General Global Week in Review 6 December 2010 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:

Senate Judiciary Committee approves fashion copyright bill – Innovative Design Protection and Piracy Prevention Act (Counterfeit Chic) (LIKELIHOOD OF CONFUSION) (Plagiarism Today)

9th Circuit affirms dismissal of trademark claim based on naked license: FreecycleSunnyvale v. Freecycle Network (Seattle Trademark Lawyer) (Property, intangible) (The Ninth) (Marks & Secrets)

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

Compressed Executive IP Management & Strategy Course (IP Think Tank)

Spend too much to protect too little (no. 14 in our list of IP mistakes) (IP Think Tank) (IPBiz)

Fear of claim chowder… (IP Think Tank)

IP and Business growth (IP finance)

Management of IP in sustainable agri-development: essential or irrelevant? (IPKat)

Key IP-related personnel changes in UN, National Agencies (IP Watch)

Studies inform WIPO enforcement meeting as development issues debated (IP Watch)

Global – Trade Marks / Brands

Saints, sinners and ‘disgrace’ insurance (IP finance)

Global – Patents

Patent system mainly serves select developed country industries, study says (IP Watch)

‘Win without fighting’ patent quality webinar recording available (Article One Partners)

Global – Copyright

Copyright in trade marks: are there problems? (Class 46)

Can counterfeiting be justified: the case of the Koreas (IPKat)


SUAVE has secondary meaning, but not very much of it, says Argentine Court (IP tango)


What is mine is not yours and what is yours is in fact mine: Copyright, consumers and first sale (IP Osgoode)

Curiouser & curiouser @ Copyright Board’s AC hearings (Excess Copyright)

Access Copyright interim tariff coming for Christmas? December 10 deadline to protest (Excess Copyright) (Excess Copyright) (Excess Copyright)

More ‘correcting’ and apology from Access Copyright (Excess Copyright) (Excess Copyright)

ACCC gets counsel and seeks delay on Access Copyright’s Interim Tariff – Katz nails fairness & delay issue (Excess Copyright)

Canada’s ‘Orphan Works’ regime: Unlocatable copyright owners and the Copyright Board (IP Osgoode)


IP in Chile: now the story is told! (IP tango)

CASA CLUB TV: Chile Supreme Court rules (IP tango)


Did BAIC know it was joyriding with Ford’s trade secrets? (IP Dragon)

How green should patents in China be? Poisonous green (IP Dragon)

The seven things to do when your China IP has been compromised (China Law Blog)

“No plagiarism ‘cause China’s high speed rail systems climb mountains’ – Third Intellectual Property and Urban Development Mayor Forum” (IP Dragon)

Dominican Republic

WIPO Director General Meets President of the Dominican Republic (WIPO)

East Africa

‘To EAC according to its needs …’ (Afro-IP)


OHIM is becoming a ‘true IP agency’ (1709 Blog)

ONEL/OMEL: the questions start to crystallise (IPKat) (Class 46)

General Court: Likelihood of confusion: too simple to leave to the lawyers? Codorniu Napa v OHIM – Bodegas Ontañon (ARTESA NAPA VALLEY) (IPKat)

New standard format for OHIM opposition decisions (Class 46)

Smoked prunes, non-bagels and piggies fed on whey among the latest GI terms protected (Class 46)


German Federal Supreme Court: Primate of the patent claim articulated by means of articulated coupling: Gelenkanordung Xa ZR 36/08 (Kluwer Patent Blog)

German Federal Patent Court: Lack of signature II (“Unterschriftsmangel II”) (Class 46)

German Federal Patent Court decides in ‘POST II’ (IPKat)

Dusseldorf Appeal Court decides appeal regarding first instance of preliminary injunction request based on patent: Blasenkatheterset (EPLAW)

Dusseldorf Appeal Court confirms refusal of patent owner’s claim for damages: Vollstreckungsschaden (EPLAW)

German Federal Supreme Court decides appeal against cancellation of utility model derived from European patent: Walzenformgebungsmaschine (EPLAW)

Hong Kong

Good deed for the day: Helping old producers cross agents (Ron Coleman’s LIKELIHOOD OF CONFUSION)


Madras High Court ‘stays’ the ‘compulsory licensing order’ of the Copyright Board against SIMCA & Super Audio (Spicy IP)

Delhi High Court rules on copyright dispute between heavy vehicle manufacturers (Spicy IP)

Delhi High Court rules on ‘Horlicks’ v. ‘Complan’ ad-campaign – ‘ad-gurus’ gone wild (Spicy IP)


Ruling real legal expenses rather than rough estimate (IP Factor)

Israel Ministry of Justice to refund patent filing publication fees to applicants (IP Factor)

Kabbalah Diet trademark cancelled due to lack of use (IP Factor)


Italian Food Police cracks down on foreign GI counterfeits (Class 46)


XAVIER LAURENT – the story continues (Class 46)

Poland: most valuable brands (Class 46)


SCOH: Scottish springboard leads to account of profits: Bayer Cropscience KK v Charles River Laboratories Pre-clinical Services, Edinburgh Limited and Albaugh Inc (PatLit)


