Patents

Germany

German Federal Supreme Court on Standards for Indirect Patent Infringement
Case X ZR 38/06 – "Pipettensystem“/ “Pipette System“
Bardehle Pagenberg Dost Altenburg Geissler

After many cases in which the German Federal Supreme Court lowered the standards for indirect patent infringement, the Supreme Court recently held in an obiter dictum that a feature of a patent claim is not an essential element of an invention if the feature does not contribute to the inventive solution of the technical problem solved by the patent-in-suit. The claimant markets and sells a pipette system (with a syringe) and sells adapted syringes. The defendant also sells syringes and expressly indicates that his syringes are adapted to the pipette system of the claimant which uncontestedly realizes all features of the asserted claims of the patent-in-suit. The Federal Supreme Court had to decide whether the syringes are means referring to an essential element of the inventive pipette system and whether the replacement of the syringe constitutes the assembly of a new product. In the present case, however, the Supreme Court considered the syringes to be an essential part of the invention, because they interact functionally with the pipette system, although these are customary syringes. The Supreme Court nevertheless denied indirect infringement for lack of an act of direct infringement by the third person to whom the syringes were offered and delivered by the defendant. The Supreme Court established that the exchange of the syringe keeps the identity of the patented product as in circulation and that it is therefore not a new manufacturing. The pipette system is determined for long-time use. Usually during the lifetime of the pipette system, syringes are often exchanged. Moreover, the technical effects of the invention are not directly connected to the syringes, although the syringe is mentioned in some of the claimed features. The weighing of facts by the Supreme Court therefore resulted in an establishment of non-infringement by delivery of syringes due to exhaustion of the patent rights, after the patentee puts the pipette system on the market. Click here for Full Article>>

Indonesia

Indonesia Clarifies the Position of PCT Patent Applications Belatedly Entering the National Phase
Channel International Patent

The Director General of Intellectual Property Rights of Indonesia, through his decision (letter no. H.01.UM.09.01 of the year 2006) has clarified the position of PCT patent applications that have belatedly entered the national phase. The decision clarifies the effects of such delayed filing of the PCT applications in the national phase, such as payment of additional fees and providing a statement explaining the reason behind such inordinate delay in certain situations.Click here for Full Article>>

Sweden

Sweden Changes PCT Rules
Awapatent AB

Sweden has voted in favour of a Bill to amend its patent legislation to conform to the current Patent Cooperation Treaty (PCT) rules. The new rules have extended the deadline for entry into the national phase for PCT application from the existing 20 months to 31 months. This will allow an applicant more time to decide on the PCT member countries where he wishes to pursue the application in the national phase as well. The changes have come into effect on 1st July 2007. Click here for Full Article>>

Trademarks

Antigua and Barbuda

New TM Act Ends UK Reliance and Allows Service Marks in Antigua And Barbuda
Caribbean Trademark Services

Antigua and Barbuda, has legislated a new Act known as the Trade Marks Act, 2003 and Trade Mark Regulations 2006, (which came into effect on 1st October 2006), the country's first comprehensive trademark law, which removes its earlier requirement of a prior UK registration to apply for a trademark in the country. The new trademark law provides for service marks and has adopted the International Classification of the Nice agreement. The Act also establishes the Paris Convention priority, while Antigua and Barbuda is already a member of the Madrid protocol. Under the new Act, current UK-based and local registrations will continue till they expire or 10 years from 1 October 2006, whichever is earlier. The new Act further provides for penalties for trademark infringement which include EC$ 100,000 and imprisonment upto 5 years. Click here for Full Article>>

Australia

Teavolution PTY Limited Successful in Resisting Opposition by Honest Tea Inc.
Honest Tea, Inc v Teavolutlon Ply Ltd.
Blake Dawson Waldron

Honest Tea Inc., an United States company, lodged an opposition proceeding against two trademark applications for the mark HONEST TEA and a composite mark comprising the word HONEST TEA and an illustration of tea leaves, filed by Teavolution Inc. The Australian Trade Mark Office (ATMO), in its decision of 9th March 2007, held that Honest Tea had failed to establish its use or furnish evidence of its reputation of the HONEST TEA mark in Australia. The ATMO held, that although courts in Australia will consider any small amount of use by the foreign parties as sufficient evidence for holding the mark distinctive with the foreign trader's goods in Australia, merely holding discussions with potential distributors and sales persons in Australia, without any actual contractual arrangements, sales or advertising will not help the foreign parties to establish use of the mark in Australia. Click here for Full Article>>

