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General Global Week in Review 21 December 2009 from IP Think Tank

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

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Highlights this week included:

Star Wars producer Lucasfilm fails to win damages over unauthorised replicas of stormtrooper helmets – EWCA decision in Lucasfilm Ltd & Ors v Ainsworth & Anor (Managing Intellectual Property) (IPKat) (1709 Copyright Blog) (Trademark Blog) (Class 99)

USPTO releases patent pendency simulation tool – Patent Pendency Model (PPM) (IPKat) (Patently-O) (The IP Factor)

UN Climate Change Conference, Copenhagen – IP discussion (IP Watch) (IPKat) (Spicy IP) (IP Watch) (IP Watch) (WIPO)

Beyond ACTA: Proposed EU – Canada Trade Agreement intellectual property chapter leaks (Michael Geist) (Ars Technica)

Global – General

How many lawyers can one planet take? (IP Think Tank)

New force in Europe – EPLAW Patent Blog (IP Think Tank)

IP references left out of last-minute, weak global climate deal in Copenhagen (IP Watch)

UN Climate Change Conference, Copenhagen – IP discussion (IPKat) (Spicy IP) (IP Watch) (IP Watch) (WIPO)

Implementing the Development Agenda nationally: WIPO seminar (Jeremy de Beer)

WIPO traditional knowledge meeting stalls, but begins to breach trust gap (IP Watch)

Poverty in the developing world: Should TRIPs really be repealed? (IP Osgoode)

Protecting intangible assets from insider threats… (Business IP and Intangible Asset Report and Blog)

Global – Patents

New exchange, Intellectual Property Exchange International, can be a game-changer, but will need good patents to thrive (IAM) (Technology Transfer Tactics)


Bittersweet decision for Mars but Cadbury settles purple dispute: Mars Australia Pty Ltd v Sweet Rewards Pty Ltd (Managing IP) (ipwars)


Belgian Supreme Court prohibits fishing expeditions: Ineos Manufacturing Belgium NV and Ineos Services Belgium NV / Chevron Phillips Chemical Company LP (EPLAW)


Beyond ACTA: Proposed EU – Canada Trade Agreement intellectual property chapter leaks (Michael Geist) (Ars Technica)

Federal Court of Appeal: Trademark confusion: Possible future confusion not relevant: Masterpiece Inc v Alavida Lifestyles Inc (Canadian Trademark Blog)

Update on Trademarks – why you need good advice when arguing your case before TMOB: Pizza Spot v White Spot; Sea Miles v Air Miles (IPblog)

VANOC disrespects IP and creators in 2010 Vancouver Olympic Games – plan to have group pretend to perform prerecorded Vancouver Symphony Orchestra performance, demand to have Nicole Shoffield assign copyright in song before even considering it for inclusion in Olympic Games entertainment (Excess Copyright)

VANOC gets sour taste from Lululemon over new line of clothing named ‘Cool Sporting Event That Takes Place in British Columbia Between 2009 & 2011’ (Canadian Trademark Blog)


China’s protectionism promotes Chinese patents (IP Dragon)

SIPO in 30 years (Patent Agent in Hong Kong)

Starbucks is coming from Venus, copycats from St. Mars (IP Dragon)


An illegal whisky gives you more than a dishonest hangover – seizure of counterfeit whisky bottled in bottles purchased from recycling centres (IP tango)


ECJ to decide on ‘manufacturing fiction’ under Counterfeit Good Regulation (EPLAW)

ECJ: ‘Fair compensation’ referral: Entidad de Gestión de Derechos de los Productores Audiovisuales (EGEDA) v Magnatrading S.L (1709 Copyright Blog)

Latest news of EU patents and ugly acronyms (IPKat)

OHIM, WIPO sign Understanding on classification synergies (Class 46)

‘Move over, Dali…’ – but who’s next in line for resale royalty entitlements? (IPKat)

Latest batch of geographical indications approved: Marrone di Combai, Bemer Klaben, Cornish Sardines; Formaggio di Fossa di Sogliano, Wiśnia nadwiślanka (Class 46)