Harry Popper’s magic wand no more (Class 46)

United Kingdom

EWHC (Pat): Summary judgment ‘rarely appropriate’ in patent trials, judge reminds us: Virgin Atlantic Airways Ltd v Delta Airways Inc (PatLit) (IPKat)

EWCA (Civ) upholds High Court’s finding that Novartis patent for extended wear contact lenses is invalid for insufficiency: Novartis v. Johnson & Johnson (Kluwer)

EWHC (Pat) finds no infringement of coronary stent patents: Abbott Laboratories Limited v. Medinol Limited (EPLAW)

EWHC (Pat): Costs order knocks spots off pimple patent: Select Healthcare v Cromptons (PatLit)

EWPCC: ‘User’ basis available for assessment of trade mark damages: National Guild of Removers & Storers Ltd v Silveria (t/a C S Movers) (IP finance)

Do it by the book: case management and questions for reference: Westwood v Knight; SAS Institute v World Programming (IPKat)

EWCA finds Grimme’s agricultural machinery patent inventive, clarifies law of contributory infringement: Grimme v. Scott (Kluwer Patent Blog)

Damages for unintentional design infringement: what do YOU think? – IPO consultation (Class 99)

Reform of IP taxation – consultation underway (IP finance)

The PCC Page no.8: Last chance to make your voice heard – consultation on the proposed limit on recoverable damages in the Patents County Court (PatLit)

United States

US General

USPTO launches Twitter account (Patent Docs)

US Patent Reform

‘Patent reform’ still possible in 2010?!? (IPBiz)

US Patents

USPTO extends deadline for Patent Application Exchange Program (Patent Docs)

US Patents – Decisions

District Court E D Texas: In an ‘exceptional’ case, court orders production of negotiations leading to license agreements: Clear with Computers, LLC v. Hyundai Motor America, Inc (

District Court S D California: False marking affirmative defenses – Laches & unclean hands are in, advice of Counsel is out: Oakley, Inc. v. Ryders Eyewear (Docket Report)

District Court Connecticut: High volume of sales during holiday shopping season creates irreparable injury sufficient for TRO: Romag Fasteners, Inc. v. Fossil, Inc. et al (Docket Report)

CAFC: Liability for offers to sell clarified: Transocean Offshore Deepwater Drilling, Inc. v. Maersk Contractrors USA, Inc (IP Law Blog)

US Patents – Lawsuits and strategic steps

Columbia University’s School for Engineering and Applied Science – Columbia’s patented smart grid technology to power FedEx’s NYC EV Fleet (Green Patent Blog)

Georgia-Pacific Consumer Products – ALJ Gildea grants motion to terminate investigation in Certain Electronic Paper Towel Dispensing Devices (337-TA-718) based on consent order (ITC Law Blog)

GS Cleantech – Patent Cases consolidated and stayed pending related case: GS Cleantech Corp. v. Big River Resources Galva, LLC (Chicago IP Litigation Blog)

Hasbro – District Court Massachusetts awards Hasbro injunction in water pistol patent case: Hasbro Inc v. Buzz Bee Toys Inc (IPBiz)

Leviton Manufacturing – ALJ Bullock grants motions to terminate investigation in Ground Fault Circuit Interrupters (337-TA-739) based on settlement (ITC Law Blog)

MGM Well Services – Patent case transferred to Southern District of Texas: MGM Well Services, Inc. v. Production Control Services, Inc. (

Red Bull – ITC issues opinion on remedy, public interest, and bonding in Certain Energy Drink Products (337-TA-678) (ITC Law Blog)

US Copyright

Senate Judiciary Committee approves fashion copyright bill – Innovative Design Protection and Piracy Prevention Act (Counterfeit Chic) (LIKELIHOOD OF CONFUSION) (Plagiarism Today)

US Copyright – Lawsuits and strategic steps

Meyer, Julia – Da Bears, Da Dance, Da Lawsuit (1709 Blog)

US Trademarks

USPTO Webcast: ‘Roundtable on best practices for trademark prosecution in the current electronic environment’ (TTABlog)

US Trade Marks – Decisions

9th Circuit affirms dismissal of trademark claim based on naked license: FreecycleSunnyvale v. Freecycle Network (Seattle Trademark Lawyer) (Property, intangible) (The Ninth) (Marks & Secrets)

TTAB precedential no. 42: TTAB affirms refusal to register shape of Chevron’s ‘Pole Spanner Sign’ as non-distinctive (TTABlog)

US Trade Marks – Lawsuits and strategic steps

Ashley Furniture – Court orders pre-answer brief re viability of Lanham Act case: Ashley Furniture Indus., Inc. v. Value City Furniture, Inc (Chicago IP Litigation Blog)

Optics Planet – Different flavours of tortious interference are ‘Tweedledum and Tweedledee’: Optics Planet, Inc. v. OpticSale, Inc. (Chicago IP Litigation Blog)

Time Warner – Time Warner cashes in on Quidditch (IP Factor)


Fighting piracy with quality (Afro-IP)

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