Europe

European Court Of Justice: Appeals Against Decisions of the Court of First Instance
OHIM v. Shaker di L. Laudato C. Sas –Limiñana y Botella SL
Bardehle Pagenberg Dost Altenburg Geissler

In the case of OHIM v. Shaker di L. Laudato C. Sas-Limiñana y Botella SL, OHIM filed an appeal before the European Court of Justice (ECJ) against a Court of First Instance (CFI) judgement holding no conflict between an earlier word mark and a CTM application of a composite trademark. The CFI held that the device element was dominant in the CTM application and had not attributed any significance to the verbal element and held that there was no confusion between the rival marks. The ECJ reversed the judgement holding that CFI had violated the basic principle that marks must be compared in their entirety and it is an error to compare only some elements. This is the first time that the ECJ has reversed a CFI decision. Click here for Full Article>>

Europe

House of Donuts Finds Itself in a Sticky Mess Over Language Issue
Hammonds

The House of Donuts International, filed two trademark applications for figurative marks in classes 30, 32 and 42. Panrico SA, a Spanish company filed oppositions against the said applications on the basis of their earlier registrations of the mark DONUTS and two figurative marks. The OHIM opposition division allowed the opposition on the basis of a likelihood of confusion between the two rival marks. On appeal to the Fourth Board of Appeal by the House of Donuts, the Board concluded that the term DONUTS is not generic in Spain and upheld the OHIM opposition division's decision. On a further appeal to the CFI, the House of Donuts stated that the Board had erred in its finding. The CFI too, while upholding both the decisions of OHIM opposition division and the Board, held that there was a likelihood of confusion on the part of average Spanish consumer between the conflicting marks. House of Donuts applications were therefore rejected. Click here for Full Article>>

Europe

European Court Of Justice: Preliminary Rulings Under Article 234 EC
Häupl v. Lidl Stiftung & Co. KG.
Bardehle Pagenberg Dost Altenburg Geissler

In the case of Häupl v. Lidl Stiftung & Co. KG, the Austrian Oberster Patent -und Markensenat (the appellate tribunal for the Austrian Patent Office), referred to the European Court of Justice two issues a) the determination of start of the grace period for use of a mark in case of International registration and b) criteria for determination of proper and justified reasons of non-use. The ECJ held that for determining the start of grace period, relevant under the 1998 Trade Mark Directive must be determined by each Member state according to its own legislations. With respect to grounds of non-use, the ECJ stated that obstacles that have a direct relationship with the trademark, making its use impossible or unreasonable and over which the trademark proprietor has no control will constitute proper reasons for non-use of the mark. The case has now been reverted to the Austrian authorities for final determination. Click here for Full Article>>

Taiwan

The Supreme Administrative Court Announces “A Diamond is Forever” is a Trademark of DE BEERS Inc.
A & Finet International Patent & Law Office

De Beers the English company, coined and advertised the slogan "A Diamond is Forever". However, in Taiwan, domestic jewelery dealers had been using "Diamonds last forever and can be passed on from generation to generation" in Chinese. De Beers also filed a trademark application before the Intellectual Property Office and got it registered. The Taipei County Jewellers' Associations strongly opposed this application and filed an appeal before the Supreme Administrative Court, on the ground that the Chinese translation of "Diamond is Forever" is different from "Diamonds last forever and can be passed on from generation to generation" in Chinese. Since the slogan "Diamonds last forever and can be passed on from generation to generation" was actually used by the domestic jewellers, use and registration of the same by De Beers would be a violation of their rights. The Court stated that although the meanings of the two slogans are different, the long use of the slogan "Diamond last forever and can be passed on from generation to generation" along with the English "De Beers" has made the slogan solely distinctive of De Beers and allowed the registration of the slogan by De Beers by rejecting the appeal. Click here for Full Article>>

Taiwan

Taiwan will Adopt the 9th Edition of the Nice Classification
Jaw-Hwa International Patent & Trademark & Law Office

The World Intellectual Property Office (WIPO) had announced that the 9th Edition of the Nice Classification comes into effect on 1st January 2007. In order to keep the classification rules of Taiwan in conformity with that of the 9th Edition of Nice Classification, the Taiwanese Intellectual Property Office (TIPO) has, on 7th May 2007, announced that it will suitably amend the current classification manual of Taiwan. Click here for Full Article>>

United Kingdom

KFC Chickens out of Action over "Family Feast" Name
ITMA

Kentucky Fried Chicken (KFC), uses the term FAMILY FEAST with regard to one of its meal deals. KFC raised an objection against Tan Inn Hill, the highest pub in England for use of the term for a Christmas Day Family Feast meal and threatened to file for trademark infringement. However, following a heavy media scrutiny which accused KFC for acting in  high handed manner, KFC quickly changed its stance and stated that they were not taking any action against Tan Inn Hill. However in its statement to the media, KFC maintained that it has to protect its trademarks against those who seek to trade off its brands. Click here for Full Article>>

