General Global Week in Review 24 Apr 09 from IP Think Tank

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Highlights this week included:

ECJ gives Copad ruling on exhaustion and luxury goods; interpretation of Article 8(2) leads to new questions: Copad SA v Christian Dior couture SA, Vincent Gladel, as liquidator of Société industrielle lingerie (Class 46) (IPKat)

China’s biggest ever patent dispute comes to a multi-million dollar end: Chint v Schneider (IAM) (IP Frontline)

Consumers International deems UK’s copyright regime the worst out of 16 regimes surveyed (Ars Technica) (ContentAgenda) (Laurence Kaye on Digital Media Law) (IP Dragon)

Global – General

Managing patent offices as businesses, the patent backlog, Fordham and Pirate Bay IP Think Tank podcast 20 April 2009 (IP Think Tank)

World Intellectual Property Day 2009 – Promoting green innovation (WIPO) (Afro-IP) (IPKat)

Ten intangible/IP valuation myths revealed (IAM)

Fordham IP Law conference – IP private sector tests relevance of international policy organisations;(Intellectual Property Watch)

Fordham IP Law conference – Enforcement the prevailing IP trade policy priority for EU, US (Intellectual Property Watch)

Trust a missing ingredient in global IP enforcement policy (Intellectual Property Watch)

IP and sustainable technology debate centres on access and benefit-sharing (Intellectual Property Watch)

Remember – the relationship between the IP world and the mainstream media is unequal (IAM)

Stronger IP enforcement finds a home in bilateral trade agreements (Intellectual Property Watch)

Global – Trade Marks / Brands

The branding of financial entities in crisis: the BOA/Merrill Lynch example (IP finance)

What a difference a crisis makes – Walmart now most valuable brand according to 2009 Global 500 Report (IP finance)

Mary-Ellen Field explains why Nike brand has performed so poorly (IP finance)

Marks, brands and customer satisfaction (IP finance)

Global – Patents

Gurry to judges: We must work for changes to global patent treaty (Intellectual Property Watch)

OECD working paper ‘Who licenses out patents and why? Lesson learned from a business survey’ (Peter Zura’s 271 Patent Blog) (IAM)

Speakers discuss technology transfer for climate change; within academic settings (Intellectual Property Watch)

The ‘dirty little secret of patents’ is that most are worthless to their owners. Here is why (IP Asset Maximizer Blog)

Innovative methods for corporate legal managers to reduce IP counsel costs (IP Asset Maximizer Blog)

The malign and the benign of the transfer of know-how (IP finance)

How to avoid potential conflict when inventors want their innovations back (Technology Transfer Tactics)

50% of venture capital investment is lost: How your clients can improve these odds by using the right patent analytics (IP Asset Maximizer Blog)

New website, Intellogist, compares patent search systems (Patent Librarian’s Notebook)

Arab World

Copyright laws and trade industry in the Arab World (part I) (IP Frontline)


FCA: Owner of UGG brand for sheepskin boots wins summary judgment for trade mark infringement: Decker Outdoor Corporation Inc v Farley (Australian Trade Marks Law Blog)

Australia-Chile Free Trade Agreement now in force (IP tango)


Belarus amends rules on registration of IP pledges (IP finance)


Misconceptions about Canadian copyright term (Michael Geist)

World IP Day event on Parliament Hill (Michael Geist)

FCC considers applicability of one-year grace period to co-pending applications: Uview Ultraviolet Systems Inc v Brasscorp Ltd (International Law Office)

Following victory in US, Adidas files trade mark infringement claims against Payless ShoeSource in Canada (Canadian Trademark Blog)

Canadian Copyright Board’s decision on royalty to copyright collectives (Spicy IP)


China’s biggest ever patent dispute comes to a multi-million dollar end: Chint v Schneider (IAM) (IP Frontline)

More time for China on WTO Dispute Settlement Body ruling on IP (Intellectual Property Watch)

Potential of US copyright agenda to endanger freedom of expression in China (IP Osgoode)

Music copyright fees for television and radio announced (IP Dragon)

Disney schools go after customers early (China Hearsay)

 ‘China will reshape international intellectual property policy’: A Wechsler’s paper ‘Intellectual Property Law in the PR China: A Powerful Economic Tool for Innovation and Development’ (IP Dragon)

China rules in 2012 – including the IP world? (IPEG)


Revamp of Danish PTO English language site – invitation for help from users (Class 46)


ECJ gives Copad ruling on exhaustion and luxury goods; interpretation of Article 8(2) leads to new questions: Copad SA v Christian Dior couture SA, Vincent Gladel, as liquidator of Société industrielle lingerie (Class 46) (IPKat)

Anti-patent rally; criticism of practice of patenting biological processes – Munich (Intellectual Property Watch) (Patenting Lives)

AIPPI hosts debate between Prof B Hugenholtz and R Mollet over copyright term extension (IPKat)

OHIM statement ‘we haven’t registered Obama’ (IPKat) (Class 46)

Readers Digest releases results of European Trusted Brands 2009 survey (Class 46)

Applications to amend PARMIGIANO REGGIANO and BITTO PDOs; Andruty kaliski gains GI status for Polish baked goods (Class 46) (Class 46)


