest (China Hearsay)


European patent court breakthrough as Commission plans for first EU patent grants in 2013 (IAM)

European Commission proposes single market for intellectual property rights (IP Osgoode)

That non-paper on the Unified Patent Litigation System: a helpful explanation (PatLit)

EU – Italy takes legal action against unitary patent protection (EPLAW)

Spain launches legal challenge to unitary European patent proposals ( (IAM)

Matching the problem with the methodology: The failure of the EC’s PatQual Report (Patently-O)

Should national utility model registrations always be independent of their corresponding European patents? (Kluwer Patent Blog)

Valuing a diluted brand: the Pierre Cardin challenge (IP finance)

EPO – Amendments possibly inadmissible in appeal proceedings if not filed during first instance proceedings: Kone Corporation (patentee) v. INVENTIO AG et al. (EPLAW)

Cheapflights: OHIM excludes likelihood of confusion between conflicting signs, due to very low degree of distinctive character of earlier marks: T-460/09; T-461/09  (Class 46)

General Court upholds opposition brought  by PEPE JEANS against PEPEQUILLO CTM application: T-580/08 (Class 46)

Royal treatment rejected in Luxembourg: T-397/09 (Class 46)

‘G’: Emram v OHIM: Guilty against Gucci (Class 46)

General Court: summer time I and II – ‘Space of Sound’ T-144/10; ‘Bahianas’ T-422/09 (Class 46) (Class 46)


Audi’s ad ‘imported from Detroit’? Eminem vs Audi (IPKat)

Smell-alike perfumes – the Bundesgerichtshof’s view (IPKat)

No fairy tale ending for Neuschwanstein trade mark (jiplp)


Breaking down the basics of the Javed Akhtar-IPRS royalty dispute (Spicy IP) (Spicy IP) (Spicy IP)

FTA’s and TRIPS flexibilities: An oxymoronic safeguard? (Spicy IP)

This trademark is expressly ours, says IE (Spicy IP)

Anu Malik’s tryst with ‘karma’ (Spicy IP)

Delhi High Court imposes costs of Rs. 3 lakhs on Dr. Wobben for withdrawing his appeals (Spicy IP)

Did the pre-Kurian Patent Office grant thousands of patents in violation of procedure? (Spicy IP)


IP judge caught red handed (IP Komodo)

SE Asian consumers, low cost and fake goods (IP Komodo)

Toyota wins cross class protection in the Supreme Court for LEXUS trademark (IP Komodo)


Service inventions – Report of a hearing behind closed doors (IP Factor)


ACTA is finalised and ready for signing, says Japan (

New Zealand

Kiwis unimpressed by trans-Tasman profession proposals (Patentology)


Dissolution of the Netherlands Antilles – Trademarks in Curacao, Saint Maarten and BES Islands (Ladas & Parry)


Nigerian IP goes online (Afro-IP)


Not an obvious clerical mistake – Red Bull (Class 46)

Numbers and numerals again (Class 46)

Churches struggle (Class 46)

South Africa

Intellectual Property Laws Amendment Bill discussions continue (Afro-IP)

Naledi Pandor’s budget motivation (Afro-IP)

South East Asia

Whither Madrid in SE Asia? (IP Komodo)


Custom reports 2010 statistics (Class 46)


Taiwan IP update: First Country that protects hologram in its Trademark Law (IP Dragon)


Tajikistan dances to the beat of the WPPT (1709 Blog)

United Kingdom

Intellectual Property Office launches UK Peer to Patent Pilot (Patently-O) (IPKat) (IP Osgoode)

UK Government releases report: ‘Intellectual Asset Management for Universities’ (IP Osgoode)

When appeal loses its appeal: CSC turn tables on VPL: CSC Media Group Ltd (formerly Chart Show Channels Ltd) v Video Performance Ltd (1709 Blog)

EWPCC: Use of company e-mail addresses could support a finding of joint tortfeasorship: Musion v. Activ8-3D (EPLAW)

EWPCC deals with unregistered designs: Access plus inspiration need not mean copying: Albert Packaging v Nampak (Class 99) (IPKat)

United States

US Patent Reform

Patent Reform Update: Will the House pass America Invents Act? (Patent Law Center)

Big push for patent reform to drive House debate (Patents Post Grant Blog)

Not necessarily patent ‘Reform’ (Patent Docs)

Patent reform – coming distractions (Patents Post Grant Blog)

Patent reform news briefs (Patent Docs)

America Invents Act: Quo Vadis? (Patent Docs)

Would America’s legislators really be so foolish? UPDATED (IAM)

US Patents

What Congress should do to improve the patent system, step 2 and 3 (Patenthink) (Patenthink) (Inventive Step)

14 District Courts selected for patent pilot program (IP Spotlight)

Decreasing patent claim counts (Patently-O)

