General Global Week in Review 17 May 2010 from IP Think Tank

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

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Highlights this week included:

General Court – Design for ‘instruments for writing’: Beifa wins on appeal: Beifa Group Co. Ltd v OHIM, Schwan-Stabilo Schwanhaüßer GmbH & Co. KG (IPKat) (Class 46) (Class 99)

ECJ will decide on European Patent Court System (EPLAW) (PatLit)

OHIM: Proposals for trade mark reform under fire (IP:JUR) (Managing IP)

Judge Michel: USPTO should receive $1 billion infusion of cash (Patently-O) (Inventive Step)

Global – General

Conference: Ownership and control of IP Rights (IPKat) (IPKat) (IPKat)

Global – Patents

Provisionally shooting yourself in the foot (IP Directions)

Patent valuation – we can’t get enough of it (IPEG)

Global – Copyright

WTO withholds comment on ACTA (Michael Geist)


The grace period and ‘reasonable trial’: Mack Innovations (Australia) Pty Limited & Anor v Rotorco Pty Limited & Anor (ipwars)


Brazil World Cup and Olympics (IP tango)


Nortel actively seeking buyers of its $1 billion patent portfolio (IAM)

‘Bad faith’ decisions bad news for trade-mark applicants? (IP Osgoode)


Illicit association and intellectual property (IP tango)


Government procurement tips: Don’t forget about IP (China Hearsay)

China amends the definition of ‘state secrets’ (IP Whiteboard)

Why I’m not losing sleep over the onslaught of Chinese global brands (China Hearsay)


Barranquilla 9th Circuit Civil Court dismisses lawsuit against Gabriel García Márquez and deceased brother Eligio Garcia, by a person who inspired two of their books (IP tango)

Czech Republic

‘Free Culture’ officially introduced in the Czech Republic (Creative Commons)


ECJ will decide on European Patent Court System (EPLAW) (PatLit)

The EPO picture is not as bleak as IAM has painted it, says the office’s president (IAM)

Patents are ‘the test ground’ for Europe’s commitment to a single market, says new report (IAM)

OHIM: Proposals for trade mark reform under fire (IP:JUR) (Managing IP)

ECJ: New ECJ reference bit of a Paine…Eva-Maria Paine v Standard Verlags GmbH, Axel Springer AG, Süddeutsche Zeitung GmbH, Spiegel-Verlag Rudolf Augstein GmbH & Co KG and Verlag M. DuMont Schauberg Expedition der Kölnischen Zeitung GmbH & Co KG (IPKat)

Lamy tells EU parliament no (for now) on ACTA (IP Watch) (Knowledge Ecology International)

EC’s ACTA negotiator Devigne: Rejected U.S. ‘blackmail’ (Michael Geist)

Green IP presentations from European Patent Forum 2010 (Innovationpartners)

OHIM: Something to w(h)ine about? Abadía Retuerta, SA v OHIM (IPKat)

General Court – Design for ‘instruments for writing’: Beifa wins on appeal: Beifa Group Co. Ltd v OHIM, Schwan-Stabilo Schwanhaüßer GmbH & Co. KG (IPKat) (Class 46) (Class 99)

New amending Regulation on wine sector designations (Class 46)

Chestnuts, olive oil gain GI protection (Class 46)

Hops, fowl and cake get GI protection (Class 46)

Possible protection in the European Union of four geographical indications from Colombia and Peru (IPKat)


Centralized IPR court one step closer (Class 46)


German Bundesrat passes resolution criticizing ACTA approach (Michael Geist)

Bundesggerichtshof: German courts have to take into account decisions made by EPO or other EPC contracting state courts concerning a substantially equal question: Xa ZB 10/09 (EPLAW)


Indian official expresses concern about ACTA (Spicy IP)

Delhi High Court over-turns IPAB order – grants T-Series trademark registration (Spicy IP)

Does India let politics erode patent protection? (IPEG)

Extension of copyright terms in the copyright amendments: The Copyright (Amendment) Bill 2010 (Spicy IP)


Another poor Israel trademark ruling; this time for Health Bread (IP Factor)


USPTO and Korean IP office to expand Patent Prosecution Highway Agreement (Patent Docs)


District Court The Hague: Patent concerning tool to remove hair extensions invalidated because non-inventive: Personality Hair Great Lengths v. Euro Hair Fashion Holding (EPLAW)

District Court The Hague: Onel case to be decided on written submissions (Managing IP)


How much exactly is worth in economic terms, copyright business in Peru? (IP tango)


Poland: White Eagle cannot be a trade mark (Class 46)


Supreme Court clarifies on when to start a civil trade mark infringement case (Class 46)


Svea Court of Appeal finds claim anticipated – construes claim on basis of terms of the claim, rather than purposive construction adopted by District Court: Pullman-Ermator v. Dustcontrol InternationalEPLAW) (

United Kingdom

EWHC (Pat): Infringement action won’t be stayed pending foreign decision in non-patent claim: Elmotech Ltd & Anor v Guidance Ltd & Anor (PatLit)

United States
US General

Director Kappos testimony to Congress (Patently-O)

