Deprecated: Array and string offset access syntax with curly braces is deprecated in /home/fantkkyy/en.nikolev.net/engine/classes/templates.class.php on line 278 Nikoleva Julia - Patent Attorney https://en.nikolev.net/ ru Nikoleva Julia - Patent Attorney https://en.nikolev.net/yandexlogo.png https://en.nikolev.net/yandexsquarelogo.png DataLife Engine BREXIT - Great Britain left the EU. The impact on the intellectual rights https://en.nikolev.net/analytics/trademarks/43-brexit-great-britain-left-the-eu-the-impact-on-the-intellectual-rights.html   How will Brexit affect my files? Brexit came into effect on 31 January 2020, meaning that the United Kingdom is no longer a member of the European Union. As we explained at the time, a transition period was established that will end on 31 December 2020. During this period, and according to the Withdrawal Agreement, EU law is still applicable in the United Kingdom. This extends to the EU Trademark and Community Designs Regulations, as well as their implementation instruments. Therefore, nothing has changed during this period. However, after 1 January 2021, and once this transition period is over, the United Kingdom will apply its own legislation and EU law will no longer be valid in this State. This is why we would like to inform you of the main aspects you must take into account. Trademarks Sat, 27 Feb 2021 14:23:16 +0300 How will Brexit affect my files? Brexit came into effect on 31 January 2020, meaning that the United Kingdom is no longer a member of the European Union. As we explained at the time, a transition period was established that will end on 31 December 2020. During this period, and according to the Withdrawal Agreement, EU law is still applicable in the United Kingdom. This extends to the EU Trademark and Community Designs Regulations, as well as their implementation instruments. Therefore, nothing has changed during this period. However, after 1 January 2021, and once this transition period is over, the United Kingdom will apply its own legislation and EU law will no longer be valid in this State. This is why we would like to inform you of the main aspects you must take into account. 1. EU Trademarks registered before 31/12/2020 Holders of an EUTM will obtain a trademark in the United Kingdom that is ‘comparable’ to the EU trademark. This comparable trademark will retain the priority, application, grant and renewal dates of the EUTM. The trademark number will be the same, but will be prefixed with the code UK009. The comparable trademark will automatically be registered, without fee payments, but the UKIPO will not issue a certificate; it will only be recorded in the office’s database. A certificate may be requested through an agent registered in the United Kingdom by paying the corresponding fees. It will take approximately 1-2 months to receive the certificate. 2. For EU trademarks that expire between 31/06/2020 and 31/12/2020. If an EUTM is not renewed before 31/12/2020, the UKIPO will create a comparable trademark, but it will appear as expired. If the EUTM is renewed within the 6 month grace period, the comparable UK trademark will also be considered automatically renewed, without having to pay fees to the UKIPO. ️3. EU Trademark applications pending on 31/12/2020 Applicants will not automatically receive a comparable trademark. They will be given a 9 month period to “reapply” for the UK trademark, which will retain the priority and application dates of the EUTM but will be examined by the UKIPO as if it were a direct trademark. ️4. Assignment of EU Trademarks pending recording on 31/12/2020 If a change of holder for an EUTM takes place, it should be recorded as soon as possible since the UKIPO will use the holder information appearing in the EUIPO on 31/12/2020. If the transfer is recorded in the EUIPO after 1 January, the transfer must also be requested for the comparable trade mark in the United Kingdom. ️5. International Trademarks designating the EU In the case of international trademarks designating the EU, the comparable trademark created by the UKIPO will be a national trademark. It will not be included within the international trademark. Therefore, only the EU will continue to appear as the designated contracting party in the international trademark, and the holder shall have a separate UK trademark. This may be redressed if the holder pays for a territorial extension of their international trademark to the United Kingdom and then applies for replacement. In this case, the subsequent designation will retain the application and/or priority date that corresponds to the comparable trademark. ️6. Oppositions and withdrawals pending after 31/12/2020 Opposition/withdrawal before the EUIPO based on a UK trademark: The opposition shall continue, but the UK trademarks used as a basis shall not be considered. If the opposition is based solely on UK trademarks, it will automatically lapse. Opposition/withdrawal before the UKIPO based on an EUTM: The proceeding shall continue unchanged. ️ Will use of an EU trademark solely in the United Kingdom be considered real and genuine to prove use in the EU or vice versa? USE BEFORE THE UKIPO The new law guarantees that any use of the Trademark in the EU before 1 January 2021, whether inside or outside the United Kingdom, shall be considered a use of the comparable right of the United Kingdom. That is, when the relevant use period of 5 years includes the period before 1 January 2021, its use in the EU will be accepted. When the period includes any time after 1 January 2021, use of the comparable trademark of the EU outside of the United Kingdom will not be considered. USE BEFORE THE EUIPO The new law guarantees that any use of the EU Trademark before 1 January 2021, in the United Kingdom, shall be considered a real and genuine use in the European Union. That is, when the relevant use period of 5 years includes the period before 1 January 2021, its use in the EU will be considered. When the relevant use period is after 1 January 2021, the use in the United Kingdom will not be taken into account to prove the use of the basic EU trademark of the proceeding. The importance of the use of an EU trademark in the United Kingdom for the analysis as a whole of the genuine use in the EU will progressively decrease, from potentially sufficient to completely irrelevant, according to the degree to which it covers the period to be used, as established in the particular case. The source of information: https://isern.com/en/impact-of-brexit-on-trademarks-from-1-january-2021 

How will Brexit affect my files?


Brexit came into effect on 31 January 2020, meaning that the United Kingdom is no longer a member of the European Union. As we explained at the time, a transition period was established that will end on 31 December 2020. During this period, and according to the Withdrawal Agreement, EU law is still applicable in the United Kingdom. This extends to the EU Trademark and Community Designs Regulations, as well as their implementation instruments. Therefore, nothing has changed during this period.


However, after 1 January 2021, and once this transition period is over, the United Kingdom will apply its own legislation and EU law will no longer be valid in this State. This is why we would like to inform you of the main aspects you must take into account.


1. EU Trademarks registered before 31/12/2020


Holders of an EUTM will obtain a trademark in the United Kingdom that is ‘comparable’ to the EU trademark. This comparable trademark will retain the priority, application, grant and renewal dates of the EUTM.


The trademark number will be the same, but will be prefixed with the code UK009.


The comparable trademark will automatically be registered, without fee payments, but the UKIPO will not issue a certificate; it will only be recorded in the office’s database.


A certificate may be requested through an agent registered in the United Kingdom by paying the corresponding fees. It will take approximately 1-2 months to receive the certificate.


2. For EU trademarks that expire between 31/06/2020 and 31/12/2020.


If an EUTM is not renewed before 31/12/2020, the UKIPO will create a comparable trademark, but it will appear as expired. If the EUTM is renewed within the 6 month grace period, the comparable UK trademark will also be considered automatically renewed, without having to pay fees to the UKIPO.