The beer name no one wants to protect – geographical indication cancellation application (Class 46)

PDO costs too high for Höllen Sprudel – another cancellation application (Class 46)

FRANDly EU decision in Rambus case (IPEG)

Recent EPC rule changes restrict filing of Divisional Applications (Patents4Life)


Tribunal de Grande Instance finds infringement in Evac c.s. v. Jets Vacuum (EPLAW)

Tribunale de Grande Instance (Paris) exclusive jurisdiction for patent actions brought in France (EPLAW)

Abode to go? – Cassation Court’s criminal chamber orders destruction of 3,123 Abode of Chaos works of art – copyright questions (1709 Copyright Blog)


Federal Supreme Court: incidental introduction of new document and due process in opposition proceedings (EPLAW)

Federal Supreme Court: Prior use right and contractual arrangements between inventor and alleged infringer (EPLAW)

Hong Kong

Giorgio Armani not amused by Giormani of Hong Kong (IP Dragon)


Madras High Court embarrassed over failure to reimburse ‘scientific advisors’ appointed under s 115 Patents Act (Spicy IP)

Protecting Basmati not everyone’s cup of tea? NGO objects to APEDA’s requirements (Spicy IP)

Liberalisation of foreign technology agreement policy (Spicy IP)

Copyright Board: Need for speed? – still awaiting decision on radio royalties (Spicy IP)

Lok Sabha passes Trade Mark (Amendment) Bill 2009 – finally! (Spicy IP)

IP matters lead the way for India’s first e-court (Spicy IP)

Copyright, arbitration and a feted film: Tandav Films v Four Frames (Spicy IP)


Israel patent office goes green! (The IP Factor)

‘Laboratoire Remede’ and ‘Remede Spa’ considered generic (The IP Factor)

Supreme Court rules that usage of ‘Shemesh’ (Sun) by competing restaurant is kosher (The IP Factor)

Israel patent office publishes decision on design for kerb-stone (IP Factor)


Italy scores three more PDOs – Marrone di Caprese Michelangelo, Pomodorino del Piennolo del Vesuvio, Crudo di Cuneo (Class 46)

Lavazza to Nespresso – we were in Heaven first (Class 46)

WIPO announces that Italy has given a contribution of €1 million, to cement good relations between UN agency and the home of some of the world’s tastiest geographical indications (IPKat)


Liechtenstein signs up for Singapore Treaty on the Law of Trade Marks, effective 3 March 2010 (Class 46)


Hague District Court: Unregistered license can form basis of enforcement action against third party if party is aware of its existence: Street Surfing LLC v Alcom Computer Products BV (EPLAW)

Hague District Court refuses to stay accelerated patent proceedings to await outcome of pending US discovery: High Point Sarl v KPN BV (EPLAW)

New Zealand

NZ holds ACTA briefing but reveals little (Michael Geist) (Michael Geist)


The battle of TSGs: possible conflict between Poland and Czech with regard to protection of smoked sausages (Class 46)


Russia – pledging stars (Class 46)

Advert for a ‘Chrissmassy deal’? Only if you pay 300,000 roubles first (Class 46)

South Africa

Nothing reconciliatory about this costs order! Century City Apartments Property Services CC and Another v Century City Property Owners Association (Afro-IP)


A branding miracle from: from bullring to shop windows (Class 46)


Ukrainian Higher Economic Court denies Ferrero’s claim on Raffaello trade mark infringement: Group Ferrero v Landrin (Class 46)

United Kingdom

EWHC on compensation for employee inventors whose patents are particularly beneficial to employers: Shanks v Unilever plc & Ors (IPKat)

Star Wars producer Lucasfilm fails to win damages over unauthorised replicas of stormtrooper helmets – EWCA decision in Lucasfilm Ltd & Ors v Ainsworth & Anor (Managing Intellectual Property) (IPKat) (1709 Copyright Blog) (Trademark Blog) (Class 99)

