Week’s news headlines – Mar. 24th 2017


Bentley Motors loses trademark invalidity action against Bentley
The Bentley clothing brand, established in 1962, had registered the trademark ‘Bentley’ at the UK Intellectual Property Office (IPO) in 2009.

Jimi Hendrix estate sues brother for trademark infringement
The estate of rock musician Jimi Hendrix has filed a lawsuit against Hendrix’s brother Leon, alleging trademark and copyright infringement.

Days Inn sues former franchisee for TM infringement
Days Inn sued (pdf) Singh Hospitality at the US District Court for the District of New Jersey on Thursday, March 16, arguing that it had competed unfairly, and contributorily infringed and diluted its mark.

TM registered after Sports Direct opposition fails
On January 31 this year, Beverley Hedley, hearing officer of the IPO, rejected a trademark opposition brought by Sports Direct against Fitness Direct.



SCOTUS to hear oral arguments in patent exhaustion case
The US Supreme Court is due to hear oral arguments tomorrow in the Impression Products v Lexmark dispute, which centres on patent exhaustion.

Supreme Court of the United States to Hear Oral Arguments in Patent Exhaustion Case
On March 21, 2017, the Supreme Court of the United States will hear oral arguments for the case of Impression Products, Inc. v. Lexmark International, Inc. The Court will decide: (i) whether the patent exhaustion doctrine applies in instances where a patented article is sold by the patent holder subject to a lawful and clearly communicated post-sale restriction; and (ii) whether the foreign sale of a U.S. patented article, authorized by the patent holder, exhausts the patent holder’s U.S. patent rights in that article.

New data suggests that Japanese courts continue to be deeply unfriendly to patent owners
Recent statistics published by the Supreme Court of Japan seem to underline the old adage that the country’s courts are among the least patentee-friendly among the world’s major IP jurisdictions. But there may be more to the figures than meets the eye.

Korean sovereign patent fund Intellectual Discovery gets a new boss, but questions remain over its future
Korean sovereign patent fund operator Intellectual Discovery (ID) has new leadership in place following the abrupt departure of CEO Kwang Jun Kim, first reported by this blog last October. Media reports name the new president and CEO as Jung Dong-soo, a former patent executive with SK Hynix.

USITC investigates LG over graphics patent claim
On Friday, March 17, the ITC voted to institute the investigation into certain graphics systems and products such as TVs and smartphones which contain them.

As IV increases its rate of patent sales, more of the assets it divests are ending up in court
A few weeks ago this blog covered Intellectual Ventures’ disposal of its former Kodak portfolio to Dominion Harbor. We revealed that not only was it IV’s biggest ever sale but that the firm also retained some interest in the patents, with it set to receive a portion of any profits Dominion makes from them in a classic privateering-style play.

Supreme Court says laches is no defense to patent infringement
Yesterday, the United States Supreme Court issued its decision in SCA Hygiene Products Aktiebolag et al. v. First Quality Baby Products, LLC, et al. The case required the Court to determine whether the defense of laches remained a viable defense to patent infringement actions when the charge of patent infringement is brought during the six-year statute of limitations. As predicted by many, the Supreme Court found that the defense of laches is inappropriate for claims brought within the statute of limitations, the same ruling reached only several years ago with respect to laches as a defense in copyright infringement claims. See Petrella v. Metro-Goldwyn-Mayer, Inc., 572 U.S. ___ (2014).

USF files patent suit over sale of Alzheimer’s research mice
A recent article published by the international scientific journal Nature notes that on Tuesday, March 21st, a pre-trial hearing will take place in a case involving patent infringement claims targeting the sale of mice having mutated genes which make them useful for research into Alzheimer’s disease. While Nature’s coverage of the case indicates no small amount of bias in favor of the defendant, the original filed complaint alleges that the U.S. government funded a research laboratory that knowingly committed infringement of the asserted patent for a period of four years.

Impression v Lexmark: SCOTUS questions patent exhaustion rules
The US Supreme Court has questioned patent exhaustion rules during oral arguments in the Impression Products v Lexmark dispute.

Federal Circuit rejects appeal in McAfee patent suit
A dispute over claim construction is not enough to revive a patent lawsuit brought against antivirus company McAfee, according to the US Court of Appeals for the Federal Circuit.

Microsoft signs car patent licence agreement with Toyota
Microsoft has entered a patent licence agreement with car manufacturer Toyota focusing on broad coverage for connected car technologies.