️3. EU Trademark applications pending on 31/12/2020


Applicants will not automatically receive a comparable trademark. They will be given a 9 month period to “reapply” for the UK trademark, which will retain the priority and application dates of the EUTM but will be examined by the UKIPO as if it were a direct trademark.


4. Assignment of EU Trademarks pending recording on 31/12/2020


If a change of holder for an EUTM takes place, it should be recorded as soon as possible since the UKIPO will use the holder information appearing in the EUIPO on 31/12/2020. If the transfer is recorded in the EUIPO after 1 January, the transfer must also be requested for the comparable trade mark in the United Kingdom.


️5. International Trademarks designating the EU


In the case of international trademarks designating the EU, the comparable trademark created by the UKIPO will be a national trademark. It will not be included within the international trademark. Therefore, only the EU will continue to appear as the designated contracting party in the international trademark, and the holder shall have a separate UK trademark.


This may be redressed if the holder pays for a territorial extension of their international trademark to the United Kingdom and then applies for replacement. In this case, the subsequent designation will retain the application and/or priority date that corresponds to the comparable trademark.


️6. Oppositions and withdrawals pending after 31/12/2020


Opposition/withdrawal before the EUIPO based on a UK trademark: The opposition shall continue, but the UK trademarks used as a basis shall not be considered. If the opposition is based solely on UK trademarks, it will automatically lapse.


Opposition/withdrawal before the UKIPO based on an EUTM: The proceeding shall continue unchanged.

Will use of an EU trademark solely in the United Kingdom be considered real and genuine to prove use in the EU or vice versa?


USE BEFORE THE UKIPO


The new law guarantees that any use of the Trademark in the EU before 1 January 2021, whether inside or outside the United Kingdom, shall be considered a use of the comparable right of the United Kingdom.


That is, when the relevant use period of 5 years includes the period before 1 January 2021, its use in the EU will be accepted. When the period includes any time after 1 January 2021, use of the comparable trademark of the EU outside of the United Kingdom will not be considered.


USE BEFORE THE EUIPO


The new law guarantees that any use of the EU Trademark before 1 January 2021, in the United Kingdom, shall be considered a real and genuine use in the European Union.


That is, when the relevant use period of 5 years includes the period before 1 January 2021, its use in the EU will be considered. When the relevant use period is after 1 January 2021, the use in the United Kingdom will not be taken into account to prove the use of the basic EU trademark of the proceeding.


The importance of the use of an EU trademark in the United Kingdom for the analysis as a whole of the genuine use in the EU will progressively decrease, from potentially sufficient to completely irrelevant, according to the degree to which it covers the period to be used, as established in the particular case.


The source of information: https://isern.com/en/impact-of-brexit-on-trademarks-from-1-january-2021 

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The Ministry of Economic Development of Russia supported the fight against "evergreen patents"​ https://en.nikolev.net/analytics/patenting/42-the-ministry-of-economic-development-of-russia-supported-the-fight-against-evergreen-patents.html The Ministry of Economic Development of Russia has prepared a draft departmental order that will limit the ability of pharmaceutical companies to patent derivatives of previously patented chemical compounds in order to prolong the legal monopoly on the production of medicines. This initiative is regarded as a long-awaited response of the regulator to repeated proposals from the Russian business and, in particular, the Committee of the Russian Industrialists and Entrepreneurs Union (RIEU) on Intellectual Property and Creative Industries. Patenting Sun, 21 Feb 2021 20:04:09 +0300 The Ministry of Economic Development of Russia has prepared a draft departmental order that will limit the ability of pharmaceutical companies to patent derivatives of previously patented chemical compounds in order to prolong the legal monopoly on the production of medicines. This initiative is regarded as a long-awaited response of the regulator to repeated proposals from the Russian business and, in particular, the Committee of the Russian Industrialists and Entrepreneurs Union (RIEU) on Intellectual Property and Creative Industries. The Committee appreciated the desire of the Ministry of Economic Development of Russia to start fighting the so-called double patenting and expressed the hope that the department would continue to listen to the expert opinion of the business community. Thus, in may 2019, Anatoly Semenov, the Chairman of the Board of non-profit partnership Community of users of copyright and related rights, spoke about the issue of double patenting in the appeal to the Chairman of the state Duma of the Russian Federation Vyacheslav Volodin, where he noted that about 75% of patents in the pharmaceutical industry were granted for inventions that have no novelty. According to A. Semenov, due to the current situation, in 2019, the commercial and public sectors purchased foreign-made medicines for $ 19.6 billion. If the problem of double patenting is solved, these costs will be significantly reduced, and high-quality drugs will be able to enter the Russian market at a significantly low price. "We expect that the order of the Ministry of Economic Development will limit the practice of double patenting. We have repeatedly emphasized that "evergreen patents" are no longer a matter of private interests of certain companies, but a significant social problem — the shortage of cheap medicines deprives people of the opportunity to receive the necessary medical care, " A. Semenov said. The source of information: the Committee of thethe RIEU on Intellectual Property and Creative Industries

The Ministry of Economic Development of Russia has prepared a draft departmental order that will limit the ability of pharmaceutical companies to patent derivatives of previously patented chemical compounds in order to prolong the legal monopoly on the production of medicines. This initiative is regarded as a long-awaited response of the regulator to repeated proposals from the Russian business and, in particular, the Committee of the Russian Industrialists and Entrepreneurs Union (RIEU) on Intellectual Property and Creative Industries.


The Committee appreciated the desire of the Ministry of Economic Development of Russia to start fighting the so-called double patenting and expressed the hope that the department would continue to listen to the expert opinion of the business community.


Thus, in may 2019, Anatoly Semenov, the Chairman of the Board of non-profit partnership Community of users of copyright and related rights, spoke about the issue of double patenting in the appeal to the Chairman of the state Duma of the Russian Federation Vyacheslav Volodin, where he noted that about 75% of patents in the pharmaceutical industry were granted for inventions that have no novelty.


According to A. Semenov, due to the current situation, in 2019, the commercial and public sectors purchased foreign-made medicines for $ 19.6 billion. If the problem of double patenting is solved, these costs will be significantly reduced, and high-quality drugs will be able to enter the Russian market at a significantly low price. "We expect that the order of the Ministry of Economic Development will limit the practice of double patenting. We have repeatedly emphasized that "evergreen patents" are no longer a matter of private interests of certain companies, but a significant social problem — the shortage of cheap medicines deprives people of the opportunity to receive the necessary medical care, " A. Semenov said.