UK launches copyright consultation on exceptions (Michael Geist)

Kellogg’s to protect against ‘corn fakes’ – UK trial of laser branded individual corn flakes (IP Whiteboard)

United States
US General

US government, industry deemphasise multilateral system in enforcement push (IP Watch)

US General – Lawsuits and strategic steps

Amsted Industries – ITC not to review initial determination of s 337 violation by reason of trade secret misappropriation in investigation of certain cast steel railway wheels (ITC 337 Law Blog)

US Patent Reform

Patent reform efforts opposed by small business group (Patent Docs)

US Patents

USPTO asks for comments to improve patent quality (Patently-O) (Patent Docs)

USPTO releases patent pendency simulation tool – Patent Pendency Model (PPM) (IPKat) (Patently-O) (The IP Factor)

Give a little, get a little: new PTO program aims to speed examination (Patents4Life)

USPTO rules on special status petitions for green technology patent applications (IP Updates)

US Patent Office gains access to traditional knowledge digital library (TKDL) (Patent Baristas)

If there are no sources of proof in the E D of Texas, expect to transferred: In re Hoffman-La Roche Inc (Filewrapper)

Patent reexamination and litigation in the N D Illinois – avoiding malpractice claims (Chicago Intellectual Property Law Blog)

US Patents – Decisions

CAFC: The missing schedule: Tyco Healthcare v. Ethicon Endo-Surgery (Property, intangible)

CAFC: The presumption of irreparable harm?; The interplay between reexaminations, preliminary injunctions and stays of litigation: Automated Merchandising Systems (AMS) v. Crane Co. (not precedential) (Patently-O) (Patently-O)

CAFC affirms ITC’s final determination of no s 337 violation in Tillotson Corporation v ITC (ITC 337 Law Blog)

Judge versus jury (again): Who should decide the question of obviousness? Acushnet Co. v. Callaway Golf Co (Patently-O)

District Court E D Texas: In re TS Tech, In re Genentech and In re Volkswagon do not provide ‘new grounds’ for transfer of venue: Financial System Tech (Intellectual Property) Pty Ltd et al v Oracle Corp (Docket Report Blog)

District Court E D Texas: Summary judgment of noninfringement granted in MHL Tek, LLC v Nissan et al (

Determination of commercial offer for on-sale bar does not include course of dealing or industry practice: Honeywell Intl Inc., et al. v. Audiovox Corp.(Docket Report Blog)

BPAI: Examiner rejects application for failure to comply with best mode requirement: Ex Parte Lin (Patently-O)

District Court N D Illinois: Patent disclosure includes the specification and the drawings: Minemyer v. B-Roc Reps., Inc (Chicago IP Litigation Blog)

Plaintiff’s failure to perform pre-suit investigation including ‘essential testing’ supports awards of attorneys fees: International Intellectual Management Corporation v. Lee Yunn Enterprises, Inc. (Docket Report Blog)

District Court E D Texas: Assignment executed by incorrect entity nevertheless conveyed ‘substantial rights’ to patent sufficient to vest plaintiff with standing: Southwest Efuel Network, L.L.C. v. Transaction Tracking Technologies, Inc. (Docket Report Blog)

ITC issues opinion on remedy, public interest and bonding in LCD modules investigation involving Sharp (complainant) and Samsung (respondent) (ITC 337 Law Blog)

US Patents – Lawsuits and strategic steps

Amkor – ITC to review supplemental initial determination in investigation of Carsem’s import and sale of certain encapsulated integrated circuit devices (ITC 337 Law Blog)

Applied Energy – Applied Energy loses home court advantage in trade secret case against Solar Liberty Energy Systems over alleged breach of non-disclosure agreement (Green Patent Blog)

eInstruction – Investigation concerning certain collaborative system products terminated based on settlement between eInstruction and Quomo HiteVision (ITC 337 Law Blog)