Bundespatentgericht finds Soviet Union’s former state symbol ‘CCCP’ not registrable – out of date indication of geographical origin can still be descriptive (Class 46)

German Patent and Trade Mark Office: DPMAregister to replace DPINFO from 30 April 2009 (Class 46)


The ‘Kurian’ effect: Increased efficiency at the Indian Patent Office (Spicy IP)

Intellectual Ventures comes to India and NO it’s not a ‘big bad patent troll’ (Spicy IP)

World IP Day: ‘Transparency’ letter to the Indian Patent Office (Spicy IP)

Court revisits issue of copyright societies’ rights (International Law Office)


Ireland’s tax proposal for IP investment and transactions (IP finance)


ITT marks remain on Israel trade mark register due to reputation in Israel: Ratfon Import Ltd v ITT Manufacturing Enterprises Inc (The IP Factor)


Supreme Court rules on secrecy protection orders in patent litigation (International Law Office)

Tokyo District Court: Is it the most difficult forum for a patentee? Two different views (Hal Wegner)


Motion to amend penal code on IP rights (International Law Office)


Morocco signs up for Trademark Law Treaty (Afro-IP)


District Administrative Court in Warsaw rules ‘heritage’ has no distinctive character in dispute between Zygmunt Piotrowski and Heritage Films (Class 46)

Some simplified seizures stats for 2008 (Class 46)

South Africa

High Court order restrains Eastwood(s) Tavern (with their consent) from ambush marketing the FIFA World Cup Event and infringing World Cup 2010 registered trade marks (Afro-IP)

CIPRO guidelines regarding lodgement of non-traditional trade marks (Afro-IP)

Draft regulations to South Africa’s ‘Bayh-Dole Act’ released (Afro-IP)


Motion to amend penal code on IP rights (International Law Office)

Supreme Court rules ‘Olimpic’ must be reserved for activities related to Olympic Games (Class 46)


Hermès wins record trade mark damages in Taiwan’s newly-established specialist IP Court (Managing Intellectual Property)

United Kingdom

UK pledges to fast-track green patents (Managing Intellectual Property)

Consumers International deems UK’s copyright regime the worst out of 16 regimes surveyed (Ars Technica) (ContentAgenda) (Laurence Kaye on Digital Media Law) (IP Dragon)

Disagreement over recipe gets in the way of attempt to obtain appellation of origin for Red Leicester cheese (IPKat)

Comments received by UKIPO on latest draft Annex on security rights in IP (IP finance)

United States
US Patent Reform

Patent worksharing, a critical missing integer (IP Frontline)

‘Means’ claiming déjà vu: Pressure Products Medical Supplies, Inc v Quan Emerteq Corp (Hal Wegner)

USPTO, Tafas and GSK seek extension for reconsideration (IP Watchdog)

US Patents

USPTO announces continuation of patent prosecution highway with IP Australia (RelatIP)

USPTO announces German patent prosecution highway program (Daily Dose of IP)

BusinessWeek: Cities yielding the most valuable US patents (Peter Zura’s 271 Patent Blog)

Financial woes continue to deepen at the USPTO (Peter Zura’s 271 Patent Blog) (IP Watchdog)

Revise patent examination to stimulate US economy (IP Watchdog)

An old patent examiner explains poor patent quality (IP Watchdog)

Chief Judge Holderman’s ten commandments for trying patent cases: (Chicago Intellectual Property Law Blog)

Third party submissions: Providing relevant references to the USPTO, part II (Anticipate This!)

USPC Class Order #1886 affecting subclasses in Class 439 – electrical connectors (Patent Librarian’s Notebook)

Intellectual Ventures still buying patents: Q&A with the purchaser-in-chief (The Prior Art)

Design patents: Sailing through the PTO part II (Patently-O)

Secondary patent market generating its own IP (Technology Transfer Tactics)

USPTO backlog: Patent pendency out of control (IP Watchdog) (IP Watchdog)

Prescriptions for drafting assertable claims (Patently-O)

US Patents – Decisions

CAFC: Narrowing amendment and prosecution history estoppels: Felix v American Honda (Patently-O) (I/P Updates)

CAFC remands patent pool misuse case: Issue of improperly sequestering alternative technology: Princo Corp v International Trade Commission (Patently-O) (ITC 337 Law Blog) (Hal Wegner)

CAFC relies on KSR (again): Tokyo Keiso Company v SMC Corporation (IP Law Blog)

CAFC: Scott Harris answers FAQ regarding In re Ferguson (Patently-O)

District Court N D Illinois: ‘Plurality’ construed consistent with other uses of term as greater than one: Callpod, Inc v GN Netcom, Inc (Chicago Intellectual Property Law Blog)

District Court E D Texas: Post-trial motions resolved – permanent injunction, ongoing royalties denied, JMOL, new trial denied: Mass Engineered design, Inc v Ergotron, Inc (

District Court E D Texas: Judgment entered (again) in Paice v Toyota – ongoing royalty set at ¼-½% (