The source of information: the Committee of thethe RIEU on Intellectual Property and Creative Industries

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The Intellectual Property Court: the Russian Patent Office is not entitled to compare a trademark and a company name of another person on its own initiative https://en.nikolev.net/analytics/trademarks/41-the-intellectual-property-court-the-russian-patent-office-is-not-entitled-to-compare-a-trademark-and-a-company-name-of-another-person-on-its-own-initiative.html The Intellectual Property Court (IPC) published a Review of the practice of applying certain grounds for refusal of state registration of a trademark (clauses 2, 4, 5, 8 and 9 of article 1483 of the civil code of the Russian Federation), approved by the IPC Presidium decree No. SP - 21/4 dated February 20, 2020.   Earlier, before the Review, the practice of applying the certain clauses of article 1483 of the Civil Code of the Russian Federation consisted of several resolutions of the Plenums of the Supreme Court and the Supreme Arbitration Court of the Russian Federation, as well as a very large array of disparate judicial acts adopted even before the appearance of the IPC. Now there is a single generalized document that addresses ambiguous and controversial issues of the application of this article.  Trademarks Sat, 31 Oct 2020 21:22:56 +0300 The Intellectual Property Court (IPC) published a Review of the practice of applying certain grounds for refusal of state registration of a trademark (clauses 2, 4, 5, 8 and 9 of article 1483 of the civil code of the Russian Federation), approved by the IPC Presidium decree No. SP - 21/4 dated February 20, 2020.   Earlier, before the Review, the practice of applying the certain clauses of article 1483 of the Civil Code of the Russian Federation consisted of several resolutions of the Plenums of the Supreme Court and the Supreme Arbitration Court of the Russian Federation, as well as a very large array of disparate judicial acts adopted even before the appearance of the IPC. Now there is a single generalized document that addresses ambiguous and controversial issues of the application of this article.    The main essence of the practice on this issue is as follows.   Company name   In accordance with clause 8 of article 1483 of the civil code of the Russian Federation, designations that are identical or confusingly similar to a company name or commercial designation (or their individual elements) protected in the Russian Federation or to a name of a registered selection achievement may not be registered as trademarks in respect of similar goods, if other persons have rights to the specified objects in the Russian Federation earlier than the priority date of the trademark being registered.   At the same time, a company name of a legal entity registered in a state party to the Paris Convention for protection of industrial property can also be opposed to a trademark in the Russian Federation. Application of clause 8 of article 1483 of the Civil Code is possible if the following circumstances are confirmed:   - the emergence of the right to a company name of a foreign legal entity under the law of that country before the priority date of the trademark or implementation of activities in the Russian Federation by such an entity in relation to goods and services similar to goods and services for which the trademark is registered; - the company name of a foreign legal entity is widely known among the Russian consumers.   In any case, in order to acknowledge granting of legal protection to a trademark as invalid under clause 8 of article 1483 of the Civil Code of the Russian Federation it is necessary to ascertain the actual use of the company name in relation to homogeneous goods and services before the priority date in order to determine the likelihood of the consumer confusing the trademark with the company name.   Herewith, as a general rule, the scope of use of a company name does not matter when determining the actual implementation of activities by a right holder under the company name, which activities is similar to the services for which the disputed trademark is registered. However, if there is an argument about the sham use of a company name, the court must investigate the scope of such use.   The distinctiveness of a company name is not assessed, but the degree of its popularity is taken into account when assessing the likelihood of confusion between the company name and a trademark. The territory on which the trademark and the company name are actually used is irrelevant.   It is noted that, since only commercial organizations have company names, the likelihood of confusion of a trademark with the name of a non-profit organization does not entail recognition of granting of legal protection to a trademark as invalid. A non-profit organization has the exclusive right to use its name on the basis of the Law on non-commercial organizations, but it is not the exclusive right to a company name within the meaning of part of the Civil Code of the Russian Federation in relation to the intellectual property and cannot be protected by the methods provided to right holders by the legislation.   Commercial designation   When comparing a trademark and a commercial designation, first of all, it is first necessary to ascertain whether the exclusive right to a commercial designation has arisen. For the right to a commercial designation to arise it is necessary that its use for individualization of the enterprise by the right holder has been sufficiently known within a certain territory.   If the actual use of the designation for individualization of an enterprise is not proven and, consequently, if it is not possible to qualify it as a commercial designation, the recognition of granting of legal protection to a trademark as invalid is excluded. In addition, a trademark can only be opposed to a designation that possesses the distinctive features necessary for its recognition as commercial.   Unfortunately, court practice has not alleviate the existing problems in the protection of a commercial designation in disputes with trademark owners. The common trend is that when protecting the right to a commercial designation, the courts require entrepreneurs to provide evidence of the popularity of such a commercial designation within a certain territory. At the same time, it is not clear in what way it is possible to prove this circumstance. Orders, letters, staff list, statutory and registration materials cannot confirm the popularity of a commercial designation.   Until now there are no judicial acts describing an indicative list of evidence to which right holders of commercial designations could refer. That is why trademarks registration has been and remains the most preferred, i. e., the most protected, means of individualization.   Conclusions   1. The mere fact of including a company name in the unified state register of legal entities is not enough to oppose it to a trademark which is applied for registration, since it is important to know in relation to which specific goods and services such a company name is actually used. There are no requirements for a company name to have distinctiveness. However, there is a requirement for the actual use of the name.   2. To oppose a trademark and a commercial designation, a commercial designation must have two conditions - popularity within a certain territory and the distinctiveness.   3. Compliance of a trademark applied for registration with the requirements of clause 8 of article 1483 of the Civil Code of the Russian Federation is checked in the process of the examination of the application only if there is an appeal or an objection filed on the appropriate basis, but not by the Russian Patent Office on its own initiative. In addition, the possibility of any person provided for by the Civil Code of the Russian Federation to object to the registration of a trademark is limited by the time from publication of the information about the application to a decision on state registration of the trademark. In case of missing this period, the argument about non-compliance of the registered trademark with the requirements of clause 8 of article 1483 of the Civil Code can only be claimed in the context of challenging the granting of legal protection to a trademark in the Chamber for Patent Disputes in accordance with articles 1512, 1513 of the Civil Code of the Russian Federation. The procedure for such a challenge differs significantly due to the need to prove the applicant's interest in such objections.   Translation by Julia Nikoleva   The source of information:https://www.advgazeta.ru/novosti/sip-rospatent-po-svoey-initsiative-ne-vprave-sravnivat-tovarnyy-znak-i-firmennoe-naimenovanie-inogo-litsa/  The Intellectual Property Court (IPC) published a Review of the practice of applying certain grounds for refusal of state registration of a trademark (clauses 2, 4, 5, 8 and 9 of article 1483 of the civil code of the Russian Federation), approved by the IPC Presidium decree No. SP - 21/4 dated February 20, 2020.

 

Earlier, before the Review, the practice of applying the certain clauses of article 1483 of the Civil Code of the Russian Federation consisted of several resolutions of the Plenums of the Supreme Court and the Supreme Arbitration Court of the Russian Federation, as well as a very large array of disparate judicial acts adopted even before the appearance of the IPC. Now there is a single generalized document that addresses ambiguous and controversial issues of the application of this article. 

 

The main essence of the practice on this issue is as follows.

 

Company name

 

In accordance with clause 8 of article 1483 of the civil code of the Russian Federation, designations that are identical or confusingly similar to a company name or commercial designation (or their individual elements) protected in the Russian Federation or to a name of a registered selection achievement may not be registered as trademarks in respect of similar goods, if other persons have rights to the specified objects in the Russian Federation earlier than the priority date of the trademark being registered.

