you've got a friend in udrp
TRANSCRIPT
ConferenceSpecial
w w w. i p p r o t h e i n t e r n e t . c o m
The primary source of global intellectual property internet news and analysis
Enforcement InsightThe IPR Center is going global
You’ve got a friend in UDRPWIPO’s Brian Beckham reveals how new TLDs are affecting the Arbitration and Mediation Center’s workload
IP TechnologyNew kid on the blockchain
China TrademarksThe strange case of the patent office’s logo
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Contents WIPO InterviewWIPO’s Brian Beckham reveals how new TLDs are affecting the Arbitration and Mediation Center’s workload
P10IPR CenterUS IPR Center director Bruce Foucart reviews the progress that his agency and its partners have been in the fight against intellectual property infringement
P12
Tech ProfileTech startup Blockai’s novel approach to protection and enforcement promises to “democratise” copyright for artists whose rights have been misappropriated
P16
China TrademarksTingxi Huo and Zhanqing Tang discuss the strange case of a trademark office approving a third party’s application for the patent office’s logo
P18
Patent DamagesYu-Li Tsai of Deep & Far examines how damages are calculated in patent infringement litigation in Taiwan
P20
Mexico TrademarksA recent amendment will make costly annulments a thing of the past. Gilberto Sanchez, partner at SPECyF, explains
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Software SolutionsIPzen’s Ava Kammer considers the benefits of working in the cloud
P23
India InsightThe Calcutta High Court recently ruled that only the owner of a trademark can sue for its infringement. Lucy Rana and Bijit Das SS Rana & Co report
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Cox’s liability confirmed
A US district court judge has affirmed that Cox Communications is liable for the copyright infringement of its users and must pay $25 million in damages to BMG Rights Management.
In the 8 August decision, US District Court for the District of Eastern Virginia Judge Liam O’Grady denied the ISP’s motion for judgment as a matter of law or a new trial on the basis that the original jury’s verdict of willful infringement was correct.
BMG, whose musicians include Bruno Mars, David Bowie and Kings of Leon, held Cox responsible for the copyright infringement committed by the ISP’s users.
BMG also sought a judgment on its claim of vicarious infringement and demand for permanent injunctive relief.
The injunction would have required Cox to terminate the accounts of infringing subscribers, as well as monitor potential infringements.
But Judge O’Grady found that “the relief requested would have a substantial spillover effect far beyond the parties to this lawsuit”.
“While there is significant public benefit in reducing copyright infringement, BMG has not demonstrated to the court’s satisfaction that such a reduction here would not come at the expense of other nontrivial interests, including privacy and access to the internet.”
Judge O’Grady explained that injunctive relief is inappropriate in the face of uncertainty.
“A court should not impose an injunction lightly, as it is an extraordinary remedy involving the exercise of a very far-reaching power, which is to be applied only in the limited circumstances which clearly demand it.”
Last year in the closely watched case, Cox was denied its safe harbour defence under the Digital Millennium Copyright Act due to its apparent failure to terminate the accounts of its infringing customers.
Judge dismisses Alibaba racketeering claims
A US district judge has dismissed racketeering claims asserted against Chinese e-commerce giant Alibaba Group.
Judge Kevin Castel rejected the Racketeer Influenced and Corrupt Organizations Act claims of French luxury brand owner Kering on 4 August in the District Court for the Southern District of New York, on the grounds that the claims were unsubstantiated.
Kering owns several high profile luxury brands including Gucci and Yves Saint Laurent, which claim that Alibaba had essentially formed an enterprise through ecommerce platforms such as Taobao, which dominate online retailing in China, selling fake versions of Kering products for as little as $2, when authentic versions could cost up to and over $1,000.
Judge Castel’s ruling does not affect other aspects of the lawsuit against Alibaba.
Kering filed several copyright infringement and trademark claims against Alibaba in May, which Alibaba has said have “no basis”.
In August last year, Kering won a court order that barred certain vendors from using Alibaba’s online marketplaces to sell counterfeit products.Since then, Alibaba has upped efforts to defend against copyright
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and trademark infringement in an attempt to create confidence among its disgruntled critics.
Alibaba joined the International Anti-Counterfeiting Coalition (IACC) earlier this year but was suspended after protest resignations by high profile brands, including Gucci.
In July, Alibaba launched a new IP infringement system that gives brands their own account managers to work with them through the takedown process.
Alibaba did not immediately reply to a request for comment.
Donuts demands $22.5 million from ICANN
Donuts has amended its lawsuit against the Internet Corporation for Assigned Names and Numbers (ICANN) to demand a new settlement of $22.5 million plus damages.
The amended complaint was filed in the US District Court for the Central District of California on 8 August and cited new evidence of Verisign’s alleged involvement in Nu Dot Co’s winning $135 million bid for .web, arguing that ICANN “willfully and intentionally committed wrongful acts”.
Following Nu Dot Co’s successful bid for .web, evidence emerged in Verisign’s quarterly report that it had transferred $130 million for “the future assignment of contractual rights, which are subject to third-party consent”.
Donuts claims that ICANN “intentionally failed to abide by its contractual obligations to conduct a full and open investigation into Nu Dot Co’s admission because it was in ICANN’s interest that the .web contention set be resolved by way of ICANN auction.”
“ICANN deprived Donuts and the other applicants for the .web gTLD of the right to compete for .web in accordance with established ICANN policy. Court intervention is necessary to ensure ICANN’s compliance with its own accountability and transparency mechanisms.”
The demanded $22.5 million is equal to the amount Donuts said it would have received if the auction had been private and still closed for $135 milion.
The registry’s original lawsuit was filed less than a day after a request for ICANN to postpone the auction was denied. Donuts had requested that ICANN fully investigate .web applicant Nu Dot Co’s leadership changes, with the registry suspecting that Verisign was behind Nu Dot Co’s bid.
ICANN maintained throughout the application process that it had investigated the alleged problems with Nu Dot Co’s potential leadership changes and found no alterations.
Donuts filed for an injunction requiring ICANN to refrain from conducting the auction for .web, but the bid was denied.
Roche recovers domain name haul
Pharma company Roche Group and its subsidiaries have reclaimed 18 domain names that were filed in bad faith.
The World Intellectual Property Organization Arbitration and Mediation Center’s recent ruling covered 18 domain names that infringed five trademarks that cover Roche drugs.
The domains mixed various iterations of the trademarks ‘Boniva’, ‘Cellcept’, ‘Herceptin’, ‘Lucentis’ and ‘Mabthera’ with generic words such as ‘buy’ and ‘order’.
The drugs have a range of applications, including immunosuppressive agents that can help with organ transplant and medicines for the treatment of cancer.
Multiple domain names were directed towards the website of a Canadian pharmacy that claims to sell Boniva and Cellcept at low prices.
“The complainants find proof of use in bad faith in the domain names redirecting to an online pharmacy, therefore demonstrating awareness of the complainants’ pharmaceutical products associated with the trademarks,” said sole panellist Gregor Vos.
“All of the domain names include a recognisable trademark of the complainants. This will create confusion as these trademarks are highly distinctive and have no common colloquial use.”
VirnetX’s $625.6 million verdict against Apple voided
A US federal judge has voided a verdict ordering Apple to pay $625.6 million to VirnetX for infringing four patents.
Judge Robert Schroeder said in a decision on 29 July at the US District Court for the District of Eastern Texas that two lawsuits that had been combined into a single trial led to jurors being unknowingly influenced by a prior verdict.
