Week’s news headlines – January 26th, 2018


Google signs patent licensing deal with Tencent in China
Google has entered into a cross-patent licensing deal with China-based Tencent Holdings in an effort to expand its reach in China

Qualcomm drops patents to gain European Commission acquisition approval
Commissioner Margrethe Vestager announced the approval, which follows an in-depth review of Qualcomm’s proposal, on Thursday, January 18

Apple Files Patent for Recognizing Whispered Voice Commands
In a Research and Markets report released March 2017, the number of active virtual digital assistant (VDA) users worldwide was expected to increase from 390 million users in 2015 to 1.8 billion by the end of 2021

Court refuses to dismiss US government night vision dispute
Senior Judge Eric Bruggink handed down his order denying dismissal of the lawsuit, which had been brought by the Science Applications International Corporation (SAIC), at the US Court of Federal Claims on Friday, January 19

Nike sued over fitness tracker patent
US-based Personal Beasties Group (PDG) alleged that Nike infringes on US patent number 6,769,915, in a case filed at the US District Court for the Southern District of New York on Saturday, January 20

Lack of Signature on Assignment Declaration Nixes Standing for Patent Co-Owners
On Thursday, January 11th, the U.S. Court of Appeals for the Federal Circuit issued a precedential ruling in Advanced Video Technologies LLC v. HTC Corporation et. al. in a patent infringement case appealed by Advanced Video from the Southern District of New York

Federal Circuit rules against Google in patent challenge
The search engine claimed that Network-1 Technologies’ US patent number 8,904,464, known as “Method for tagging an electronic media work to perform an action”, was unpatentable

Finjan sees quick payoff from groundbreaking IBM patent deal
Finjan has already recouped the $2 million it spent on acquiring a small package of patents from IBM last year as part of a deal which saw the cyber security business form a new subsidiary, Finjan Blue

Slowing application growth and tougher examiners: five key figures from SIPO’s 2017 patent data
Last week, China’s State Intellectual Property Office revealed its preliminary data from calendar year 2016 on everything from patent filings to administrative enforcement

International report – Four Brazilian patent prosecution particularities you should know about
IP rules and regulations have a certain international uniformity

Sprint, Cox Communications Settle Patent Lawsuit
On Thursday, January 18th, Overland Park, KS-based telecom firm Sprint Corporation (NYSE:S) and Atlanta, GA-based broadband provider Cox Communications announced a multi-year business agreement resulting from the settlement of a patent infringement case between the two companies

The Bill Carpenter Story: The Path to a Granted United States Patent
In 2017, Womble Bond Dickinson started working with California Lawyers for the Arts (CLA), a California nonprofit that serves as the statewide administrator for the California Inventors Assistance Program (the “CIAP”)



Eagles dispute with Hotel California dismissed
“Hotel California” was released in 1976 by the Eagles, and is one of their biggest hits

Dairy Queen sues former franchisee for trademark infringement
The American Dairy Queen Corporation (ADQ) filed the complaint on Tuesday, 16 January, at the US District Court for the Western District of Washington

German trademark owner wins $1 million trademark infringement verdict in U.S. district court
After a bench trial, United States Federal District Court Judge Stefan Underhill ordered Voss Laundry Solutions to pay more than $1 million in attorney fees, attorney costs and penalties to the German trademark owner and former parent company

Ukraine: 25 Years After the USSR Collapse, Two Countries’ Banks Keep Disputing One Trademark
The controversial conflict between two banks which has started in December 2015 and is still ongoing, resulted in three separate cases on diverse grounds with different rulings and approaches

Swedish court seeks CJEU clarification on TM laws
A Swedish IP court has requested clarification on three aspects of the EU trademark regulation, including the interpretation of the term “shape, or another characteristic, which gives substantial value to the goods”

USPTO keeps running despite government shutdown
As the US government continues into its third day of shutdown, the US Patent and Trademark Office (USPTO) has continued to operate