 

At the same time, a company name of a legal entity registered in a state party to the Paris Convention for protection of industrial property can also be opposed to a trademark in the Russian Federation. Application of clause 8 of article 1483 of the Civil Code is possible if the following circumstances are confirmed:

 

- the emergence of the right to a company name of a foreign legal entity under the law of that country before the priority date of the trademark or implementation of activities in the Russian Federation by such an entity in relation to goods and services similar to goods and services for which the trademark is registered;

- the company name of a foreign legal entity is widely known among the Russian consumers.

 

In any case, in order to acknowledge granting of legal protection to a trademark as invalid under clause 8 of article 1483 of the Civil Code of the Russian Federation it is necessary to ascertain the actual use of the company name in relation to homogeneous goods and services before the priority date in order to determine the likelihood of the consumer confusing the trademark with the company name.

 

Herewith, as a general rule, the scope of use of a company name does not matter when determining the actual implementation of activities by a right holder under the company name, which activities is similar to the services for which the disputed trademark is registered. However, if there is an argument about the sham use of a company name, the court must investigate the scope of such use.

 

The distinctiveness of a company name is not assessed, but the degree of its popularity is taken into account when assessing the likelihood of confusion between the company name and a trademark. The territory on which the trademark and the company name are actually used is irrelevant.

 

It is noted that, since only commercial organizations have company names, the likelihood of confusion of a trademark with the name of a non-profit organization does not entail recognition of granting of legal protection to a trademark as invalid. A non-profit organization has the exclusive right to use its name on the basis of the Law on non-commercial organizations, but it is not the exclusive right to a company name within the meaning of part of the Civil Code of the Russian Federation in relation to the intellectual property and cannot be protected by the methods provided to right holders by the legislation.

 

Commercial designation

 

When comparing a trademark and a commercial designation, first of all, it is first necessary to ascertain whether the exclusive right to a commercial designation has arisen. For the right to a commercial designation to arise it is necessary that its use for individualization of the enterprise by the right holder has been sufficiently known within a certain territory.

 

If the actual use of the designation for individualization of an enterprise is not proven and, consequently, if it is not possible to qualify it as a commercial designation, the recognition of granting of legal protection to a trademark as invalid is excluded. In addition, a trademark can only be opposed to a designation that possesses the distinctive features necessary for its recognition as commercial.

 

Unfortunately, court practice has not alleviate the existing problems in the protection of a commercial designation in disputes with trademark owners. The common trend is that when protecting the right to a commercial designation, the courts require entrepreneurs to provide evidence of the popularity of such a commercial designation within a certain territory. At the same time, it is not clear in what way it is possible to prove this circumstance. Orders, letters, staff list, statutory and registration materials cannot confirm the popularity of a commercial designation.

 

Until now there are no judicial acts describing an indicative list of evidence to which right holders of commercial designations could refer. That is why trademarks registration has been and remains the most preferred, i. e., the most protected, means of individualization.

 

Conclusions

 

1. The mere fact of including a company name in the unified state register of legal entities is not enough to oppose it to a trademark which is applied for registration, since it is important to know in relation to which specific goods and services such a company name is actually used. There are no requirements for a company name to have distinctiveness. However, there is a requirement for the actual use of the name.

 

2. To oppose a trademark and a commercial designation, a commercial designation must have two conditions - popularity within a certain territory and the distinctiveness.

 

3. Compliance of a trademark applied for registration with the requirements of clause 8 of article 1483 of the Civil Code of the Russian Federation is checked in the process of the examination of the application only if there is an appeal or an objection filed on the appropriate basis, but not by the Russian Patent Office on its own initiative. In addition, the possibility of any person provided for by the Civil Code of the Russian Federation to object to the registration of a trademark is limited by the time from publication of the information about the application to a decision on state registration of the trademark. In case of missing this period, the argument about non-compliance of the registered trademark with the requirements of clause 8 of article 1483 of the Civil Code can only be claimed in the context of challenging the granting of legal protection to a trademark in the Chamber for Patent Disputes in accordance with articles 1512, 1513 of the Civil Code of the Russian Federation. The procedure for such a challenge differs significantly due to the need to prove the applicant's interest in such objections.

 

Translation by Julia Nikoleva

 

The source of information:https://www.advgazeta.ru/novosti/sip-rospatent-po-svoey-initsiative-ne-vprave-sravnivat-tovarnyy-znak-i-firmennoe-naimenovanie-inogo-litsa/ 