The cases, referred to by VirnetX as Apple I and Apple II, will now be tried as separately. The cases had previously been combined after the Court of Appeals for the Federal Circuit had remanded Apple I and vacated the $368 million damages award VirnetX had won.
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VirnetX said that the issues in Apple I were largely similar to the issues in Apple II and that all of these issues could be decided at the trial for the second case.
But this was ultimately unfair for Apple, Judge Schroeder ruled.
VirnetX was awarded the $625.6 million judgement earlier this year in the combined case and was confident in its victory, with Caldwell Cassidy, attorney at VirnetX, saying “Apple has been infringing VirnetX’s patented technology for years”.
Kendall Larsen, VirnetX’s CEO and president, commented on 29 July: “We are disappointed by the court’s decision to vacate its prior ruling. We are reviewing all our options ... we trust that the jury will again make the right decision in the retrials.”
Apple I, which covers the alleged infringement of VirnetX patents in Apple’s VPN-on-Demand, as well as alleged infringement in Apple’s FaceTime product, is scheduled for jury selection on 26 September, unless both parties agree to an alternative date.
Apple II, which covers similar alleged infringement by Apple’s redesigned VPN-on-Demand, FaceTime and iMessage services, will be retried after Apple I.
Streaming dominates piracy
Content protection provider MUSO has released its Global Film & TV Piracy report, revealing a clear audience trend away from peer-
to-peer networks and towards illegal web streaming. In a report published at the end of July, the content protection provider discovered that 73.69 percent of the analysed total of 78.49 billion movie and TV piracy site visits were attributable to streaming sites against the 17.24 percent that were visiting peer to peer sites.
The Global Film & TV Piracy report covered visits to 14,000 of the world’s largest piracy websites over 200 million measured devices and covered 226 countries.
As well as these figures, the report uncovered that the biggest user of infringing video content was the US with more than 12 percent of the world’s global piracy audience.
France, Germany and the UK were all present in the top 10 countries contributing to piracy audiences.
A general decrease in peer-to-peer networks was also uncovered with an overall decrease of 18.98 percent from the last six months of 2015 to the first six months of 2016.
While the emerging trends seem to exhibit a shift towards other forms of illegal file sharing, the overall global monthly visits to movie and TV piracy sites are dropping, according to MUSO.
This follows research released last month by the UK Intellectual Property Office that revealed legal streaming services such Netflix and Spotify are having a “chilling effect” on illegal copyright infringement.
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Apple and Kudelski end OpenTV dispute
Apple and Kudelski Group have agreed to settle their patent infringement dispute.
Kudelski confirmed on 2 August that an agreement with Apple had been reached, but financial terms were not disclosed.
The first accusations of patent infringement against Apple arrived in 2014, with Kudelski’s subsidiaries, OpenTV and Nagravision, then filing three lawsuits against Apple in 2015, alleging that it had infringed their video streaming patents through its iOS mobile devices and Apple TV.
A Düsseldorf District Court in Germany ruled against Apple earlier this year, finding that OpenTV’s claims were “predominantly valid and well-founded”.
Kudelski has been aggressively asserting its patents and actively entering into patent licensing agreements since it acquired OpenTV in 2010. It has signed up Verizon and Yahoo.
Kudelski also signed a broad patent licensing agreement with RPX Corporation, a defensive patent aggregator, on 3 August.
The deal will allow RPX to sub-license patents owned by Kudelski to a limited number of companies.
Kudelski will receive an upfront payment, mutual patent risk clearance and future transfer of patents from RPX.
Kudelski has also joined the RPX client network as part of the agreement.
Joe Chemesky, senior vice president of intellectual property and innovation at Kudelski, said of the deal: “Operating companies benefit when they respect each other’s intellectual property rights and license patents in a reasonable and collaborative manner.”
RPX executive vice president Mallun Yen added: “In bringing together operating companies in complex deals such as this one, we reduce the uncertainty of patent-related risk and continue to transform the patent market with our clearinghouse approach.”
CSC acquires NetNames
The owner of UK-based NetNames, HgCapital, has agreed to the sale of the brand protection and domain name specialist to CSC in the US.
In a press release on 1 August, HgCapital said it would receive proceeds of £14.3 million on completion of the transaction, but left other details undisclosed.
HgCapital acquired NetNames in 2011 for £153 million.
A spokesperson from CSC said: “We are thrilled to be moving forward with the acquisition of NetNames.”
“We are excited by a future in which we can bring together our combined expertise to help companies worldwide protect and promote their brands in the digital marketplace.”
The brand and domain name management specialist is headquartered in London with offices around Europe and Asia.
It focuses on anti-piracy and online security measures, and offers domain dispute services.
PETA slips in monkey appealThe People for Ethical Treatment of Animals (PETA) has filed its opening brief in its bid to reverse the decision that the infamous ‘monkey selfie’ photographer, Naruto, could not claim authorship.
The brief was filed in the US Court of Appeals for the Ninth Circuit on 28 July in the appeal against the District Court for the Northern District of California’s January decision that standing for animals under the Copyright Act was a congressional matter.
The case, with PETA acting as the ‘next friend’ for Naruto in a bid to expand US copyright law to include animals, considered whether the seven-year old crested macaque monkey was the owner of the infamous ‘monkey selfies’, rather than photographer David Slater, whose camera was used to take the photos.
“Had the monkey selfies been made by a human using Slater’s unattended camera, that human would undisputedly be declared the author and copyright owner of the photographs,” PETA argued in its brief to the Ninth Circuit.
“Nothing in the Copyright Act limits its applications to human authors.”
PETA further argued that the “Copyright Act did not explain how to identify the author of a photograph” and referenced Burrows-Giles Lithographic Co v Sarony, a case in which the court recognised an author as “he to whom anything owes origin”.
PETA recognised that there was no prior cases that sought copyright protection on behalf of an animal and that “the history of copyright law has been one of gradual expansion”.
The opening brief marks the beginning of the appeal. Slater’s response is due by 29 August.
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Zuma presses ahead against Getty
Press agency Zuma Press has filed a copyright infringement lawsuit against Getty Images over its “careless” licensing of more than 47,000 photos.
The complaint, filed on 1 August in the US District Court of for the Southern District of New York, claims that Getty acquired Zuma’s photos and licensed, sold and distributed them on its platform without permission.
Zuma said that though Getty was originally conceived to counterbalance “the internet’s corrosive effect on the creative marketplace”, Getty had become “the content creators’ worst detractor”.
“[Getty] acquires more images than it can responsibly administer and belligerently enforces whatever imperfect rights it might have in those images.”
But sole panellist Charles Kuechenmeister denied the request, stating that Nestlé had acquired the name in 2007 in good faith and that “passive holding of the domain name is not sufficient to establish that it is being used in bad faith”.
Chipwich was a company that sold ice cream sandwiches using two chocolate chip cookies in the 1980s but entered into financial difficulties with the loss of its Weight Watchers frozen food licence in 2004.
Nestlé then acquired the company and discontinued production of the Chipwich.
The trademark was then abandoned by Nestlé and obtained by Kaplan’s company Retrobrands, which takes on previously famous but abandoned brands and trademarks.
Chipwich claim meltsNestlé has retained its Chipwich domain name, despite abandoning the US trademark.
The Alternative Dispute Resolution Forum reached the UDRP decision at the end of July, saying that its passive holding of chipwich.com was in “good faith”.