Uruguay

Resolution of Conflict Between Two Well-Known Marks
Teuten Abogados

Robert Bosch GmbH, a German company owner of trademark BOSCH for motors, tools, heating and cooking apparatus filed an opposition against a trademark application for BOSCH & CIA filed by an Uruguayan company for stores selling bathroom fittings and related goods, before the Uruguayan Trademark Office. The Uruguayan TMO granted the application, which was also upheld in an administrative appeal. Bosch GmbH then appealed before the Contentious Administrative Court. The Court upheld the decision granting the application for BOSCH & CIA, by stating that the rival marks co-existed in the market place for a long time and there was no evidence of actual confusion between the marks, which were both famous on account of their long use. Click here for Full Article>>

Copyrights

Australia

Australia Announces Signing Of Internet Treaties
Blake Dawson Waldron

Australia has announced that it will sign two new treaties, the Copyright Treaty and the World Intellectual Property Organisation Performances and Phonograms Treaty, both of which will come into force on 26th July 2007. These treaties are aimed at boosting copyright protection material on the Internet and recognition of other rights in performance, software and databases. Australia has already amended its national copyright legislation (New Part IX) to incorporate its obligations under the Copyright Treaty. With regard to the Performances and Phonograms treaty, Australia has lodged 3 reservations to allow the existing exceptions in Australian copyright law. Click here for Full Article>>

Brazil

Brazilian Soccer Team is Authorised to Play its Hymn
Milton Leão Barcellos & Cia. Ltda.

In a suit for copyright violation filed by Fermata do Brazil against Fluminense, a famous Brazilian soccer team, the 50th Civil court of Rio de Janeiro held that Fluminense can play its hymn without having to pay any royalty to Fermata. Fluminense's hymn was authored by Lamartine Bebo and Fermata do Brazil is the current copyright owner of all of Bebo's works. The Court stated that the hymn was the cultural patrimony of the team and had been played by them for over 60 years. Click here for Full Article>>

Brazil

University will have to Compensate Maestro for Infringement
Milton Leão Barcellos & Cia. Ltda.

In a suit for copyright infringement, filed by Maestro Luiz Fernando Melara against the University of Joinville (Univille), located in the Southern state of Santa Catarina, Brazil, the Court of the state Santa Catarina held that the University will have to pay US $ 5000, as moral damages to the Maestro for using his musical works without the Maestro's consent, after the University discharged him from his services at the University. Click here for Full Article>>

Israel

The Tel Aviv Magistrate's Court Applies The "Notice And Takedown" Safe Harbor For a Website's Liability for Copyright Infringement
"Al Hashulchan" Gastronomic Center Ltd. v. Ort Israel
Adin-Liss, Law Offices

"Al Hashulchan" Gastronomic Centre Ltd. is a large publisher of Cooking Books in Israel, while Ort Israel is a large chain of schools, both of whom operate websites on the Internet and have forums where users can interact. The problem arose when an user copied recipes from one party's forum and posted the same to the other forum. Al Hashulchan sued Ort Israel, claiming that Ort Israel is liable as a website owner for posting of infringing material by an user. The Israeli court held that recipes per se are not eligible for copyright protection unless they involve exceptional creativity. The Court finally applied the 'Notice and Takedown' rule and stated that if a website owner removed the infringing content after receiving notice in this regard, he was absolved of his liability under the doctrine of Fair Use. The significance of this ruling is the Court's application of the 'Notice and Takedown' rule which is normally used in respect of online libel cases in Israel, to copyright infringement cases as well. Click here for Full Article>>

Taiwan

Copyright Violation Over the Internet in Taiwan
Jaw-Hwa International Patent & Trademark & Law Office

The Taiwanese Copyright law, under Article 91-1 III provides that any person who either distributes or with the intention to distribute, publicly displays or possesses infringing copies of optical disks, commits the offence of copyright infringement under the Act, whether or not he makes profit out of the said act. Thus an individual selling infringing copies of optical disks over the internet, would be liable for copyright infringement under the Act, even if he sells a single copy of the optical disk. The Taiwanese copyright law also provides that a complaint is not a pre-requisite in commencing investigations under the Act and states that prosecutors and police can actively investigate and take action against the offenders. The TIPO has warned consumers against buying or selling low priced optical disks, and/or buying or selling optical disks obtained from questionable sources as there is a high possibility of the optical disks being pirated.Click here for Full Article>>