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Patenting of gene and protein sequences: an EU and US perspective https://en.nikolev.net/analytics/patenting/40-patenting-of-gene-and-protein-sequences-an-eu-and-us-perspective.html In both the EU and the US native gene and protein sequences cannot be patented. However, under both regimes biological materials, and gene/protein sequences identical to those found in nature, may be patent protected in certain circumstances. The requirements for patentability of gene/protein sequences differ between the EU and US, leading to a number of issues and considerations that patentees and patent drafters must be aware of when seeking to protect biological material in these territories. Patenting Tue, 26 May 2020 21:49:07 +0300 In both the EU and the US native gene and protein sequences cannot be patented. However, under both regimes biological materials, and gene/protein sequences identical to those found in nature, may be patent protected in certain circumstances. The requirements for patentability of gene/protein sequences differ between the EU and US, leading to a number of issues and considerations that patentees and patent drafters must be aware of when seeking to protect biological material in these territories. Europe European Union directive 98/44/EC (the Biotech Directive) and the EPO's Guidelines for Examination govern the patenting of biological material in countries under the jurisdiction of the EPO. The Biotech Directive defines "biological material" as any material containing genetic information and capable of reproducing itself or being reproduced in a biological system1. It covers nucleotide sequences, full length genes, complementary DNA (cDNA), and fragments. Under the Biotech Directive, inventions which are new, involve an inventive step and are susceptible of industrial application are patentable, even if they concern a product consisting of or containing biological material or a process by means of which biological material is produced, processed or used. Additionally, biological material that is isolated from its natural environment or produced by means of a technical process may be the subject of an invention, even if it previously occurred in nature2. For biological material from the human body, the provisions are slightly different. The simple discovery of the sequence or partial sequence of a gene cannot constitute a patentable invention. Only if any of the following are satisfied can naturally occurring genetic sequences from the human body be patentable3: - biological material isolated or purified from its natural environment - biological material produced by means of a technical process (eg to identify, purify or classify it, which human beings alone are capable of putting into practice and which nature is incapable of accomplishing, even if it previously occurred in nature) (eg artificial DNA constructs, cDNA, genetically engineered proteins4) - discovered to exist in nature and a technical effect is revealed (eg gene used in making a certain polypeptide or in gene therapy). Additionally, to meet the requirements of patent eligibility, the use and industrial application of a genetic sequence or encoded protein must be disclosed in the application as filed5. For example, merely identifying the structure of a protein, which does not have a clear role or practical use, is not enough. Under the EPO regime, the novelty of biological material has been held not to be destroyed by a naturally occurring sequence: - the prior publication of a sequence of the human genome does not harm the novelty of the sequence claimed in an isolated state - prior disclosure of the isolated sequence does not anticipate the corresponding cDNA that does not occur in nature - prior disclosure of the cDNA does not anticipate short sequences of special interest. US In the United States, the patentability of biological materials and genetic sequences is markedly different to the EU regime. Until 2013 natural biological substances could be patented if they were sufficiently "isolated" from their naturally occurring states. However, the Myriad case6 , which involved patents claiming the sequences of two human genes (BRCA1 and 2), changed the legal position surrounding patenting of biological substances. Myriad decided that genes that had simply been isolated from the genetic material of an organism (whether human or other) could no longer be patented. This decision was reached on the basis that DNA is a "product of nature", and because nothing new and useful is created when a gene is located/discovered or simply isolated there is no intellectual property to protect. The exclusive right to isolate an individual's genes and create cDNA was held to not be allowed. This decision had substantial consequences, and invalidated over 4,300 patented human genes. Comparison Although the Myriad decision seems to mark a substantial difference in the US to the position under EU law, where isolated genetic sequences can be patented, the regimes are not as dissimilar as it may be first thought. In the both the US and at the EPO, artificial DNA constructs or sequences altered by humans remain patentable, as they are not naturally found in nature. cDNA is also patentable, because it is synthetically produced from the mRNA molecule and is not a naturally occurring product of nature. Additionally, method claims are not implicated by the US Myriad decision, so an innovative method of manipulating genes may be patentable, as may new applications of knowledge regarding newly discovered gene sequences, or modified gene sequences in both the US and EU. Considerations The differences between the US and EPO regimes regarding isolated gene and protein sequences must be considered by patentees and patent drafters when formulating a patent strategy or applying for patent protection. Most importantly, isolated biological material can be protected in the EU, but similar subject matter will not be patentable in the US. This may cause contrasting levels of patent protection across the EU and US between isolated sequences and synthetically produced sequences from the isolated biological material, which could have substantial impacts on the commerciality of a new invention, and how patent portfolios are dealt with in the different jurisdictions. 1 Article 2 2 G.II.5.3; Article 3 (Eli Lilly/Fresenius). 3 Article 5 Biotech Directive 4 G.II.5 – Rule 27(a); EU Dir. 98/44/EC, rec. 21; Rule 29(1)and(2) 5 Article 57 EPC 6 Association for Molecular Pathology v Myriad Genetics Inc. Supreme Court (US) 2013 Original article: https://www.taylorwessing.com/synapse/ti-patenting-gene-sequences.html

In both the EU and the US native gene and protein sequences cannot be patented. However, under both regimes biological materials, and gene/protein sequences identical to those found in nature, may be patent protected in certain circumstances.


The requirements for patentability of gene/protein sequences differ between the EU and US, leading to a number of issues and considerations that patentees and patent drafters must be aware of when seeking to protect biological material in these territories.


Europe


European Union directive 98/44/EC (the Biotech Directive) and the EPO's Guidelines for Examination govern the patenting of biological material in countries under the jurisdiction of the EPO.


The Biotech Directive defines "biological material" as any material containing genetic information and capable of reproducing itself or being reproduced in a biological system1. It covers nucleotide sequences, full length genes, complementary DNA (cDNA), and fragments.


Under the Biotech Directive, inventions which are new, involve an inventive step and are susceptible of industrial application are patentable, even if they concern a product consisting of or containing biological material or a process by means of which biological material is produced, processed or used.


Additionally, biological material that is isolated from its natural environment or produced by means of a technical process may be the subject of an invention, even if it previously occurred in nature2.


For biological material from the human body, the provisions are slightly different. The simple discovery of the sequence or partial sequence of a gene cannot constitute a patentable invention. Only if any of the following are satisfied can naturally occurring genetic sequences from the human body be patentable3:


- biological material isolated or purified from its natural environment

- biological material produced by means of a technical process (eg to identify, purify or classify it, which human beings alone are capable of putting into practice and which nature is incapable of accomplishing, even if it previously occurred in nature) (eg artificial DNA constructs, cDNA, genetically engineered proteins4)

- discovered to exist in nature and a technical effect is revealed (eg gene used in making a certain polypeptide or in gene therapy).


Additionally, to meet the requirements of patent eligibility, the use and industrial application of a genetic sequence or encoded protein must be disclosed in the application as filed5. For example, merely identifying the structure of a protein, which does not have a clear role or practical use, is not enough.


Under the EPO regime, the novelty of biological material has been held not to be destroyed by a naturally occurring sequence:


- the prior publication of a sequence of the human genome does not harm the novelty of the sequence claimed in an isolated state
- prior disclosure of the isolated sequence does not anticipate the corresponding cDNA that does not occur in nature
- prior disclosure of the cDNA does not anticipate short sequences of special interest.


US


In the United States, the patentability of biological materials and genetic sequences is markedly different to the EU regime. Until 2013 natural biological substances could be patented if they were sufficiently "isolated" from their naturally occurring states. However, the Myriad case6 , which involved patents claiming the sequences of two human genes (BRCA1 and 2), changed the legal position surrounding patenting of biological substances.


Myriad decided that genes that had simply been isolated from the genetic material of an organism (whether human or other) could no longer be patented. This decision was reached on the basis that DNA is a "product of nature", and because nothing new and useful is created when a gene is located/discovered or simply isolated there is no intellectual property to protect.


The exclusive right to isolate an individual's genes and create cDNA was held to not be allowed. This decision had substantial consequences, and invalidated over 4,300 patented human genes.


Comparison


Although the Myriad decision seems to mark a substantial difference in the US to the position under EU law, where isolated genetic sequences can be patented, the regimes are not as dissimilar as it may be first thought.


In the both the US and at the EPO, artificial DNA constructs or sequences altered by humans remain patentable, as they are not naturally found in nature. cDNA is also patentable, because it is synthetically produced from the mRNA molecule and is not a naturally occurring product of nature.


Additionally, method claims are not implicated by the US Myriad decision, so an innovative method of manipulating genes may be patentable, as may new applications of knowledge regarding newly discovered gene sequences, or modified gene sequences in both the US and EU.


Considerations


The differences between the US and EPO regimes regarding isolated gene and protein sequences must be considered by patentees and patent drafters when formulating a patent strategy or applying for patent protection. Most importantly, isolated biological material can be protected in the EU, but similar subject matter will not be patentable in the US.


This may cause contrasting levels of patent protection across the EU and US between isolated sequences and synthetically produced sequences from the isolated biological material, which could have substantial impacts on the commerciality of a new invention, and how patent portfolios are dealt with in the different jurisdictions.