The complainant, Jeffrey Kaplan, alleged that Nestlé was cybersquatting and had registered the domain in bad faith after voluntarily surrendering its intellectual property rights to ‘Chipwich’ in 2011.
Kaplan claimed that Nestlé’s domain registration was preventing him from using ‘Chipwich’ for a legitimate business purpose.
Zuma blames Getty’s infringement on accelerated growth “that makes due diligence and adequate review of acquisitions difficult and improbable”.
“Getty has been carelessly and recklessly acquiring content, not doing due diligence and not taking adequate measures to prevent infringement as well as falsifying/removing proper copyright management information.”
This lawsuit comes after Carol Highsmith, a US photographer, launched a $1 billion complaint against Getty.
Getty had allegedly sent Highsmith a $120 copyright claim for a photo she says she created and owns.
According to Highsmith’s complaint, she learned that Getty had sent similar letters to other users of her photos, all of which are available online for free.
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Domain names in new TLDs made up 10.5 percent of the centre’s caseload last year, which was also up overall on 2014. What is the centre having to do to deal with this increase in cases?
The World Intellectual Property Organization (WIPO) Arbitration and Mediation Center’s administration of Uniform Domain Name Dispute Resolution Policy (UDRP) cases is facilitated through a tailor-made case management database. We are always looking at ways to adapt such tools not only to further streamline our operations against increased case filings, but also to achieve a high degree of consistency in our case administration.
On another resource note, we are fortunate to have a highly motivated team of bright young lawyers and dedicated support staff from around the world. In terms of numbers, new TLDs continue to occupy an increasingly significant proportion of case numbers: almost 15 percent of filings so far in 2016.
With new TLDs, are UDRP cases having to retread lots of old ground? What are the benefits of having already established case law? Are any new issues creeping up as a result new TLDs?
While readers will know that UDRP cases do not operate on a strict principle of binding precedent, both filing parties and UDRP panellists alike unquestionably rely on consensus positions articulated in WIPO-created resources such as the WIPO Overview of WIPO Panel Views on Selected UDRP Questions and the WIPO Legal Index—both of which cover experiences gained through nearly 35,000 WIPO UDRP cases.
These resources lend themselves to a great degree of consistency in decisions and provide parties with reasonable assurance of the degree of merit to their respective cases.
New TLD cases have largely tracked existing first element jurisprudence in confirming this criterion as a ‘standing’ threshold. In some cases, panels have been exploring whether a particular new TLD itself may affect the second and third element analysis, particularly where parties using the same mark in different classes
may legitimately co-exist (for example, abc.bank and abc.shoes). Overall, however, early new TLD cases have not so far presented any groundbreaking or landmark jurisprudential issues. How effective is the transfer procedure operating at the moment? Are registrars/registries transferring contested domains as quickly and efficiently as they can? While the WIPO centre does not actively participate in the implementation of UDRP decisions, we note anecdotally that the most registrars have been appropriately implementing UDRP decisions. In some cases, however, new registrars are facing something of a learning curve, and in some rare cases, UDRP case implementation matters are brought to the attention of the Internet Corporation for Assigned Names and Numbers (ICANN).
Filing parties may themselves use ICANN’s complaint form. While not related to new TLDs as such, we have also experienced some growing pains with registrar implementation of party settlement
Mark Dugdale reports
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requests pursuant to the UDRP lock rules change in July 2015. We continue to work with parties, registrars, and ICANN on rationalising this still relatively new practice.
What are the key issues being considered in the RPM review and how could UDRP change? The working group has only recently begun its work. An ICANN workplan has been established that tentatively provides for review of the UDRP sometime in 2018, with other rights protection mechanisms being considered prior to the UDRP (including the Uniform Rapid Suspension). In light of the extended timeline for review, and noting in particular the review of the URS slated to precede any UDRP review, it is somewhat premature to speculate on the key issues and possible changes to the UDRP.
However, as stated in the WIPO centre’s submission to ICANN in November of 2015, “[a]n inventory of early aspirations expressed by brand owners illustrates the complexity of UDRP amendment.”
“These include: ‘loser-pays’ sanction, reduced timelines, lower filing fees (even via ICANN subsidy), injunctive relief, registry decision implementation, bad-faith presumption for repeat offenders, registrant portfolio disclosure, domain name blacklisting instead of transfer, WhoIs enhancements, addressing infringing content beyond the domain, and revisiting the role of registration authorities.”
In any event, we consider it important that ICANN’s review process does not end up destabilising the proven functioning of this globally-used trademark enforcement mechanism.
Readers may also be interested to learn that as of 4 July 2016, WIPO has been providing a new domain name dispute resolution service for the .fr, .pm, .re, .tf, .wf, and .yt country code TLDs.
An updated procedure managed by registry AFNIC in collaboration with the WIPO centre is now available to resolve .fr (France) and .re (Reunion Island) domain name disputes.
Under the same procedure, the WIPO centre now also offers dispute resolution services in relation to domain names registered under .pm (St Pierre and Miquelon), .tf (French Southern Territories), .wf (Wallis and Futuna Islands) and .yt (Mayotte). IPPro
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US IPR Center director Bruce Foucart reviews the progress that his agency and its partners have made in the fight against intellectual property infringementThe National Intellectual Property Rights Coordination Center, known as the IPR Center, stands at the forefront of the US government’s response to global IP theft and enforcement of its international trade laws. Since its foundation in 2000 under the former US Customs Service, the mission of the IPR Center has been to ensure national security by protecting the public’s health and safety, the US economy and service members, and to stop predatory and unfair trade practices that threaten the global economy.
The IPR Center brings together 23 partner agencies, consisting of 19 key federal agencies, the International Criminal Police Organization (INTERPOL), the European Police Office (EUROPOL), and the governments of Canada and Mexico. This unique task force model combines the best aspects of all partner agencies, both foreign and domestic, to ensure that our mission of service to the American people is upheld by employees of the highest calibre. Using these resources, the IPR Center has developed comprehensive operations and works with internal and external agencies to conduct effective IP enforcement, defend the economy, protect consumers, and expose criminal organisations.
In the last year, the IPR Center has worked tirelessly to uphold these founding goals, achieving numerous successes both at home and abroad. Reflecting our commitment to public safety and security, we have continued to emphasise Operation Chain Reaction, a strategy of enforcement aimed at ensuring that our military’s supply chains are secure and that the highest standards are upheld at every step of the manufacturing process. The intrusion of counterfeit goods into areas critical for national defence has been an increasing concern, as these products are relied upon by our service members to ensure both their safety and our own. We are pleased to report that our efforts have been met with massive successes, leading to 28 indictments, 23 convictions, and over $14 million in seizures, ensuring our troops receive the tools they need to keep America safe.
Our efforts are not only focused on matters of national security, however. The IPR Center considers public health and safety a top priority. Counterfeit pharmaceuticals and cosmetics can cause serious side effects, as they often contain toxins or chemicals not approved for use in the US. For the past 10 years, Operation Apothecary has been at the forefront of this effort. The operation targets and interdicts suspect shipments of counterfeit pharmaceuticals arriving at various ports of entry. In 2015, we reinforced our commitment to ensuring consumer safety through Operation Plastic Beauty, targeting counterfeit cosmetics. In the last year alone, over $22 million worth of counterfeit personal care products and medicines were seized, leading to 212 arrests, 235 indictments, and 201 convictions. In individual cases, restitution in excess of $900,000 was ordered in addition to significant prison sentences, sending a firm message to those who would jeopardise the health of Americans.