Proposals at last week’s USPTO meeting on patent reexamination practices (Patents Post Grant Blog)

Prioritized examination of U.S. patent applications (Ladas & Parry)

US Patents – Decisions

Supreme Court affirms CAFC result but not ‘deliberate indifference’ standard: Global-Tech v. SEB (Patently-O) (ArsTechnica) (Inventive Step) (271 Patent Blog) (IPBiz) (Orange Book Blog) (Patent Docs) (IP Law Blog) (Ladas & Parry) (Patent Law Center) (IP Dragon) (ipwars) (IP Osgoode) (PatLit) (ipeg)

CAFC en banc decision on inequitable conduct in prosecution of patent applications: Therasense v. Becton Dickinson (Ladas & Parry) (Patently-O) (Patent Law Practice Center) (WHDA) (Inventive Step) (Patent Docs) (IP Whiteboard)

BPAI invalidates Ablaise patent…again: Dow Jones & Co., Inc. v. Ablaise Ltd. (Patents Post Grant Blog)

CAFC: Analogous art test as the new structure for non-obviousness determinations: In re Klein (Patently-O) (Patently-O) (Inventive Step)

CAFC vacates preliminary injunction where District Court applied incorrect claim construction: Kimberly-Clark v. First Quality Baby Products (Gray on Claims) (IP Osgoode)

CAFC: Pet-door patent dispute over jurisdiction clarified: Radio Systems Corp. v. Accession, Inc.  (IP Osgoode)

District Court E D Pennsylvania: Second District Court declares Qui Tam provisions of false marking statute unconstitutional: Rogers v. TriStar Products Inc. (Docket Report) (Gray on Claims)

District Court S D Illinois: False Marking: ‘The Court does not need to be notified every time a judge makes a decision in one of those cases’: Mudge v. Scotts Miracle-Gro Company (Docket Report)

US Patents – Lawsuits and strategic steps

Hydro-Quebec – Jumping the gun in Texas – It’s not just for patent trolls anymore (America-Israel Patent Law)

Remy – ALJ Rogers denies omplainant’s motion to compel discovery in Certain Starter Motors and Alternators (337-TA-755) (ITC Law Blog)

Thomson – ALJ Rogers Rules on motion to compel in Certain Liquid Crystal Display Devices (337-TA-741/749) (ITC Law Blog)

US Copyright – Decisions

District Court C D California: Music sampling – moral rights versus economic rights: Fahmy v. Jay-Z (Property, intangible)

US Copyright – Lawsuits and strategic steps

Morris, Sarah – Origami artists bring action against Morris in California (1709 Blog)

US Trademarks

Robin’s Egg Blue: For Tiffany, a color mark. For others, a fashionable color (Seattle Trademark Lawyer)

US Trade Marks – Decisions

District Court E D New York: No material differences in parallel market Russian sunflowers: Zip International Group, LLC. v. Trilini Imports, Inc. (The Gray Blog)

District Court N D Oklahoma: Abandoned, no surprise: Original Rex, L.L.C. v. Beautiful Brands Int’l, LLC (Property, intangible)

District Court Delaware: Think of the trademark too: Lingo v. Lingo (Property, intangible)

Unlicensed, confusing trademarks: Vincent’s of Mott Street, Inc. v. Quadami, Inc. (Property, intangible)

District Court N D Illinois: There has to be confusion: DeliverMedHoldings, LLC v. Schaltenbrand (Property, intangible)

TTAB precedential no. 13: In issue-packed 2(d) decision, TTAB cancels LA INDITA MICHOACANA registration for ice cream (TTABlog)

TTAB rules that Kappa Alpha Fraternity logo does not violate Red Cross statute (TTABlog)

TTAB: LOCKBACK generic for foldable utility knives (TTABlog)

TTAB rules that registrant may challenge cancellation petitioner’s standing, threatens sanctions: Kaplan v. Brady (TTABlog)

TTAB reverses refusal to register lacquered pet food container design, finding it inherently distinctive (TTABlog)

TTAB: The Hot Springs National Park trademark caper (IPBiz)

Test your TTAB Judge-Ability: Are GRAN SOL for Tequila and GRAN VINÃ SOL for wine confusingly similar?  (TTABlog)

US Trade Marks – Lawsuits and strategic steps

Glassybaby – Court dismisses Glassybaby’s trade dress claims with leave to amend (Seattle Trademark Lawyer)

Hershey – The colour orange: Hershey and Mars settle trademark dispute (IP Osgoode)

Kenneth Cole Productions – CAFC hears oral argument in LE TIGRE appeal from TTAB decision sustaining 2(d) claim (TTABlog)

US Polo Association – US Polo Association files suit against Ralph Lauren over logo (Likelihood of Confusion)

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