1 Article 2

2 G.II.5.3; Article 3 (Eli Lilly/Fresenius).

3 Article 5 Biotech Directive

4 G.II.5 – Rule 27(a); EU Dir. 98/44/EC, rec. 21; Rule 29(1)and(2)

5 Article 57 EPC

6 Association for Molecular Pathology v Myriad Genetics Inc. Supreme Court (US) 2013


Original article: https://www.taylorwessing.com/synapse/ti-patenting-gene-sequences.html

]]>
Usage of graphic techniques to extend the scope of legal protection of industrial designs https://en.nikolev.net/analytics/industrial-designs/39-usage-of-graphic-techniques-to-extend-the-scope-of-legal-protection-of-industrial-designs.html V.V. Mordvinova Russian Patent Attorney Saint-Petersburg   Lately, more and more often, dotted lines have appeared in images of patented industrial designs. The share of such patents has reached about 10%, at that, the leaders of such depiction of industrial designs are applicants from US, IT, KR, SE, FI. Predominantly, patents have been issued for such objects as "Graphical interface". So, the company SAMSUNG ELECTRONICS CO., LTD (KR) regularly patented industrial designs wherein dotted lines were used in the images for visual binding of graphic elements (menus, buttons, icons, lists, etc.) to mobile devices (patents Nos. 91034 - 91045). The user interface elements made in the form of various graphic images and arranged in a certain order within the mobile device display received legal protection as industrial designs. See the patents Nos. 91039, 92181 and 92396 (on the illustration). Industrial designs Sat, 04 May 2019 16:31:51 +0300 V.V. Mordvinova Russian Patent Attorney Saint-Petersburg   Lately, more and more often, dotted lines have appeared in images of patented industrial designs. The share of such patents has reached about 10%, at that, the leaders of such depiction of industrial designs are applicants from US, IT, KR, SE, FI. Predominantly, patents have been issued for such objects as "Graphical interface". So, the company SAMSUNG ELECTRONICS CO., LTD (KR) regularly patented industrial designs wherein dotted lines were used in the images for visual binding of graphic elements (menus, buttons, icons, lists, etc.) to mobile devices (patents Nos. 91034 - 91045). The user interface elements made in the form of various graphic images and arranged in a certain order within the mobile device display received legal protection as industrial designs. See the patents Nos. 91039, 92181 and 92396 (on the illustration).       After introduction of the amendments into the Civil Code of the Russian Federation in 2014 (the federal law No. 35-FZ of March 12, 2014), in particular, cancellation the list of essential features of industrial designs it was required a sort of replacement of this list in order to visually identify and emphasize the portion of the design, for protection of which portion the applicant claimed. It is clear that it could be stressed with color or contour, and the rest portion for which the applicant does not claim could be marked with dotted lines, especially taking into account that pursuant to point 32 of the Requirements to the documents for granting of industrial designs patents such an opportunity is stipulated. In April 2018 during the seminar "Accession of the Russian Federation to the industrial designs international registration Hague System” organized jointly by WIPO and the Russian Patent Office, there was a confirmation of this thought in the speech of the Moscow colleague A.K. Vasilets: "In the absence of an opportunity to characterize the peculiarities of the claimed solution with words, the applicant uses a graphical approach for emphasizing the essential features". In a number of cases using of dotted lines makes it possible to expand legal protection provided within an industrial design patent. When comparing a patented industrial design with a specific product having similar purpose, for proving use of the industrial design it is necessary that the product contains all the essential features of the industrial design and makes the same general impression on an informed consumer as the patented industrial design (par. 2, art. 1358 of the Russian Civil Code). In case of using dotted lines on the images, on Vasilets’ opinion, "for ascertainment if a patent is infringed it is necessary to compare solid lines. Dotted lines are not taken into account. This means that the less solid lines or the more dotted lines, the stronger is the patent". It is a sort of claims of an invention! Here is the strength of dotted lines! There is a reason to believe that this graphic approach will help both judges and judicial experts, since when considering disputes about patents infringement visual information about protected features of industrial designs is more visible and, therefore, more comprehensible. In addition, during examination of an industrial design application, the Russian Patent Office experts will no longer be able to say that the distinctive features "are insignificant in general visual perception of an article or that they are not expressive enough and do not stand out against the general context and are nuanced". No designer wants his work to look like a cliche, so he aims to stand out among competitors, but after all, design ideas are not born in vacuum - they are usually borrowed and modified. There are many examples of such borrowing. It is obvious that designers wish to save exclusive rights with concern to these recognizable ideas as long as possible. For comparing of the scope of patent protection we give as an example 3 Russian patents (Nos. 108045, 108044 and 107018) of one patent holder (Fiskars Finnland Oy Ab, FI) for the industrial design "Handle for a garden tool," one of which is "dotted". Which one of these patents is stronger and why? It can be assumed that if a spade as whole article is chosen as an object of patenting, the peculiarities of the side portion of the handle the Russian Patent Office experts would consider insignificant features (see the illustration).       On the other hand, if the appearance of the D-shaped handles is chosen as an object of patenting (patents Nos. 108044 and 108045) experts would compare only the appearance of the shape of the handles. Finally, when the appearance of the side portion of the handle is chosen as an object of patenting (patent No. 107018), the applicant narrowed down to the limit the claims but, thereby, ensured protection of the exclusive rights in a larger scope, since this scope is determined with a set of essential features that are reflected in the images of the article contained in an industrial design patent. Until recent times the graphic approach with using dotted lines in images of industrial designs was not clear for Russian applicants, but now it is used more often. The task of patent attorneys is to show the applicants the strategic advantage of this graphic approach which can be used in different design solutions - from printed products to industrial products. As now an applicant himself chooses the degree of detalization, so when submitting a design application it is worth to focus on the most advantageous and original parts of the article and to advise the applicant the best way of arranging graphic materials.   If to look through the old applications and ask a question - could we declare these objects in other way, using dotted lines - the answer is clear – we could, and this concerns desktops, bottles, furniture, packaging, building facades and graphical interface. In each of these objects it is possible to single out a certain design dominant, for the sake of which dominant the design solution is patented. In case if a small part of an original shape is claimed then using of dotted line does not seem to make much sense, but if it's a large object, for example an automobile, then emphasizing of a new and original part is expediently, especially because in this case It does not matter how the rest of the parts are done. You can refer to the patent No. 105593 as an example.     As can be seen, using of the described graphic technique can be quite effective for expanding of the scope of legal protection of an industrial design patent and we can expect that law enforcement practice will confirm this conclusion in the near future. It is clear that much depends on a patent attorney’s experience – an application can be filed only for sake of obtaining a patent, and it is possible to file an application so that the patent will not only protects the new design elaboration but to make this protection the widest possible. The considered graphical method makes us return to the issue of the quality of graphic materials submitted for registration of industrial designs. Today, when the wording of an industrial design in the form of a list of its essential features has been cancelled, it becomes of paramount importance. St. Petersburg collegial readings - 2018 Collection of reports of scientific-practical conference (St. Petersburg, 27-29 June 2018) This text is published solely for the purpose of promoting and educating on intellectual property rights. The main purpose of the publication is to familiarize people with the basics of protection of intellectual property rights and to stimulate interest in this topic.