Our successes in these areas, while significant, have only been possible due to our focus on cooperation with industry leaders and international authorities. By utilising the knowledge of experts at the tops of their fields, organisations such as the Automotive Anti-Counterfeiting Council (A2C2) have enabled us to keep pace with the latest threats in automotive and industrial counterfeiting. These have included such dangerous materials as counterfeit car airbags and wheels, both of which can cause severe injury or death if failure results.
Through our cooperation with industry leaders, we have been able to intercept many of these counterfeit materials before they enter the supply chain, ensuring consumer safety.
The IPR Center has also expanded its efforts to work with our partners overseas. In addition to the 63 locations around the world where Homeland Security Investigations agents are stationed, the IPR Center has been working directly with governments to strike at counterfeiting operations at their source. In 2015, programme managers sent to Thailand helped conduct 10 operations, seizing $18 million worth of goods and making 16 arrests. This is just one of the many countries with whom we work closely and our efforts are complemented by the direct support we receive from INTERPOL, EUROPOL, and the governments of Canada and Mexico.
Through these connections and our developing network of operations, we have seen dramatic successes. In 2015, the number of IPR seizures increased nearly 25 percent to 28,865 from 23,140 in 2014. The total estimated manufacturer’s suggested retail price (MSRP) of the seized goods, had they been genuine, increased 10 percent to more than $1.35 million. Tactical interagency collaboration with the IPR Center resulted in 538 arrests, with 339 indictments, and 357 convictions.
Our successes come at a time when they are needed the most. New challenges in the world of counterfeiting and IP theft are always appearing, as criminal networks use the latest forms of technology to conceal their actions and money supplies. The rise of internet businesses and express consignment have also provided opportunities for criminals to target average consumers with counterfeits, many of which prove to be dangerous due to inclusion of faulty parts or toxic materials. In addition to these examples of direct marketing, we have seen an expansion of counterfeiting overseas, with more than 85 percent of counterfeited goods imported through China or Hong Kong. To combat these threats, we have expanded our pre-existing networks of international cooperation to focus on these new transport vectors.
In addition to our prior work with nations such as Canada, Mexico, and Thailand, the IPR Center has been working directly with Hong Kong and China to attack counterfeiters at the source: their production facilities. In 2015, we collaborated with China’s Ministry of Public Security to dismantle a counterfeit airbag distribution network, leading to the arrests of three suspects and the seizure of more than 2,100 airbags produced using parts salvaged from Chinese junkyards.
Building upon our recent successes and moving forward into the coming year, the IPR Center has implemented several new programmes, each designed to increase our impact and efficiency in key areas. First is the implementation of our new ‘Report IP Theft’ button. Initially featured on the IPR Center website, it is now featured in numerous industry materials and displayed prominently on sites such as the National Crime Prevention Council, the STOPfakes Initiative, the National Alliance for Jobs and Innovation, the National Football League, and many others.
Using the button allows consumers to access a comprehensive report form in which they are able to detail the violation they have observed and provide any information they have. This measure enables us to directly address one of the main sources of counterfeit goods—online retailers—by leveraging the knowledge of American consumers,
Enforcement Insight
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Stillwaters Law FirmADDRESS & CONTACT DETAILS2nd Floor 11, Awolowo Road, Ikoyi
P. O. Box 56161, Ikoyi 101008, Lagos, NigeriaTel: +234 (0) 1 454 7179, +234 (0) 1 460 5471
Mobile: +234 (0) 803 324 8860Fax: +234 (0) 1 460 5470
Email: [email protected]
People . Integrity . Service
Trademarks Patents DesignsCopyright Anti-counterfeitingBorder Enforcement Measures DomainsData Protection IP Litigation
STILLWATERS is an award winning law firm in Nigeria that specializes in intellectual property law,corporate and commercial, taxation and litigation. The firm operates from the commercial cities ofLagos and Abuja in Nigeria, with associate offices in Accra in Ghana and Douala in Cameroon.
Professionalism, flexibility and innovation are the hallmark of our practice. We value professionalexcellence, outstanding result and realize they both require creativity and hard work. We strive to gainevery legal advantage for our clients while upholding the principles behind the practice of law. Overthe years, we have acquired considerable experience and an enviable reputation for rendering qualitylegal services in our areas of specialization.
Practice representative clients include over 660 foreign multinationals, publicly-quoted companies,private companies, financial institutions, government institutions, industrial medium size businessesand individuals. Our practice is adequately equipped and well positioned to meet the challenges oflegal practice in an ever-changing technological age.
IP Due Diligence AnnuitiesTransfer of Technology PiracyLicensing Distributorship FranchisingCustoms Related AssistanceRegistrations Renewals Assignments
STILLWATERS FULL PAGE AD purple .indd 1 03/03/2015 14:45
The act establishes the IPR Center by statute and provides it with broad powers to coordinate our nation’s response to IP threats across the country
Bruce Foucart, Director, IPR Center
reversing the tactics of the counterfeiters themselves. The Report IP Theft button places power back in the hands of American consumers, giving them recourse when they experience counterfeiting or IP theft. Forms submitted in this way are transmitted directly to the IPR Center intelligence section and are investigated thoroughly by our agents, alongside those of our 23 partner agencies. Through this new system of crowdsourced intelligence, we have dramatically increased the quality of our leads, producing actionable intelligence in 98 percent of cases. With this new measure, alongside information provided through the IPR Center tip line at 1-866-IPR-2060, we feel confident in our efforts to combat new and more complex forms of counterfeiting, piracy, and infringement.
We are not alone in these endeavours. With the passage of the Trade Facilitation and Trade Enforcement Act at the beginning of this year, the IPR Center and our affiliates have received the firm support of Congress in addressing the new challenges presented by IP theft. The act establishes the IPR Center by statute and provides it with broad powers to coordinate our nation’s response to IP threats across the country, as well as providing a framework for training our domestic and international law enforcement agencies in the newest and most effective strategies.
By investing the IPR Center with its duties over coordination, Congress has established a clear chain of command and a method of allocating resources which will reduce waste and increase the speed of our reactions. The legislation thus ensures that the research and training techniques developed at the IPR Center or at any of its affiliated agencies will have the maximum impact, as well as enabling our agents to keep pace with the rapidly shifting criminal enterprises that threaten our nation’s economic and public security.
Although there are many challenges ahead, the IPR Center is confident that we possess the tools and the talent to fight the battle against IP theft.
With our highly trained and dedicated staff, the center has seen greater successes in the last several months than ever before. We possess new strategies, tools, and partners to take on criminals, wherever they may strike. We stand firm in our mission to ensure national security by protecting the public’s health and safety, the US economy and service members, and to stop once and for all the predatory and unfair trade practices that threaten the global economy. IPPro
Stillwaters Law FirmADDRESS & CONTACT DETAILS2nd Floor 11, Awolowo Road, Ikoyi
P. O. Box 56161, Ikoyi 101008, Lagos, NigeriaTel: +234 (0) 1 454 7179, +234 (0) 1 460 5471
Mobile: +234 (0) 803 324 8860Fax: +234 (0) 1 460 5470
Email: [email protected]
People . Integrity . Service
Trademarks Patents DesignsCopyright Anti-counterfeitingBorder Enforcement Measures DomainsData Protection IP Litigation
STILLWATERS is an award winning law firm in Nigeria that specializes in intellectual property law,corporate and commercial, taxation and litigation. The firm operates from the commercial cities ofLagos and Abuja in Nigeria, with associate offices in Accra in Ghana and Douala in Cameroon.
