General Global Week in Review 25 January 2010 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:

EWHC (Ch): Vodkat falls foul of extended passing-off: Diageo v Intercontinental Brands (IPKat) (Class 46) (IP finance)

Director Kappos on USPTO’s (lack of) funding (Patently-O) (Inventive Step) (IAM)

Global – General

ACTA negotiations, round 7 agenda posted (Michael Geist) (IP Watch)

Adding up the explanations for ACTA’s ‘shameful secret’ (Ars Technica) (IPKat)

Global – Trade Marks / Brands

The saga of automobile brands – then and now (IP finance)

Coke, Apple: When branding and naming isn’t branding and naming (Name Wire)

Global – Patents

Inovia’s new blog publishes information about global patent filings (IP Spotlight)

Collaboration and IP rights: but what about those transaction costs? (IP finance)

General Patent Corporation acquires IPOfferings LLC (IP Frontline)

Boliven withdraws from the field (Patent Librarian’s Notebook)

How Sun Tzu would outflank patent trolls (IPEG)

How patent vulnerability impacts valuation (IP Asset Maximizer Blog)

Global – Copyright

Copyright, melody and permutations (SLAW)


Diego Maradona: an image that sells (IP tango)


Proposed changes to inventive step/non-obviousness in Australia (Patent Baristas)


BOIP ruling – Onel vs Omel – when ‘genuine’ isn’t ‘genuine’ (IPKat) (Class 46)


FIFA sets a broadcast regulation and gets the disapproval of the Brazilians: Will the public gathering for the 2010 World Cup be at stake? (IP tango)


EU’s IP negotiating strategy with Canada leaks: Calls 2009 copyright consult a ‘tactic to confuse’ (Michael Geist)

Submissions on Canada-EU trade deal: Canadian publishers’ council seek term extension, database protection (Michael Geist)

US Ambassador to Canada: No link between copyright and buy American laws (Michael Geist) (Michael Geist)

Federal Court: Book titles unregistrable as trademarks in Canada: Drolet v. Stiftung Gralsbotchaft (Canadian Trademark Blog)

CIPO updates: Patents and trademarks (IPblog)

Ambush marketing: The names that cannot be spoken… Part 2 (IPblog)

The good, the bad and the ugly: Recent Canadian bankruptcy legislation amendments and their impact on intellectual property licensing (IP Osgoode)


China’s new Supreme Court interpretation of scope of designs (Class 99)

China sends Rio trade secret infringement and bribery case to prosecutors (China Blawg)

Challenges in IPR arbitration in China (China Law Insight)

China’s lack of IP protection – overrated, overrated (China Law Blog)

Costa Rica

US to Costa Rica: No sugar access without copyright reform (Michael Geist)

Czech Republic

Czechs keep cheese GI, to disappointment of Slovakia (Class 46)


Ethiopia aims to capitalise on its coffee trade mark experience – plans to register GI protection over various products (Afro-IP)


EU Commissioner-Designate Kroes on ACTA: ‘They have to move to our side’ (Michael Geist)

EPO staff cry foul over presidential vote (IAM)

The EU meeting with Latin American: will May be the month to see Association Agreements between the two? (IP tango)

ECJ sets aside partial refusal to grant CTM for ‘Vorsprung durch Technik’ (progress through technology): Audi AG v OHIM (Class 46) (IPKat) (The IP Factor)

ECJ: Davidoff criteria for exhaustion apply also if goods were first marketed within the EEA: Makro Zelfbedieningsgroothandel CV and others v Diesel SpA (JIPLP)

Time for a general grumble – General Court decisions missing images, no English version: G-Star Raw Denim kft v OHIM, ESGW Holdings Ltd; and Goncharev v OHIM (IPKat)


Finland: Union logo reincarnated (Class 46)


Tintin and the French copyright affair (IP Whiteboard)

French appellate court upholds Raindance claim – protection of shower head designs in France (Class 99)


BGH rules in the Opel/Autec toy car case (Class 46) (IPKat)

Most embarrassing cease and desist letter ever? (Class 46)


512,000 packs of counterfeit cigarettes seized at the Piraeus Customs (Class 46)

Hong Kong

Family feud in Hong Kong: Chow Sang Sang trademark dispute (China Law Insight)