Nearly 75% of brands experienced TM infringement in 2017
The provider of trademark research and brand protection services announced the findings of its research into global trademark infringement on Thursday, January 18, in a report called “The Trademark Ecosystem: Insights from Intellectual Property Professionals around the World”

TTAB denies Beyoncé requests in BLUE IVY CARTER Trademark Opposition Proceedings
The past two years have seen an interesting series of events play out at the U.S. Patent and Trademark Office regarding trademark applications filed by major American entertainer Beyoncé Giselle Knowles-Carter

Can the name of a fictional, intergalactic game evolve into a trademark protectable in the world of mere groundlings?
In its latest action in a multi-jurisdictional conflict with a mobile gaming producer, Lucasfilm Ltd. LLC and Lucasfilm Entertainment Company Ltd. LLC filed a complaint for trademark infringement in the Northern District of California on December 21, 2017

EU court finds ‘Swissgear’ TM descriptive
The EU General Court, First Chamber, delivered judgment today, January 23. https://www.worldipreview.com/news/eu-court-finds-swissgear-tm-descriptive-15238

Fake trademark invoice fraudsters sentenced
Between 2011 and 2014, fake invoices were sent out by what appeared to be the Office for Harmonization in the Internal Market (OHIM), now known as the European Union Intellectual Property Office (EUIPO)

Avanti loses appeal over ‘fanciful’ trademark
The General Court yesterday confirmed the dismissal of German-based recruitment agency Avanti’s trademark application for its name

German film name too vulgar to be trademarked
The EU General Court delivered its judgment today, January 24

#metoo trademark application withdrawn
The US beauty brand, which sells make-up products through Walmart, abandoned its application to the US Patent and Trademark Office on Thursday, January 18

CJEU dismisses EUIPO appeal in Nestlé trademark dispute
The Court of Justice of the European Union (pdf) (CJEU) has ordered the EU Intellectual Property Office (EUIPO) to pay the costs of a trademark dispute involving Romania-based European Food and Nestlé

AG advises CJEU to reject EUIPO appeal in Puma case
An advocate general (AG) has advised the Court of Justice of the European Union to reject an appeal from the European Union Intellectual Property Office (EUIPO) in its clash with sportswear company Puma over trademark reputation



Innovation and IP Forum: Microsoft and Constellium on preparing to innovate
Jean-Rémi Butruille, head of IP at aluminium products maker Constellium, described how the company has developed a system to encourage internal innovation



Boing Boing asks court to dismiss Playboy hyperlink claim
Technology and culture website Boing Boing has asked a US court to dismiss a copyright lawsuit filed by Playboy Entertainment Group

Grumpy Cat cleans up coffee copyright claim
The owners of internet sensation Grumpy Cat have been awarded $710,000 in damages, after a jury found that a coffee company had infringed their IP


Domain Name

Ikea recovers phishing domain
Retailer Ikea has recovered the domain name ıĸea.com after complaining to the World Intellectual Property Organization (WIPO)



Judge issues block on eight piracy websites in Ireland
Eight piracy websites infringing film and TV content in Ireland have been blocked, a move welcomed by the Motion Picture Association (MPA)

Canadian clothing company takes on online counterfeiters
Filed at the US District Court for the Northern District of Illinois Eastern Division on Thursday, January 18, the complaint alleged that the defendants are selling counterfeit items to residents in Illinois by operating online stores


Intellectual Property

Chinese wind turbine company convicted of IP theft
The news was announced yesterday, January 24, by acting assistant attorney general John Cronan of the Department of Justice’s criminal division, and attorney Scott Blader of the US District Court for the Western District of Wisconsin

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Brazilian Patent and Trademark Office expands list of accepted technologies for Patent Prosecution Highway (PPH) with United States Patent and Trademark Office (USPTO).

On May 08, 2018, the Brazilian Patent and Trademark Office (BPTO) published Resolution No. 218/18, which established Phase II of the Patent Prosecution Highway Pilot Project (PPH) between the BPTO and the United States Patent and Trademark Office (USPTO). More information regarding Phase I of the USPTO-BPTO PPH can be found here.