Professionalism, flexibility and innovation are the hallmark of our practice. We value professionalexcellence, outstanding result and realize they both require creativity and hard work. We strive to gainevery legal advantage for our clients while upholding the principles behind the practice of law. Overthe years, we have acquired considerable experience and an enviable reputation for rendering qualitylegal services in our areas of specialization.
Practice representative clients include over 660 foreign multinationals, publicly-quoted companies,private companies, financial institutions, government institutions, industrial medium size businessesand individuals. Our practice is adequately equipped and well positioned to meet the challenges oflegal practice in an ever-changing technological age.
IP Due Diligence AnnuitiesTransfer of Technology PiracyLicensing Distributorship FranchisingCustoms Related AssistanceRegistrations Renewals Assignments
STILLWATERS FULL PAGE AD purple .indd 1 03/03/2015 14:45
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Individual artists have long been highlighted as the biggest victims of persistent infringement. Like sole inventors who cannot afford to protect or enforce their own patents, struggling artists face the real possibility of not even being able to prove they are the rightful copyright owners.
Nathan Lands, founder and CEO of Blockai, a new technology startup, is promising to change that.
Lands is an entrepreneur who takes up-and-coming technologies and applies them to new areas. Blockai, his latest project, promises to “democratise copyright” by building an ownership platform to help artists manage their rights.
The platform itself is built on blockchain technology, a distributed database based on the bitcoin protocol. Blockai uses blockchain to create a permanent timestamp of content creation, protected from any form of tampering or revision.
The timestamp and content will then be added to the creator’s user profile and Blockai will begin monitoring the web for potential infringement.
In an interview, Lands says that “over time, we imagine Blockai will become the trusted profile for all copyright holders”.
“We will integrate Blockai into every creative tool. So that as soon as you create a copyrightable work you make your claim, it’s then put into your trusted profile and we automatically begin monitoring the web for possible infringements.”
Blockai hopes to place an artist’s entire catalogue in one place, for easy access when defending their rights.
Lands explains: “Blockai combines copyright registry with copyright monitoring, all in a public platform that can really spread virally. As artists use Blockai with Twitter, Instagram and other
creative tools, the idea of claiming your copyright will spread as well as our platform.”
Blockai should then go one step further, he says. “In the next few months, we’ll begin helping artists contact copyright infringers and in some cases give them a simple way to pay for a license to legally use the work.”
“We also plan on giving US artists the ability to batch register their copyrighted works with the US Copyright Office.”
With more than 20,000 reported copyright claims since July, Blockai is gaining traction, although it’s still early days.
“We have over one million copyright records unclaimed. Our monitoring feature is still in early beta. We’ve helped a few people find copyright infringements but we don’t have any success stories to share just yet.”
With any new technology come worries over security. Bitcoin in particular has had a troubled past, with high-profile thefts and one European IP Office report recently claiming that cryptocurrencies are being used by infringers. But blockchain is getting a lot of attention, not least in fintech, where startups and banks alike are heralding it as the next step in financial services.
The likes of IBM and Donuts are also investing heavily in blockchain, suggesting that it’s here to stay.
“Any technology can be misused,” says Lands.
“The great thing about Blockai is that if people commit fraud by claiming copyrights on the blockchain, they’ve made a permanent record that can never be erased that proves they committed fraud.”
“Over time we have plans on how to identify fraud and revoke copyright claims.” IPPro
Tech startup Blockai’s novel approach to protection and enforcement promises to “democratise” copyright for artists whose rights have been misappropriated
Barney Dixon reports Technology Profile
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On June 13, the Chinese Trademark Office (CTMO) granted provisional approval to a trademark similar to the logo of the State Intellectual Property Office (SIPO) and published the trademark in the Chinese Trademark Gazette. Unlike governmental organisations in other countries where the patent and trademark authorities are under the same roof, CTMO, separate from SIPO, failed to notice the similarities between the logos and inappropriately granted provisional approval.
This approval has put both SIPO and CTMO into an embarrassing situation. As an intellectual property governmental organisation, SIPO, accustomed to protecting others’ rights, needed to protect its own.
Although the owner has decided to voluntarily withdraw the application, this matter has attracted much attention from all circles and given rise to sarcastic and heated discussions. Assuming that the application had not been withdrawn, we will analyse from a trademark practitioner’s perspective the possible outcomes, resolutions and influences on the relevant parties to better understand Chinese trademark law and practice.
Possible outcome one: SIPO duly files an opposition
Under Article 33, SIPO is entitled to file an opposition on or before September 13, on the basis of absolute or relative grounds, directly by itself or indirectly through a trademark agent.
If an opposition were to be filed, SIPO should seek legal basis of absolute grounds according to Article 10.1.1 and/or 10.1.8, or relative grounds according to Article 32 of the Chinese Trademark Law.
Article 10.1.1 prohibits trademarks that are “identical with the names or symbols of state central authorities, or specific names of places where central state authorities are located or the names or images of landmarks”, while Article 10.1.8 prohibits “those that are detrimental to socialist morality or practices or that have other unhealthy effects”.
Article 32, meanwhile, states: “No trademark application shall infringe upon another party’s existing prior rights. Nor shall an applicant pirate in an unfair manner a mark that is already in use by another party and enjoys substantial influence.”
Under Article 10.1.1, the two marks or signs shall be identical with each other. This article shall not be applied to similarity issues. The two marks in question are not identical. Instead, the two marks are only similar. SIPO’s logo carries five stars, with a layout similar to that of China’s national flag, whereas the imitated mark carries two more stars, not to mention the different colours. Some opine that this article shall not be simply applied to perfectly identical marks, but also marks that are very similar. As such, if SIPO seeks protection under Article 10.1.1, there can be some uncertainties.
Therefore, Article 10.1.8, which is generally regarded as an all-functional article, may be a more appropriate basis of the opposition on absolute grounds.
On relative grounds, regretfully, SIPO does not have any prior applications or registrations for its logo for the same or similar services. But according to Article 32, it is possible for SIPO to base the opposition on its existing prior copyright to its logo, as its logo has a relatively high level of originality and the imitated mark is very similar.
On the basis of absolute grounds set out in Article 10, any other party, in addition to SIPO, is entitled to file an opposition. The same principle is also applicable to possible invalidation cases.
Possible outcome two: CTMO declares the mark invalid after registration
Under Article 44: “A registered trademark shall be declared invalid by the trademark office if it constitutes violation of Article 10, Article 11 or Article 12 of this law, or its registration is obtained by deceptive or other improper means.
Imitation painTingxi Huo and Zhanqing Tang discuss the strange case of a trademark office approving a third party’s application for the patent office’s logo
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Other entities or individuals may request the Trademark Review and Adjudication Board (TRAB, namely the appeal board) to declare such a registered trademark invalid.” There is no time limit for this type of invalidation.
Although embarrassing to declare invalid a registered trademark to which CTMO itself granted approval, CTMO remains in a position to thus rectify the situation, according to Article 10 and Article 44, although the owner, if dissatisfied, remains entitled to appeal to the TRAB or further to the courts.
Possible outcome three: SIPO requests for TRAB to declare the mark invalid after registration
An invalidation action is an option if SIPO fails to file an opposition in due course and misses the deadline. SIPO can also intentionally choose to request the TRAB for invalidation, to avoid CTMO’s examination again as the opposition shall be examined by CTMO’s opposition division.