Delhi High Court: ITC loses TM dilution case against Philip Morris (Spicy IP)

Latha Nair on 3 Idiots and contractual fairness (Spicy IP)

IP ownership in an employment context: patents vs copyrights: Upaid v Satyam (Spicy IP)

The Science and Engineering Research Board Act 2008 (Spicy IP)


Major changes in Israel patent prosecution (JMB, Fa©tor & Co)

Israel Patent Office issues draconian duty of disclosure directive (IP Factor)

Recent rulings illustrate and clarify Israel’s design regulations (JMB, Fa©tor & Co)


ARIPO grows – Liberia is newest member (Afro-IP)


The use of images of ancient pieces and buildings in Mexico (


The Hague District Court: Invalidity and infringement proceedings: WDS Luxe B.V. v. Joseph Spanjers and Spant Best B.V. (Plameco) (EPLAW)

The Hague District Court: Cease and desist declaration only binding to the parties, not a natural or legal person signing on behalf of one of the parties: Metaco Inc. v. Schelfhaut N.V. (EPLAW)

The Hague District Court: Ex parte injunction granted: Street Surfing LLC v. X, The Hague District Court, The Netherlands (EPLAW)


Polish court rules on trade mark use (Class 46)

Polish case law on industrial designs (Polish IT & IP Law News)

Cheshire Cat: a geographic indication? (Class 46)

Syria accedes to Madrid Protocol (The IP Factor)


Is Uganda’s proposed anti-counterfeit legislation bad milk? (Afro-IP)

United Kingdom

EWHC (Ch): Vodkat falls foul of extended passing-off: Diageo v Intercontinental Brands (IPKat) (Class 46) (IP finance)

Think twice before copying yourself! Burrows v Smith (1709 Copyright Blog) (IPKat)

UK MP’s frozen out of ACTA (Michael Geist) (IPKat)

HMRC on the attack on image rights? (IP finance)

The UK IP Office issues a Virgin trademark ruling that contrasts the Israel approach (IP Factor)

EWHC (Pat): Article 27 (to prevent parallel proceedings in different member states) requires flexible approach to meaning of ‘same parties’: Mölnlycke Health Care AB (MAB), Mölnlycke Health care Limited (MUK) v. BSN Medical Limited and BSN Medical GmbH (EPLAW)

United States
US General

Year ahead: Range of IP policy issues may see action in United States in 2010 (IP Watch)

Conan O’Brien wants to keep his IP (Daily Dose of IP)

Invent Help sues patent blogger, Gene Quinn (The Invent Blog)

US Patents

Director Kappos on USPTO’s (lack of) funding (Patently-O) (Inventive Step) (IAM)

When the examination process goes south (Peter Zura’s 271 Patent Blog) (Just an Examiner) (Anticipate This!)

Solution: Patent Expiration Challenge (12:01 Tuesday)

Wikipedia references increase in US patents (IP Osgoode)

The PCT task force (IP Frontline)

Ex parte Gutta: A new test for evaluating the patentability of algorithms (Found Persuasive)

Fostering Innovation in China and the US for the 21st century (China Law Blog)

Defective appeal briefs (Patently-O)

Resurgence of the need for opinions of counsel (IP Frontline)

Attorneys offer advice on Bilski, with a side of Mayo (Technology Transfer Tactics)

N D Illinois local patent rules will drive cases to Chicago (IP Litigation Blog)

Howrey forms false patent marking task force (IP Frontline)

US Patents – Decisions

CAFC: Omitting step in process does not expand claim to cover use nothing like that described as integral to invention: Catch Curve, Inc v Venali, Inc (not precedential) (GRAY on Claims)

CAFC panel disagrees regarding scope of disclaimer: Schindler Elevator Corp. v. Otis Elevator Co. (GRAY On Claims)

District Court E D Louisiana: Prior License of asserted patent does not bar imposition of permanent injunction: Innovention Toys, LLC v MGA Entertainment, Inc. et al(Docket Report)

District Court N D California: Delay of five to seven years does not create undue prejudice sufficient to deny stay pending reexam: Spectros Corp v Thermo Fisher Scientific, Inc (Docket Report)