Procter & Gamble sues oral goods business for patent infringement
P&G filed its lawsuit against Ranir at the US District Court for the Southern District of Ohio, Western Division on Monday, March 20.

Hysteria over creeping bentgrass leads to Oregon bill targeting GMO patent owners
In early February, a bill was introduced into the Oregon House of Representatives, which could make the state seem much less friendly to patent owners, specifically those holding patents covering genetically modified organism (GMO) technologies. The state measure is a response to the escape of genetically modified creeping bentgrass from field trials and the concerns that has raised for property owners in Oregon.

SCOTUS to hear case on patent venue
With numerous amicus briefs filed, TC Heartland v Kraft Foods is a case of great importance that may fundamentally change patent venue rules in the US.

Latest SCOTUS ruling gives patent owners mild cause for optimism; while former USPTO chief slams Breyer
We’re currently seeing a flurry of patent activity from the Supreme Court. Earlier this week it heard oral arguments in Impression Products Inc v Lexmark International while it also released its opinion in SCA Hygiene Products Aktiebolag v First Quality Baby Products. Then on Monday the eight justices will hear arguments in the eagerly anticipated TC Heartland LLC v Kraft Food Group Brands LLC, – a case focused on venue selection in patent suits, which could undermine the Eastern District of Texas’s position as the plaintiffs’ forum of choice.

CAFC upholds invalidation of patent application covering patient data management tech under Alice
On Monday, March 13th, the U.S. Court of Appeals for the Federal Circuit issued a decision upholding the Patent Trial and Appeal Board’s (PTAB) finding that a patent application covering a patient health information management system is invalid under the Alice standard. The decision is a disturbing reminder that, despite recent cases in which the Federal Circuit has overturned PTAB decisions, short-sightedness in the U.S. judiciary continues to negatively impact important burgeoning sectors of innovation.



Led Zeppelin ‘Stairway to Heaven’ copyright suit appealed
Michael Skidmore, on behalf of the late Spirit band member Randy Craig Wolfe (‘Randy California’), has filed an appeal against the decision at the US Court of Appeals for the Ninth Circuit.

Cheerleading uniforms may be copyrighted, says SCOTUS
Decorative elements of a cheerleading uniform may be protected by copyright law, according to the US Supreme Court.

Copyrights at the Supreme Court: Star Athletica v. Varsity Brands
On Wednesday, March 22nd, the U.S. Supreme Court handed down a decision in a copyright case, which clarifies federal copyright law surrounding whether features incorporated into the design of a useful article are eligible for copyright protection. In a 6-2 decision, the Supreme Court held in Star Athletica, LLC v. Varsity Brands, Inc. that such features are eligible for copyright protection if they can be perceived as a work of art separate from the useful article and would qualify as an protectable work if imagined separately from the useful article.

Jimi Hendrix’s brother hits back at estate in IP row
The brother of late rock musician Jimi Hendrix has hit back at a trademark and copyright infringement claim brought against him by the estate of the musician.


Intellectual Property

UN report calls for global IP reforms
The UN issued the “Human Development Report 2016” on Sunday, March 19 as part of the UN Development Programme, which works with 170 countries to eradicate poverty and reduce inequalities and exclusion.



BREIN appeals to Netherlands Supreme Court in piracy suit
Netherlands-based anti-piracy organisation BREIN has appealed to the Supreme Court of the Netherlands in its dispute with Usenet provider News-Service Europe (NSE).

Young people less worried about buying fakes, says EUIPO
Young people are less concerned about buying counterfeit goods than older generations, especially when the products are purchased online.

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BPTO issues new resolutions on patent priority examinations

On February 23, the Brazilian Patent and Trademark Office (BPTO) issued two resolutions that establish the second stage of two pilot projects for priority examination of patent applications. The pilot projects are BR Priority, which includes patent applications from Brazil, with priority rights assured for national or international filings; and MPE Patents, intended for micro and small enterprises.

BPTO RESOLUTION Nº 180 establishes the second stage of the BR Priority Pilot Project. The project, which began on January 19, 2016, was valid for one year, but reached its 100-application limit in one month. At this stage, patents of invention, as well as utility models can be accepted. The BR Priority Pilot Project is limited to 120 patent applications. One of the requirements for granting priority examination is that the patent applications must have been accepted in the examination of admissibility for the entry into the national phase of PCT applications. Only one patent application per month for each applicant will be considered for the BR Priority Pilot Project.