After registration, SIPO, as well as other entities, can request the TRAB to declare the mark invalid according to the absolute grounds in Article 10 and Article 44.
In addition, SIPO can also request for TRAB’s invalidation declaration according to Article 45.1: “If a registered trademark violates the second or third paragraph of Article 13, Article 15, the first paragraph of Article 16, Article 30, Article 31 or Article 32 of this law, the prior rights holder or a materially interested party may, within five years of the date of registration of the trademark, request that the TRAB declare the registered trademark invalid.”
If a request is filed according to this relative ground on the basis of SIPO’s prior legitimate rights, only SIPO or any interested party is qualified to do so within five years after registration.
Possible outcome four: the owner shall be forbidden to use the mark
The forbidden signs under Article 10 shall not be used as trademarks. If the mark is finally not registered whereas the owner still uses the mark in practice, penalty might be available according to Article 52, namely “If an unregistered trademark is illegally passed off as a registered trademark or if use of an unregistered trademark violates Article 10 of this law, the local administration for industry and commerce shall stop this, order rectification within a specified period, and may additionally circulate a notice on the matter.
If the illegal turnover is RMB 50,000 or above, it may impose a fine of up to twenty percent of the illegal turnover. If there is no illegal turnover or if the illegal turnover is less than RMB 50,000, it may impose a fine of up to RMB 10,000.”
However, if the mark finally matures into registration and if the owner uses the mark, it turns out that there is no legal ground for possible penalty against such use under the Trademark Law. Accordingly, it will be more advisable for the SIPO to duly file an opposition, to avoid further embarrassment.
Possible outcome five: the agent will be safe
Article 10 actually forbids use of the listed signs and forbids registration. The imitated logo should be deemed in violation of Article 10. To regulate trademark agents, Article 19.2 provides: “A trademark agent shall clearly advise an applicant of the fact that the trademark entrusted for registration may fall under the circumstances prescribed by this law under which registration is not allowed.”
In other words, an agent is obliged to advise the applicant of the forbidden signs. If the agent is unable to prove that it had advised the applicant of the forbidden signs and the potential violation of Article 10, the agent shall be held liable. Again, it turns out that the Trademark Law fails to provide specific penalties against such violations.
Whatever the outcome, CTMO should have rejected this trademark at the very beginning. But how did this inappropriate approval happen?
Since China revised its Trademark Law for the third time and put the revised law into effect in 2014, examination of a new application must be finished within the statutory nine months, counting from the filing date without extension.
China has been the top trademark filer for 14 consecutive years since 2002. CTMO received 2.876 million new applications in 2015 alone. CTMO is faced with a heavy workload and has been forced to expedite examination through reform. Its senior experienced examiners are very careful, but they can only examine a limited number of applications. CTMO even recruited a large number of new examiners and set up an Examination Assisting Center. But the new examiners in the centre received very brief training before actually examining applications.
In the past, there were double checks. However, to further reduce backlogs and expedite examination, the procedure of double checking was abolished and only one examiner is now appointed to examine an application. That single examiner’s decision will be immediately final inside CTMO. Consequently, mistakes and negligence have increased.
In our opinion, this accident should set CTMO thinking about long-term solutions to similar problems. More importantly, it is high time that CTMO worked harder to optimise its internal examination procedures to improve the quality of examinations. IPPro
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China Trademarks
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In recent years, Taiwan’s Intellectual Property Court has begun to make internal reforms regarding case judgements because many have argued that the success rate for a plaintiff in patent infringement litigation was too low.
One of the most notable changes has been the percentage of invalidity holdings, which has been reduced from 60 percent to 30 percent. It is good news for patent owners because this gives them a greater chance of winning a civil lawsuit and damages. Therefore, we believe that the practice in calculating damages, which is sometimes described as the last mile for realising the value of a patent, will become more important in the future.
Article 97(1)(b) of Taiwan Patent Act stipulates that the damages claimed may be calculated according to “the profit earned by the infringer as a result of patent infringement”. In addition, under current practices, the patent owner still needs to provide evidence to prove the actual earned profit by including deductible costs and necessary expenses of the infringer for producing infringing products into the damages calculation.
The deductible costs and necessary expenses should include only direct costs other than indirect costs in accounting practices. The direct cost means the traceable ones, namely, the cost that can be directly recognised as or attributed to the cost factors. The indirect cost means the cost that cannot be directly recognised as and attributed to the cost factors, and should be apportioned through specific approaches.
Therefore, in the situation that the infringer provides evidence showing deductible costs and necessary expenses, the earned profit of the infringer should be calculated based on the ‘gross profit’ (revenue minus the direct cost) rather than the ‘net profit’ on which the indirect cost is further deducted from the gross profit.
However, cases become complicated when the infringer cannot provide sufficient evidence to show deductible costs and necessary expenses.
On 29 March, the IP Court decided a case (‘10338) about how the court calculates damages when there is insufficient evidence to prove the earned profits from the infringements of an infringer.
In the present case, a patent owner sued an infringer for infringing patented DVD-R techniques. The patent at issue was 294,862 and
the claims involved were 6 and 27. The plaintiff claimed damages on the basis of the earned profits from the infringement by the defendant, so the fiscal years for profit calculation, deductible costs and necessary expenses of the infringer would affect the results of the finally awarded damages.
The plaintiff asserted that the infringements lasted from 1 January 2001 to 14 February 2015, but the IP Court held that the infringements only lasted from 1 January 2003 to 14 February 2015. In addition, the defendant provided evidence to demonstrate that from 1 January 2014 to 14 February 2015, it suffered from a gross loss status after deducting the direct costs from the revenues.
Therefore, the fiscal period in which the plaintiff could claim damages became only from 1 January 2003 to 31 December 2013. However, the defendant could not provide detailed accounting reports or evidence showing any deductible costs and necessary expenses during the effective period, so the IP Court could only consider all factors on the basis of equity to make the decision.
The IP Court considered the following factors:
● Using the business revenue during the infringing period as a calculation basis;
● Whether the business revenue came from the products at issue;● The contribution percentage of the patent at issue to the
products at issue; and● The factors for considering contribution percentage include:
the use circumstances of users; the degree that the patent helped in obtaining a product certificate; and references from licensing contracts.
After considering these factors, the IP Court held that the total amount of the business revenue of the products during the effective period was about NT$ 664,088,917. In addition, the IP Court held that Claim 27 should be invalid, so the relevant business income to be considered should be adjusted down to NT$ 332,044,458 (NT$ 664,088,917÷2).
However, the IP Court finally awarded damages of only NT$ 10.5 million to the plaintiff simply based on some ratiocination because the defendant provided insufficient accounting reports or evidence showing any deductible costs and necessary expenses during the effective period.
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Patent owners should provide as much information as possible for the judges to make a more logical and objective decision
Yu-Li Tsai, Patent attorney, Deep & Far
In view of this decision, we may infer that the IP Court considered that the contribution percentage of the patent at issue to the products at issue was at least 3 percent (NT $10.5 million ÷ NT $332,044,458 = 0.0316). However, no matter to which industry or official authority is referred, there is no referable basis for the contribution percentage, and the court’s practices can only demonstrate case by case rules without a unified standard.