This new phase will run from May 10, 2018 to April 30, 2020 or until 200 applications are accepted under the USPTO-BPTO PPH, whichever occurs first.

The main difference that Phase II of the USPTO-BPTO PPH brings to the project is the expansion of the technologies accepted in the program: patent applications related to information technology are now accepted, as well as patent applications belonging to oil, gas and petrochemical inventions.

Some other requirements for taking advantage of the BPTO-USPTO PPH Phase II are: the patent application must be published, the examination must be requested and should not have started, annuities must be paid and current, the specific fee to participate in the PPH program must be paid and the requisite form completed, in addition to the patent application not ever having been the object of any   litigation in Brazil.

This PPH is part of a series of accelerated examination programs for patent applications aiming to reduce the growing backlog at the BPTO. The BPTO also has PPH agreements in force with the Japan Patent Office (JPO), PROSUL (Argentina, Chile, Colombia, Costa Rica, Ecuador, Paraguay, Peru and Uruguay), the European Patent Office (EPO), and the State Intellectual Property Office of the P.R.C. (SIPO – China), and is in the preparation phase of other agreements with the United Kingdom Intellectual Property Office (UKIPO) and the Danish Patent and Trademark Office (DKPTO). The BPTO further intends to enter into new agreements this year with Russia (ROSPATENT), South Korea (KIPO), Israel (ILPO) and Mexico (INPI), as indicated in its 2018 action plan.

For more information about the PPH between the BPTO and USPTO, as well patents and other PPHs, please feel free to contact us.

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A summary of findings from the EU on the current state of IP infringement: there is still a lot of work ahead of us!

Authored by Ana Leticia Allevato - lawyer at Di Blasi Parente & Associados and specialist in Intellectual Property. 

The 2018 issue of the “Synthesis Report on Intellectual Property Right Infringement” recently released by the European Union Intellectual Property Office (EUIPO) indicates that every year Europe loses about 59 billion euros(*) and 435 thousand jobs(*) due to counterfeiting in 13 economic sectors – from the supply chains throughout their respective industries.

The sectors indicated in the report are: Tires; Batteries; Smartphones; Pesticides and Agrochemicals; Pharmaceutical products; Spirits & Wine; Recorded Music; Jewelry & Watches; Handbags & Luggage; Toys & Games; Sports Goods; Clothing, Footwear and Accessories; and Cosmetics & Personal Care.

The research also ascertained that luxury and branded goods are not the only products targeted for counterfeit. Given technological advancement and production at relatively low costs, counterfeiters now cover everyday goods as well, such as pharmaceutical products, shampoo, toothpaste, cosmetics, food and cellphone components. This increases the exposure of consumers to the risks arising from the use of manufactured products without due sanitary and safety inspections.

The EUIPO conducted two IP Perception studies, in 2015 and 2017, in order to understand the incentives for consumers to purchase counterfeit goods. Citizens in all 28 EU Member States were interviewed, and the conclusion was that there are three main reasons behind the willingness to engage in illicit consumption: lower prices, easy accessibility and a low degree of social stigma associated with such purchases.

What most people don’t understand or believe or are even aware of is that the counterfeit trade operation elicits tax evasion and is associated with wider criminal acts, such as human and drug trafficking.

The Report concludes that “Because of the high value associated with IPR, infringement of those rights is a lucrative criminal activity, which generates significant costs to the rights owners and to the economy in general.”

While this comes as no surprise to most IP practitioners, the EUIPO’s research demonstrates – once again – that the infringement of Intellectual Property Rights is not only a private issue, but a social one as well.

(*)The full Report and additional information, has been made available by EUIPO on the Observatory website: https://euipo.europa.eu/ohimportal/en/web/observatory/synthesis-report.

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UPCOMING EVENT: IFA Annual Convention

Convenção Anual da IFA

From February 7 to 14th, managing partner Gabriel Di Blasi will take part in the 58º edition of IFA (International Franchising Association) Annual Convention in Phoenix, Arizona. The event brings specialists in business, economy, and others segments to talk about opportunities for franchising.

Click here for more information

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