John Mezzalingua Associates – ITC to review initial determination and requests comment on interpretation of s 337(A)(3) as it pertains to licensing in certain coaxial cable connectors (ITC 337 Law Blog)

Knowles Electronics – ITC institutes investigation of import and sale of allegedly patent infringing silicon microphone packages by Analog Devices (ITC 337 Law Blog)

Kolcraft – Court keeps case, deferring to plaintiff’s chosen forum: Kolcraft v Chicco USA (Chicago Intellectual Property Law Blog)

Konami Digital Entertainment – False start on motion for summary judgment of indefiniteness: Konami Digital Entertainment Co, Ltd. et al v. Harmonix Music Systems, Inc. et al (

Whirlpool – ITC to review remand initial determination of no s 337 violation in investigation of LG concerning refrigerators and components thereof (ITC 337 Law Blog)

US Copyright

US at WIPO: Committed to better copyright exceptions (Michael Geist)

Hearst magazines run anti-counterfeiting ad campaign (Seattle Trademark Lawyer)

US Copyright – Decisions

District Court E D New York: Damages denied on counterfeit default: pointer on proving the obvious: Chanel, Inc and Louis Vuitton Malletier, SA v Michael Jean-Louis (The Trademark Blog)

District Court S D New York: Penguin prevail summary judgment regarding interpretation of contract with Steinbeck Estate regarding ‘The Pearl’ (The Trademark Blog)

US Trademarks

Madrid Protocol: Challenges facing trademark filers (Director’s Forum)

Trademark Public Advisory Committee issues its 2009 Annual Report (TTABlog)

Almost half of counterfeit buyers progress to real thing, says study (Out-Law)

AP article highlights Christian-themed trademark ‘parodies’ (Seattle Trademark Lawyer)

US Trade Marks – Decisions

District Court S D New York: MISS USA fails to enjoin MISS ASIA USA: Miss Universe LP, LLLP v Virgelia B Villegas and Virgelia Productions, Inc (The Trademark Blog)

TTAB: Applying foreign equivalents, TTAB deems AZUCAR MORENA generic for brown sugar: Marquez Brothers International, Inc v Zucrum Foods, LLC (not precedential) (TTABlog)

TTAB: DICK’S NUTS survives summary judgment attack; bona fide intent remains at issue: American Sports Licensing Inc v Seth L Bent (not precedential) (TTABlog)

TTAB: PEDRO PAN Merely descriptive of charitable services: Yvonne M Conde and Oscar B Pichardo v Operation Pedro Pan Group, Inc (not precedential) (TTABlog)

TTAB: Fame of Snoop Dogg overwhelms SNOOPTUNES applicant in 2(d) opposition: Calvin Broadus v Kristyn Kelley Allen dba Passive Devices (not precedential) (TTABlog)

TTAB: MANWEAR Merely descriptive of retail men’s clothing: In re Webid Consulting Ltd (not precedential) (TTABlog)

TTAB: Does the parent own the mark?: In re Federal Express Corporation (not precedential) (Property, intangible)


US Trade Marks – Lawsuits and strategic steps

Boston Red Sox – Boston Red Sox and Chicago White Sox oppose GAMESOX for vehicle mirror cover: Boston Red Sox Baseball Club Limited Partnership and Chicago White Sox, Ltd. v. S & C Concepts, LLC (TTABlog)

Diageo Brands – Parody case: infringement and dilution of the JOHNNIE WALKER Black Label: Diageo Brands B.V. et al v. Vineyards et al. (Las Vegas Trademark Attorney)

North Face – Parody case: North Face opposes attempt to register its mark: North Face Apparel Corp. v Williams Pharmacy, Inc., et al. (Las Vegas Trademark Attorney)

Yeshiva – Yeshiva (Albert Einstein College of Medicine) v a possibly imaginary Albert Einstein University (The Trademark Blog)

Vatican City

Catholic News Agency declares that any reference to person or office of Supreme Pontiff or use of title ‘Pontifical’ must have authorisation from Holy See (Innovatiopartners) (The IP Factor)


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