In another IP Court decision (‘10061), where the patent at issue belongs to DVD6C, the IP Court held that: “The defendant alleged that the patent at issue is only one of DVD6C’s 400 patents, so the damages which the plaintiff claimed should be divided by 400. Nevertheless, so far as the issue whether the optical discs manufactured by the defendant needed to use all of DVD6C’s 400 patents or what the value proportion between the patent at issue and the other 399 patents is concerned, we did not find that the defendant provided any evidence to prove its allegation.”
“Therefore, we did not agree with the defendant’s assertion that the plaintiff can obtain only one-400th of the claimed damages because DVD6C has 400 patents. In addition, the plaintiff’s patent is a part of its DVD specifications, the technical features of the patent at issue are fixed on the entire disc and unable to be individually separated, and if there were not the patent at issue, the disc would be valueless. Therefore, it is clear that the patent at issue makes the contribution percentage for the disc to perform one hundred percent of its function, and it is groundless that the defendant asserts one-400th of the claimed damages to compensate the plaintiff.”
Contrary to the ‘10061 case, in the present ‘10338 case, the IP Court only used half of the business revenues to calculate damages because one of the two independent claims was ruled invalid. Apparently, even though the products at issue in the two cases are both DVDs, the IP Court’s opinions are not unified. Therefore, under current practices, it is suggested the patent owners provide as much information as possible so as to expect that the judges can make a more logical and objective decision on the basis of more sufficient evidence and operable factors.
In practice, we generally cannot expect that an infringing defendant would voluntarily provide its sales information or financial reports. Based on equity, however, the patent law or civil procedure law actually does not require the plaintiff to prove the actual damages. In contrast, the laws authorise the court to consider all possible factors for a specific case to reach a final decision that is appropriate in compensating the plaintiff’s damages. The factors to be considered include proved infringement facts, time period, and the contribution percentage of the patent at issue.
So far as the contribution percentage is concerned, the IP Court’s standards are still inconsistent, so before a precedential judicial opinion comes out, patent owners should provide as much information as possible for the judges to make a more logical and objective decision. This information may include: the use circumstances of the users, the degree that the patent helped in obtaining product certificates, and references from licensing contracts. IPPro
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An amendment to the Industrial Property Law was published in the Official Gazette on 1 June that essentially established a trademark opposition system in Mexico.
Before, the trademark registration procedure was comprised of: an examination of the form, including a review of the formalities and/or classification in the registry application; and a contents examination, specifically a review of the registration capacity of the distinctive signs (Articles 4, 89 and 90 of the Industrial Property Law).
Once the form examination was completed and approved, the Mexican Institute of Industrial Property (IMPI) would review the registration capacity of the proposed sign and grant or refuse the trademark registration.
Finally, the trademark registration would be published in the the Industrial Property Gazette.
However, following the 1 June amendment, holders of trademark registrations and the public in general may announce their opposition to any trademark registration that is in process. With the implementation of the opposition system in Mexico, the procedure will change beyond what was described above.
Once a trademark application form has been submitted, the IMPI will publish the application in the Industrial Property Gazette within 10 working days, so that third parties are aware and any can demonstrate their opposition to the registration of the proposed sign ahead of its examination.
The term to submit any opposition is one month from the publication of the trademark application in the Industrial Property Gazette. It should be noted that the IMPI may or may not take into account the opposition of third parties and these shall not be considered as
such, neither as parties nor as interested parties, and the procedure of the trademark registration will not be suspended.
Furthermore, any opposition proceeding filed will not prejudge on the result of the contents examination made later by the IMPI.
Once the period of one month to submit any opposition has elapsed, the IMPI, within the following 10 working days, will publish any opposition requests in the Industrial Property Gazette.
The trademark applicant, subject to opposition, may pronounce and state what its right corresponds to, in connection with the causes, impediments or previous uses cited in the opposition, within one month.
The opposition and disclosures of the applicant may be considered by the IMPI during the application contents examination.
Finally, the IMPI shall communicate to the application opponent, in writing, the information of the title or certificate issued, or the resolution denying the registration, as the case may be.
If the opposition or disclosures of the applicant are filed by an agent or attorney, it shall suffice for the attorney to state under oath that he or she has the power to file the opposition or disclosures.
In summary, the opposition system will allow any holder of trademarks and the public in general to clarify before the IMPI that any sign submitted to trademark registration may affect their interests or the interests of the public in general.
With this amendment, it is possible to prevent trademark registrations that later may be the subject of annulment. Therefore, costly suits that can last up to five years may be avoided. IPPro
Trademark oppositions come to MexicoA recent amendment will make costly annulments a thing of the past. Gilberto Sanchez, partner at SPECyF, explains
Mexico Trademarks
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Collaborative software has transformed the way intellectual property is managed and protected in recent years. It allows IP lawyers and their clients to work together to protect a trademark or domain name portfolio from theft and improper use. Cloud technology has made the development of this type of collaborative software easier and more effective in 11 different ways.
Flexible working: Businesses that have fluctuating bandwidth demands need to be able to scale up and scale down their capacity at short notice. Cloud technology gives organisations the flexibility they need to increase and decrease their bandwidth in line with the needs of their operation. This approach can cut costs and give businesses a distinctive edge over their competitors.
Automatic updates: The successful implementation of collaborative software requires all users to have access to exactly the same version, which means regular updates are essential. Using cloud technology to develop an IP management system ensures that software updates are scheduled and executed automatically. The less time you spend on maintaining collaborative software, the more time you will have for trademark monitoring and protecting the intellectual property rights of your clients.
Easier collaboration: When your clients and colleagues can edit, share and upload documents from anywhere in the world, collaboration becomes a great deal easier. Updates can be made in real-time, which means everyone involved has full visibility at all times. Improving the ease of the collaboration process usually leads to more effective software that really serves the needs and interests of the client.
Work remotely: As long as you have access to a reliable internet connection, cloud technology will allow you to collaborate with colleagues and clients from anywhere in the world. The ability to work remotely can improve productivity levels and morale within your workforce. It also means the collaboration process isn’t interrupted when key members of your team are away from their desk.
Improved security: Using cloud technology to develop collaborative software means you will never have to worry about a lost laptop harming the interests of your business. All of your data is stored on remote servers, which means you can access it from any internet-enabled device. There’s also no need to worry about your data being lost to viruses and hackers, as the latest cloud technology is highly secure. Moreover, if you ever lose a laptop, cloud technology allows you to erase sensitive data remotely.
Cost-effective disaster recovery: All businesses should plan for the worst-case scenario when it comes to their data and IT systems. Disaster recovery plans can be very expensive to set up, particularly for small businesses that lack cash and expertise. But by developing collaborative software over the cloud, the costs of disaster recovery can be slashed. Indeed, most cloud technologies now come with built-in disaster recovery processes.
No capital expenditure required: Developing collaborative software with real hardware is often too expensive for small firms. But using the cloud for development can cut the cost involved dramatically. Instead of purchasing expensive hardware, small businesses can get the same results with relatively modest subscriptions. And without time-consuming setup and management to worry about, the key individuals in your organisation can devote their time to the job at hand.
Safer and more convenient access to documents: Before the age of cloud computing, remote collaboration usually involved a barrage of emails with attached documents.
This process often leads to a mess of conflicting file consents, titles and formats. However, the cloud has made the development of collaborative software a great deal easier. Users can now have access to the files based in their security clearance. All files and documents can be stored centrally, making collaborative working easier and more secure.
Improved competitiveness: Developing software is an expensive process, often involving costly equipment and the services of IT professionals. But using the cloud gives smaller businesses the opportunity to cut costs and compete with much larger competitors. The ability to subscribe to cloud-based services allows smaller businesses to develop their own software at a fraction of what it would cost otherwise.