BPAI: Reissue cannot merely add new dependent claims (without cancelling the broader claims): Ex parte Tanaka (precedential) (Patently-O) (Patently-O)

BPAI: No new arguments (or nuances) in BPAI reply brief without good cause: Ex parte Nakashima; Ex parte Borden (Patently-O)

US Patents – Lawsuits and strategic steps

American Willow – Patentee American Willow appeals from summary judgment order finding patent invalidity: Ohio Willow v. Thermo-Ply (PATracer)

Honeywell – Patentee appeals finding of patent invalidity under on-sale bar provisions of § 102(b): Honeywell v Nikon (PATracer)

Nalco – Nalco appeals from grant of preliminary injunction against it from infringement patent directed to method of removing or transferring metals and/or amines from crude oil: Baker Hughes v Nalco (PATracer)

Nutriset – Access to food now an IP issue?: US non profit organisations seeking to produce nut-based food for malnourished children challenge Nutriset patents (Spicy IP)

Pioneer – ITC investigation of Honeywell in certain multimedia display and navigation devices and systems following settlement between the parties (ITC 337 Law Blog)

Samsung – ITC investigation concerning certain digital camera terminated following settlement between Samsung and Kodak (ITC 337 Law Blog)

Southwest Efuel Network – JMOL order filed in Southwest Efuel Network, L.L.C. v Transaction Tracking Technologies, Inc. (

Toyota – From preclusion to exclusion? ITC staff supports Paice summary judgment motion: Paice v Toyota (Green Patent Blog)

US Copyright

Smelly Rights: Copyright in perfume (Patent Baristas)

MPAA head Dan Glickman leaves to head refugee organisation (IP Watch)

15% of Sherlock Holmes under copyright (Property, intangible)

US Copyright – Decisions

District Court S D New York: Unregistered foreign copyrights in US courts: No statutory damages and attorneys’ fees: Elsevier B.V. v United Healthgroup, Inc (Copyright Litigation Blog)

How to ‘use’ when counterfeiting: US v Diallo (JIPLP)

US Trademarks

When branding comes to the rescue of J.P. Morgan Chase (IP finance)

US Trade Marks – Decisions

CAFC favors USC Trojans over USC Gamecocks in SC logo fracas: University of Southern California v. The University of South Carolina (not precedential) (TTABlog) (Patently-O)

District Court S D New York sets out manner in which Joseph Abboud may use his own name after having sold ABBOUD mark (The Trademark Blog)

Ninth Circuit affirms injunction enjoining Sara Lee’s use of SANDWICH THINS: BBU, Inc v Sara Lee Corp (Seattle Trademark Lawyer)

TTAB Precedential No. 2: Okays fraud pleading but denies summary judgment on intent issue: DaimlerChrysler Corporation and Chrysler, LLC v. American Motors Corporation (TTABlog)

TTAB enters summary judgment: RED KAP and RED SNAP for clothing too dissimilar for confusion or dilution: Imagewear Apparel Corp. v. Wings Manufacturing Corporation (not precedential) (TTABlog)

TTAB affirms section 2(e)(4) surname refusal of WEIS for frozen dairy products: In re Weis Australia Pty Ltd (not precedential) (TTABlog)

TTAB: Finding applicant’s 2(f) evidence misdirected, TTAB affirms requirement for disclaimer of CHILDREN’S in THE CHILDREN’S PLACE: In re The Children’s Place Services Company, LLC (not precedential) (TTABlog)

US Trade Marks – Lawsuits and strategic steps


Hostess – Hostess sues Little Debbie for infringing on signature squiggle used on Hostess cup cakes (branchannel)

Nice Ball Bearing Co – Ball Bearing trademark rolling free, like a fumbled football – case concerning series numbers as trade marks settles: RBC Nice Bearings, Inc. v. Peer Bearing Co (Property, intangible)

Porsche – Porsche threatens to sue the Croc Shoe Co over use of ‘Cayman’ ( – Temporary restraining order denied in matter regarding parody of Prop 8 Group’s Logo: v Courage Campaign (The Trademark Blog)

United Black Fund – TTAB issues new order in oldest pending TTAB case: United Black Fund v National Black United Fund, Inc (TTABlog) (TTABlog)


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