V.V. Mordvinova
Russian Patent Attorney
Saint-Petersburg

 




Lately, more and more often, dotted lines have appeared in images of patented industrial designs. The share of such patents has reached about 10%, at that, the leaders of such depiction of industrial designs are applicants from US, IT, KR, SE, FI. Predominantly, patents have been issued for such objects as "Graphical interface". So, the company SAMSUNG ELECTRONICS CO., LTD (KR) regularly patented industrial designs wherein dotted lines were used in the images for visual binding of graphic elements (menus, buttons, icons, lists, etc.) to mobile devices (patents Nos. 91034 - 91045). The user interface elements made in the form of various graphic images and arranged in a certain order within the mobile device display received legal protection as industrial designs. See the patents Nos. 91039, 92181 and 92396 (on the illustration).

 

 

 

After introduction of the amendments into the Civil Code of the Russian Federation in 2014 (the federal law No. 35-FZ of March 12, 2014), in particular, cancellation the list of essential features of industrial designs it was required a sort of replacement of this list in order to visually identify and emphasize the portion of the design, for protection of which portion the applicant claimed. It is clear that it could be stressed with color or contour, and the rest portion for which the applicant does not claim could be marked with dotted lines, especially taking into account that pursuant to point 32 of the Requirements to the documents for granting of industrial designs patents such an opportunity is stipulated.


In April 2018 during the seminar "Accession of the Russian Federation to the industrial designs international registration Hague System” organized jointly by WIPO and the Russian Patent Office, there was a confirmation of this thought in the speech of the Moscow colleague A.K. Vasilets: "In the absence of an opportunity to characterize the peculiarities of the claimed solution with words, the applicant uses a graphical approach for emphasizing the essential features".


In a number of cases using of dotted lines makes it possible to expand legal protection provided within an industrial design patent. When comparing a patented industrial design with a specific product having similar purpose, for proving use of the industrial design it is necessary that the product contains all the essential features of the industrial design and makes the same general impression on an informed consumer as the patented industrial design (par. 2, art. 1358 of the Russian Civil Code). In case of using dotted lines on the images, on Vasilets’ opinion, "for ascertainment if a patent is infringed it is necessary to compare solid lines. Dotted lines are not taken into account. This means that the less solid lines or the more dotted lines, the stronger is the patent". It is a sort of claims of an invention! Here is the strength of dotted lines!


There is a reason to believe that this graphic approach will help both judges and judicial experts, since when considering disputes about patents infringement visual information about protected features of industrial designs is more visible and, therefore, more comprehensible.


In addition, during examination of an industrial design application, the Russian Patent Office experts will no longer be able to say that the distinctive features "are insignificant in general visual perception of an article or that they are not expressive enough and do not stand out against the general context and are nuanced".


No designer wants his work to look like a cliche, so he aims to stand out among competitors, but after all, design ideas are not born in vacuum - they are usually borrowed and modified. There are many examples of such borrowing. It is obvious that designers wish to save exclusive rights with concern to these recognizable ideas as long as possible.


For comparing of the scope of patent protection we give as an example 3 Russian patents (Nos. 108045, 108044 and 107018) of one patent holder (Fiskars Finnland Oy Ab, FI) for the industrial design "Handle for a garden tool," one of which is "dotted".


Which one of these patents is stronger and why?


It can be assumed that if a spade as whole article is chosen as an object of patenting, the peculiarities of the side portion of the handle the Russian Patent Office experts would consider insignificant features (see the illustration).


 

 

 

On the other hand, if the appearance of the D-shaped handles is chosen as an object of patenting (patents Nos. 108044 and 108045) experts would compare only the appearance of the shape of the handles.


Finally, when the appearance of the side portion of the handle is chosen as an object of patenting (patent No. 107018), the applicant narrowed down to the limit the claims but, thereby, ensured protection of the exclusive rights in a larger scope, since this scope is determined with a set of essential features that are reflected in the images of the article contained in an industrial design patent.


Until recent times the graphic approach with using dotted lines in images of industrial designs was not clear for Russian applicants, but now it is used more often.


The task of patent attorneys is to show the applicants the strategic advantage of this graphic approach which can be used in different design solutions - from printed products to industrial products. As now an applicant himself chooses the degree of detalization, so when submitting a design application it is worth to focus on the most advantageous and original parts of the article and to advise the applicant the best way of arranging graphic materials.

 

If to look through the old applications and ask a question - could we declare these objects in other way, using dotted lines - the answer is clear – we could, and this concerns desktops, bottles, furniture, packaging, building facades and graphical interface. In each of these objects it is possible to single out a certain design dominant, for the sake of which dominant the design solution is patented. In case if a small part of an original shape is claimed then using of dotted line does not seem to make much sense, but if it's a large object, for example an automobile, then emphasizing of a new and original part is expediently, especially because in this case It does not matter how the rest of the parts are done. You can refer to the patent No. 105593 as an example.

 

 

As can be seen, using of the described graphic technique can be quite effective for expanding of the scope of legal protection of an industrial design patent and we can expect that law enforcement practice will confirm this conclusion in the near future.


It is clear that much depends on a patent attorney’s experience – an application can be filed only for sake of obtaining a patent, and it is possible to file an application so that the patent will not only protects the new design elaboration but to make this protection the widest possible.


The considered graphical method makes us return to the issue of the quality of graphic materials submitted for registration of industrial designs. Today, when the wording of an industrial design in the form of a list of its essential features has been cancelled, it becomes of paramount importance.




St. Petersburg collegial readings - 2018


Collection of reports of scientific-practical conference

(St. Petersburg, 27-29 June 2018)


This text is published solely for the purpose of promoting and educating on intellectual property rights. The main purpose of the publication is to familiarize people with the basics of protection of intellectual property rights and to stimulate interest in this topic.

]]>
What is the difference between appellation of origin and geographical indication of goods in Russia? https://en.nikolev.net/analytics/trademarks/38-what-is-the-difference-between-appellation-of-origin-and-geographical-indication-of-goods-in-russia.html In Russia it is coming soon to appear a new intellectual property object – geographical indication. The principal difference is that appellation of origin implies more strict registration and usage conditions than the geographical indication which is going to be introduced. Mitigation of usage conditions of geographical indications will stimulate the economics development, formation of tourist attractiveness and positioning of regions. Trademarks Thu, 25 Apr 2019 21:16:24 +0300 In Russia it is coming soon to appear a new intellectual property object – geographical indication. The principal difference is that appellation of origin implies more strict registration and usage conditions than the geographical indication which is going to be introduced. Mitigation of usage conditions of geographical indications will stimulate the economics development, formation of tourist attractiveness and positioning of regions. Appellation of origin Geographical indication for registration it is required a conclusion of the correlating competent authority about that within the geographical object an applicant produce the goods meeting the requirements of the Russian Civil Code for registration it is required documents confirming production of goods of the definite quality and having other characteristics which are, to a large extent, determined because of their geographical origin a verbal designation representing the name of a geographical object, which designation became famous in a result of its usage in relation to a goods any designation, including graphic or combined ones, which permits to identify a goods as originating from a definite territory all the steps of the production of goods which greatly influence on their special characteristics, shall take place on the territory of a geographical object one of the steps of the production of goods which greatly influence on their quality, reputation and other characteristics, shall take place on the territory of a geographical object Source: https://rupto.ru/ru/news/razlichie-obektov-intellektualnyh-prav The drawings are taken: upakovano.ru

In Russia it is coming soon to appear a new intellectual property object – geographical indication.