Innovate with ease: The flexibility provided to businesses by cloud technologies allows them to quickly deploy new projects and initiatives. New software can be rolled out to all users simultaneously, ensuring no one in your team is left behind.
Good for the environment: Software development can leave a significant carbon footprint, but using cloud technology means your server capacity adjusts automatically to the demands you’re placing on it. Relying on your own expensive servers to host complex software systems can use a significant amount of energy, much of which will be wasted due to overcapacity. IPPro
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The Calcutta High Court ruled in favour of Three Leaves India on 27 June, rejecting the plea of the petitioner for extending the ad interim order of injunction. In the present matter, the court also noted that a trademark infringement case can only be filed by the registered proprietor or the authorised licensee, and not by the user of the trademark.
The respondent, Three Leaves India, was restrained from selling and/or offering for sale or market tea in a packet, the labels of which contained ‘Nowalty’, due to similarities with the petitioner’s logo and product, ‘Lipton’.
It was further argued before the court that the word ‘Lipton’ is a registered trademark written in a distinct artistic typeface in a unique shape. It was argued that the respondent not only infringed the trademark but also passed off its product with a style that was deceptively similar to the trade design of the petitioner’s product.
The respondent’s advocate submitted that the trademark infringement suit was not maintainable before the court in view of Sections 52 and 53 of the Trade Marks Act, as the registration of ‘Lipton’ stood in the name of Unilever, a company registered under the laws of England. The moment those arguments were advanced by the respondent, the advocate for the petitioner instead contended that the suit was filed for copyright infringement rather than trademark infringement and passing off.
According to the petitioner, Section 62 of the Copyright Act of 1957 confers jurisdiction upon the Calcutta High Court and so the suit was maintainable. The petitioner further pointed out that the artist had assigned the artistic work to it, meaning it had the right to initiate an action the moment the infringement was realised.
Finally, the cause of action for infringement of a copyright was averred and pleaded and, therefore, the suit should not have been
Who owns it?The Calcutta High Court recently ruled that only the owner of a trademark can sue for its infringement. Lucy Rana and Bijit Das SS Rana & Co report
Case Report
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The moment those arguments were advanced by the respondent, the advocate for the petitioner instead contended thatthe suit was filed for copyright infringement
Lucy Rana, Managing associate advocate, SS Rana & Co
construed to have been founded upon the original trademark infringement and passing off claims.
The respondent argued that there had been a gross suppression of material facts and the attention of the court had not been drawn to the relevant paragraphs of the petition where it would have discerned that the entire case was founded on an infringement of a trademark and passing off. The respondent also highlighted several paragraphs of the petition where the petitioner categorically stated that it had a licence to the ‘Lipton’ trademark and possessed related trade dress rights.
There was no restriction on the court to refuse or extend the ad interim order on the returnable date before inviting the respondent to disclose facts in the form of affidavit if the materials produced by the respondent were sufficient enough to demolish the case made out in the complaint and injunction application, added the respondent.
The respondent referred to the statutory definition of a trademark, which means a mark capable of being represented graphically and is able to distinguish the goods or service of a person from those of others.
It may include the shape of the goods, packaging and a combination of colours. The respondent further drew the attention of the court to a definition of the registered trademark to mean the trademark that is actually on the register and is in force.
On the case of passing off, the respondent contended that it conducted business outside the jurisdiction of the court, meaning the present matter was not maintainable.
The petitioner also exploited its resources in securing police assistance and help rendered to the special officer in carrying out
the directions, passed on 12 May 12 2016, when the order did not indicate such police help.
A meticulous reading of the complaint would reveal that the petitioner categorically stated that it had a licence to the ‘Lipton’ trademark and possessed related trade dress rights, the court ruled.
The substantive reliefs claimed in the complaint were based on trademark infringement and passing off, except one, where the petitioner also claimed a decree of permanent injunction against the respondent from infringing the copyright. Apart from a solitary prayer, the court did not find any averments pertaining to its jurisdiction under the provisions of the Copyright Act, and neither the complaint nor the injunction application included material documents relating to an assignment of the trademark in favour of the petitioner.
An ad interim order in interlocutory proceedings does not necessarily bind the court or the parties at the later stage of the proceedings.
An ad interim order is usually made on the basis of the petitioner’s version of things, which is supported by an affidavit and the documents relied upon in the petition. If the ad interim order is made ex parte, the respondent is permitted to present its version or documents to detract from the petitioner’s case, on the returnable date.
The petitioner in this case misused and mutualised its resources in procurement of the police help to render assistance to the special officer appointed by the court in carrying out the directions passed on 12 May 2016. Finally, the court ruled that the ad interim order was obtained by misleading the court and caused immense sufferance to the respondent.
The court declined to extend the ad interim order of injunction and also imposed a cost assessed at approximately US $3,000 to be paid by the petitioner to the respondent. IPPro
The petitioner in this case misused and mutualised its resources in procurement of the police help to render assistance to the special officer appointed by the court
Bijit Das, Associate advocate, SS Rana & Co
Case ReportCase Report
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Rose Law Group recruited Jeremy Kapteyn as chair of the firm’s intellectual property law department.
The department will focus on patent, trademark and copyright matters involving natural products and cannabis.
Kapteyn previously worked at Snell & Wilmer where he focused on intellectual property and provided strategic counselling services.
He has experience in natural products and conducted postdoctoral studies at the University of Arizona’s Department of Plant Sciences on plant physiology, plant metabolism and applied genetics of natural products.
“Jeremy has one of the most unique backgrounds in our law firm.” said Jordan Rose, founder of Rose Law Group.
“We look forward to having him leverage his technical training and intellectual property experience to help our firm’s cannabis industry clients develop intellectual property assists and enhance the value of their business.”
Harter Secrest & Emery has bolstered its intellectual property department with Michael Berchou and Rowland Richards.
Berchou and Richards will join Harter Secrest’s office in Buffalo, New York. Their arrival takes the total number of IP professionals at the practice to over 20.
Both Berchou and Richards previously worked at Phillips Lytle and have extensive experience in litigation, as well as patent, trademark and copyright counselling.
John Horn, partner in charge of Harter Secrest & Emery’s Buffalo office, said: “Michael Berchou and Rowland Richards are first rate lawyers, who bring to Harter Secrest & Emery outstanding professional credentials. They also are terrific people and professionals who reflect our firm’s culture and principles.”
“Their addition to our team of talented attorneys in Buffalo is consistent with our focus on strategic growth to address the growing needs of our clients and ongoing changes in the business climate locally, regionally, nationally and internationally.”
Allen & Overy has recruited Marc Döring as partner in its international IP practice, based in London.
Döring previously worked at Simmons & Simmons where he was a partner and head of the IP group.
Döring has experience in the life sciences and high-tech industries.
Tim House, partner and head of litigation at Allen & Overy, said: “We are pleased to announce that Marc Döring will be joining our world-class team.”
“Our IP offering is unique among the big international firms with top tier IP partner in key European jurisdiction.”
The news comes following the appointment of Marjan Noor, who will arrive from Simmons & Simmons on 1 November.
Nelson Mullins Riley & Scarborough has added to its Charlotte office with Nathaniel Quirk as of counsel.
Before joining Nelson Mullins, Quirk served as chief IP counsel and assistant general counsel at Checkpoint Systems. IPPro
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