BPTO RESOLUTION Nº 181, which establishes the second stage of the MPE Patent Pilot Project, aims to help micro and small enterprises achieve more competitiveness in their businesses. The project began on February 23, 2016, with a one-year period of duration, or until reaching the 300-application limit . This stage of the project is open to applications filed by at least one micro or small enterprise. Applications relating to processing operations, transport, mechanical engineering, lighting, heating, weapons or explosions are excluded from this project.

For further information, please feel free to contact us at diblasi@diblasi.com.br.

new resolutions on patent priority examinations: click to read it in PDF

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INTA Comments on Graphical User Interface (GUI), Icon, and Typeface/Type Font Designs to WIPO

Article “INTA Comments on Graphical User Interface (GUI), Icon, and Typeface/Type Font Designs to WIPO”, coauthored by managing partner Gabriel Di Blasi, was originally published in the latest International Trademark Association (INTA) bulletin.




INTA’s Designs Committee has provided comments on the topic of Graphical User Interface (GUI), Icon and Typeface/Type Font Designs to the Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT) of the World Intellectual Property Organization (WIPO).
In many instances, GUIs, icons and fonts have become a key aspect of a company’s overall brand. They should therefore be considered an important part of the company’s overall IP portfolio. The INTA Designs Committee considers that design protection should be provided for GUIs, icons and fonts, independently from any other form of protection available on the computer program or other technical means of creating it, even if they are projected onto a screen or otherwise only appear when technology is activated.
However, in most of cases, the lifespan of this kind of technology is very short. To the extent that GUIs, icons and fonts may be eligible for overlapping protection, the INTA Designs Committee believes that design law is a good tool to provide short term protection. And this should be without prejudice to protection appropriately provided under other laws, such as copyright, trademark or the law of unfair competition/passing off.
Responding to the Questionnaire of SCT on Graphical User Interface (GUI), Icon and Typeface/Type Font Designs, the INTA Designs Committee has made several suggestions of ways to harmonize the position on GUIs, icons and fonts. In addition, the INTA Designs Committee believes that users are best placed to determine how to disclose an innovative design for the purposes of applying for GUI, icon, or font protection. At present, a designer, especially an individual designer or SME, can be disadvantaged if a design registry outside the designer’s home jurisdiction rejects the application because (under its own rules) the “wrong” representation has been used, even though that representation was accepted in the home jurisdiction.
The designer seeking protection should be allowed to make its own choice on how best to protect the design. Design law protects innovative designs, which have to be novel in order to be protected. A GUI which incorporates an image of a telephone lacking novelty may still be considered novel on the whole, but its novelty will not lie in the telephone image.  Similarly, a design registered for a GUI which shows a digital read-out for a number will not be novel so far as that number is concerned – but may be for the innovative way in which the number is presented.
In practical terms the GUIs, icons and fonts are used across technologies. It is therefore essential that protection is NOT dependent on the product that incorporates it. Once again the designer must have the choice as to how best to represent the design, whether in relation to a specific product, or in the abstract. Furthermore, protection for GUIs and icons should NOT be excluded if the GUI/icon appears only temporarily when a program is loaded.
The INTA Designs Committee considers that there should not be any additional requirements for GUIs, icons or indeed fonts that are animated, and Offices should be able to accept video files within appropriate guidelines. Color and black and white photographs, drawings, including technical drawings and other graphic representations, including CAD and video or moving files, should all be acceptable forms of representations of GUIs, icons and fonts, as long as the representation accurately represents the design.
In their final observations and comments, the INTA Designs Committee has advocated that.

  •  the examination criteria for GUIs and icons be no different to those for other forms of industrial design;
  • for fonts, the additional elements discussed above may also be examined; and
  • the duration of protection for GUI, icon and font designs ought to be the same as for other industrial designs. 

Please see the INTA Designs Committee’s complete response to the questionnaire on inta.org.


Gabriel DI Blasi (Di Blasi, Parente & Associados Advogados)

Patrick Wheeler (Collyer Bristow LLP Solicitors)

Members of INTA Design Committee

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Upcoming event – ASIPI Seminar – Puerto Rico, March 19-21, 2017

site - evento - 2017 asipi

Managing partner Paulo Parente Marques Mendes will be a moderator and speaker at the seminar of the Inter-American Association of Intellectual Property – ASIPI, in the panel named “Long live the Show! Live Presentations and the Contracts Required”. ASIPI’s Seminar will take place from March 19 to 21, in Puerto Rico.

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