Judge Michel: USPTO should receive $1 billion infusion of cash (Patently-O) (Inventive Step)

The US Reporting on IPRs – the Watch List (IP tango)

Industrial design in Canada and US – Richardson v. Stanley Works, Inc. (IPblog)

US General – Decisions

District Court E D Wisconsin: Can a trade secret licensee state a claim? Metso Minerals Industries, Inc. v. FLSmidth-Excel LLC (Property, intangible)

From the idea disclosure worst-case scenario files – Court of Appeals for the 2nd Circuit decision in Biosafe-One v Roberts Hawks (Trademark Blog)

US Patent Reform

2010 proposed patent reform legislation series – 35 U.S.C. § 102: First to File (Maier & Maier)

Patent reform news briefs (Patent Docs)

US Patents

Reducing patent pendency (Inventive Step)

US Patents – Decisions

CAFC: Inequitable Conduct: Forming the doctrinal boundaries: Taltech v. Esquel Enterprises (Patently-O)

CAFC: Claim construction reversed where limitation read out of claim: Randall May Int’l, Inc. v. DEG Music Prods., Inc. (Gray on Claims)

District Court N D California: Compliance with accused industry standard does not justify joinder of defendants in a single action: Finisar Corporation v. Source Photonics, Inc. et al.(Docket Report)

District Court C D California: Failure to identify intervening rights during discovery sinks prosecution laches defense: Ronald A Katz Technology Licensing L P v. Time Warner Cable Inc. (Docket Report)

District Court N D Ohio: Jury may consider tax returns as evidence of profit and loss: Rainworks Limited v. Mill-Rose Company (Docket Report)

District Court Arizona: In trial of declaratory relief case, defendant to proceed first and neither party may refer to itself as ‘plaintiff’: DuPont Air Products NanoMaterials L.L.C. v. Cabot Microelectronics Corporation (Docket Report)

District Court Florida orders Home Depot to pay patent holder $25m for stealing invention (BlawgIT)

US Patents – Lawsuits and strategic steps

Avago – ITC decides not to review initial determination in certain optoelectronic devices (337-TA-669) involving Avago and Emcore (ITC Law Blog)

Cross Match – Cross Match files new 337 complaint against Suprema and Mentalix regarding certain biometric scanning devices (ITC Law Blog)

Display Technologies Inc. – Early stage patent litigation: Display Technologies Inc. v. Universal Surveillance Corp. (Article One Partners)

INEOS – ALJ Luckern issues public version of remand determination in certain R-134a Coolant (337-TA-623) (ITC Law Blog)

US Copyright

Crisis in copyright registration for photographers: New SDNY case points out need for reform (Copyright Litigation Blog)

US Copyright – Decisions

Court of Appeals for the 2nd Circuit: An album is a compilation and is one work: Bryant v Media Right (Trademark Blog)

Can you sell copies of EDGAR filings? District Court S D New York decision in International Swaps and Derivatives Association Inc v Socratek LLC (Trademark Blog)

District Court E D Pennsylvania: Prejudgement interest granted on old ‘secret’ infringements: Graham v Haughney (Copyright Litigation Blog)

US Copyright – Lawsuits and strategic steps

Omega – Supreme Court: The ‘First Sale’ Rule: Costco Wholesale Corp. v. Omega, S.A. (Maier & Maier) (IP Law Blog)

Pacific Pictures Corporation – Superman: the never ending lawsuit: DC Comics v Pacific Pictures Corporation et al (Trademark Blog)

Taflove – District Court N D Illinois will not amend summary judgement based upon ‘new’ evidence: Ho v. Taflove (Chicago IP Litigation Blog)

US Trademarks

$20 million award to Versace: any details? (IP finance)

US Trade Marks – Decisions

CAFC reverses TTAB’s FRED ruling: Fee not needed with motion for leave to amend cancellation petition to add classes: Fred Beverages, Inc. v. Fred’s Capital Management Company (TTABlog)

TTAB reverses 2(d) refusal, finds AQ and PARADISE MAKEUP AQ not confusingly similar for cosmetics (TTABlog)

TTAB cancels CITYSTAY HOTELS registration as void ab initio: Hotel lodging services not rendered as of filing date (TTABlog)

11th Circuit: District Court erred in not considering incontestable status of SLASH IT! SALES EVENT registration – remand to trial: Caliber Automotive Liquidators, Inc v Premier Chrysler, Jeep, Dodge LLC (Trademark Blog)

9th Circuit: First-sale doctrine does not allow use of third-party logo on license plates: Au-Tomotive Gold Inc. v. Volkswagen of America, Inc., (Seattle Trademark Lawyer)

US Trade Marks – Lawsuits and strategic steps

Ontel – Turbo Snake as seen on TV v TV Brands Sink Wizard – Ontel files suit against Tele Marketers (Trademark Blog)

Subway – Subway threatens vendor for using ‘footlong’ to describe his hotdogs (BlawgIT)

Tomdan Enterprises – Tommy Burger trade mark infringement family affair: Tomdan Enterprises, Inc. v. Tommy’s Original Chili Factory, Inc. et al., (Trademark Blog)

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