District Court E D Texas losing confidence in PTO’s inter partes re-examination program: ROY-G-BIV Corp v FANUC Ltd et al (Peter Zura’s 271 Patent Blog)

District Court W D Washington: Defendant wins transfer to N D California: Retrieval Tech v Sybase (Washington State Patent Law Blog)

District Court Minnesota: Another District Court gets impatient with PTO delays: Field Logic Archery, LLC v G5 Outdoors, LLC (Peter Zura’s 271 Patent Blog)

ITC issues final determination affirming finding of patent infringement, s 337 violation against both respondents Lucky Litter and OurPet’s Company in matter concerning self-cleaning litter boxes (ITC 337 Law Blog)

ITC issues final determination affirming patent infringement, s 337 violation against Vizio, AmTran, Syntax-Brillian, Taiwan Kolin and others in investigation relating to digital televisions sought by Funai Electric (ITC 337 Law Blog)

ITC decides to review initial determination in investigation sought by Philip Morris against Alcesia, Emarket Systems, Jamen Chong, Tri-kita and others over cigarettes and cigarette packaging (ITC 337 Law Blog)

ITC: Initial determination terminating investigation regarding automotive parts based on settlement agreement between Ford Global Technologies and respondents (ITC 337 Law Blog)

ITC: ALJ Esse&xrsquo; issues public version of initial determination finding LG refrigerators do not infringe Whirlpool’s patent (ITC 337 Law Blog)

ITC: Initial determination of patent validity but non-infringement in matter brought against Phison, SMI and Skymedi concerning flash memory controllers, drives, memory cards and media players (ITC 337 Law Blog) (Philip Brooks’ Patent Infringement Updates)

US Patents – Lawsuits and strategic steps

CSIRO – CSIRO settles during trial: CSIRO v Buffalo et al and Microsoft v CSIRO (

j2 Global Communications – Motion to bifurcate and stay defendants’ non-patent counterclaims denied: j2 Global Communications Inc v Captaris Inc (

John Mezzalingua Associates – ITC denies Fu Ching Technical Industry Co’s and Gem Electronics’ joint motion for summary determination of noninfringement, invalidity, laches barring investigation (ITC 337 Law Blog)

MHL Tek – Motion to dismiss patent case for lack of standing granted: MHL Tek, LLC v General Motors Corp (

Pax Scientific – Pax accuses design firm Re:Thought of infringing mollusc-inspired rotor patents (Green Patent Blog)

US Copyright

Public Knowledge asks Copyright Office to help make works available to visually impaired (Public Knowledge)

Statutory damages in copyright law: Samuelson & Wheatland’s article copyright debate context and reform solutions (Public Knowledge)  

US Trade Marks – Decisions

District Court W D Washington remains strict in considering stipulated protective orders: American Automobile Association v AAA Insurance Inc (Seattle Trademark Lawyer)

TTAB precedential no 16: TTAB throws New England Patriots for another loss in ’19-0 THE PERFECT SEASON’ opposition: Kraft Group LLC v William A Harpole (TTABlog)

TTAB precedential no 15: Finding no evidence of bona fide intent to use mark in US, TTAB sustains opposition to 44(e) application: Honda Motor Co, Ltd v Friedrich Winkelmann (TTABlog)

TTAB affirms 2(e)(4) surname refusal following applicants failure to prove historical significance of DAIMLER for vehicles: In re Jaguar Cars Limited (not precedential) (TTABlog)

TTAB finds no trade mark rights in OEM who applied WASTEMAID mark at others’ direction: Anaheim Manufacturing Company v Joneca Corporation (not precedential) (TTABlog)

TTAB chops down evasive SILVER BIRCH applicant in three well-aimed strokes: In re Victoria Principal Productions, Inc (not precedential)(TTABlog)

TTAB affirms single creative work and mutilation refusals of CHOOSE TO BE RICH: In re Cashflow Technologies, Inc (not precedential)(TTABlog)

TTAB referees PTO translator tussle, accepts applicant’s translation of FIOR DI GRANO: In re Paolo Doino (not precedential)(TTABlog)

TTAB says ‘so longo, BADONGO’ in 2(d) opposition to PODANGO: ICL, Ltd v Podango LLC (not precedential) (TTABlog)

TTAB rules, non-precedentially, that fraud may be ‘cured’ post-registration: Zanella Ltd v Nordstrom, Inc (TTABlog)

US Trade Marks – Lawsuits and strategic steps

Frito-Lay – Frito-Lay opposes roller derby skater’s application to register CRACKERJACK: Frito-Lay North America, Inc v Bell (Seattle Trademark Lawyer)

Gallo – Gallo sues Seattle retailer for selling Spanish-made Gallo-branded pasta (Seattle Trademark Lawyer)

Geisha – No summary judgment for senior, unregistered mark over junior mark with intent to use filing: Geisha LLC dba Janponais v Tuccillo (Chicago Intellectual Property Law Blog)

Suleman, Nadya – Mother of octuplets, Suleman, applies for registration of OCTOMOM in international classes 016, 021, and 041; Super Happy Fun Fun files application for OCTOMOM in classes 009, 028 and 041 (Daily Dose of IP) (The IP Factor)



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