The principal difference is that appellation of origin implies more strict registration and usage conditions than the geographical indication which is going to be introduced.


Mitigation of usage conditions of geographical indications will stimulate the economics development, formation of tourist attractiveness and positioning of regions.


Appellation of origin

Geographical indication

for registration it is required a conclusion of the correlating competent authority about that within the geographical object an applicant produce the goods meeting the requirements of the Russian Civil Code

for registration it is required documents confirming production of goods of the definite quality and having other characteristics which are, to a large extent, determined because of their geographical origin

a verbal designation representing the name of a geographical object, which designation became famous in a result of its usage in relation to a goods

any designation, including graphic or combined ones, which permits to identify a goods as originating from a definite territory

all the steps of the production of goods which greatly influence on their special characteristics, shall take place on the territory of a geographical object

one of the steps of the production of goods which greatly influence on their quality, reputation and other characteristics, shall take place on the territory of a geographical object


Source: https://rupto.ru/ru/news/razlichie-obektov-intellektualnyh-prav

The drawings are taken: upakovano.ru

]]>
Results of the 2018 competition for the best European design https://en.nikolev.net/analytics/industrial-designs/37-results-of-the-2018-competition-for-the-best-european-design.html   The DesignEuropa Awards ceremony takes place every two years, in a prestigious location with architectural significance and resonance. The POLIN conference centre hosted the DesignEuropa Awards ceremony on 27 November 2018. It is one of the most striking and emblematic buildings in Warsaw, Poland, and has won many major international architectural prizes. Two outstanding European designs have been honoured at the ceremony in Warsaw: The Small and Emerging Companies Award has been won by the Air.Go 2.0 automatic bag drop system, owned by Danish firm Marcus Pedersen ApS, and designed by Sara Clement. The Industry Award was won by the ARTIS pheno robotic C-arm angiography system from Siemens Healthcare GmbH, designed by Nadja Roth and Tobias Reese. The Lifetime Achievement Award was presented to Hartmut Esslinger, a German designer with global reach and impact. He is known for his collaboration with Steve Jobs and Apple which led to the creation of the “Snow White” design language for Apple in the 1980s. Industrial designs Sun, 17 Feb 2019 17:25:19 +0300   The DesignEuropa Awards ceremony takes place every two years, in a prestigious location with architectural significance and resonance. The POLIN conference centre hosted the DesignEuropa Awards ceremony on 27 November 2018. It is one of the most striking and emblematic buildings in Warsaw, Poland, and has won many major international architectural prizes. Two outstanding European designs have been honoured at the ceremony in Warsaw: The Small and Emerging Companies Award has been won by the Air.Go 2.0 automatic bag drop system, owned by Danish firm Marcus Pedersen ApS, and designed by Sara Clement. The Industry Award was won by the ARTIS pheno robotic C-arm angiography system from Siemens Healthcare GmbH, designed by Nadja Roth and Tobias Reese.   The Lifetime Achievement Award was presented to Hartmut Esslinger, a German designer with global reach and impact. He is known for his collaboration with Steve Jobs and Apple which led to the creation of the “Snow White” design language for Apple in the 1980s.   The industry award: finalists-2018 1. ARTIS pheno Robotic C-arm angiography system RCD number: 001453740, Germany Owner and manufacturer: Siemens Healthcare GmbH Designers: Nadja Roth; Tobias Reese   ARTIS pheno is a robot-supported C-arm angiography system, which is developed for use in minimally invasive surgery, interventional radiology and interventional cardiology. These modern clinical approaches enable the treatment of patients with smaller incisions and less pain more effectively. For example, the vascular narrowing to be treated is visualized using X-ray-based technologies. This enables the physician to see, understand and correct the complex vessel structures in 2D or 3D visualization. The advantage for the patient is faster regeneration with fewer complications and less harm. ARTIS pheno accommodates any patient regardless of their size, condition or position requirements. The jury appreciated the consistency of design language throughout the product, as well as the overall composition, both of which are oriented around patient needs. ARTIS pheno’s design allows medical staff to perform procedures with optimal access to the patient, and helps to combat infection and increase patient safety. 2. Docks Modular outdoor furniture RCD number: 002490193, Spain Owner and manufacturer: Gandía Blasco S.A Designer: Romero Vallejo   Docks is a modular, open and flexible outdoor furniture collection. The furniture pieces, based on a lightweight aluminium structure, are stackable and easily portable. They allow users to easily change the structure of the collection, to form sofas, beds or other rest areas. The jury appreciated the possibility that the design offers of creating new layouts using a simple, minimal and light construction, and the rich range of compositions that can be obtained by using a relatively small number of modules. 3. Intercom Smart video doorbell RCD number: 002679852, Poland Owner and manufacturer: Fibar Group S.A Designer: Maciej Fiedler   The doorbell allows users to remotely manage access to their homes via high quality, full HD video using a very wide angle camera and a companion app. The device, when linked to its app, allows users to view and record callers to their homes. They can make video calls via the device when someone calls to the door, and can also allow visitors to enter through the smart system. The technology behind the device enables multiple smart home management functions, while increasing the security level of the household through an integrated solution. The jury appreciated the integration of digital technologies with new functionalities and new formal solutions within the product. 4. Origami Radiator RCD number: 003061654, Italy Owner and manufacturer: Tubes Radiatori Srl Designer: Alberto Meda    The Origami is a floor-standing decorative radiator, the design of which is based on the Japanese art of origami; hence its name. The radiator is extendable and foldable like a screen, and can be used to separate spaces and offer privacy. Touch controls allow the temperature to be controlled easily. In its assessment, the jury praised both the quality of the design application and the dynamic nature and flexibility of the product’s design. 5. Air.Go 2.0 Airport bag drop system RCD number: 003362748, Denmark Owner and manufacturer: Marcus P Holding / Marcus Pedersen ApS Designer: Sara Clement   Air.Go 2.0 is a fully automatic self-service bag drop solution, which helps airports remove queues in the check-in area. The jury highlighted the design of the product as “catering to a user need and solving a problem,” and underlined how the design merged with its environment, for the benefit of the end user. The Air.Go 2.0 has been designed to be as accessible and easy to use as possible, including for wheelchair users, and is currently installed in several airports around the world, including Toronto Pearson and Hamburg. It is a modular system, which means it can be customised by individual airports depending on their needs or layout. 6. Braster System Home breast examination system RCD number: 003352715, Poland Owner and manufacturer: Braster S.A. Designer: Arif Veendijk, Jakub Oller, et al.   Braster System is an innovative home breast examination device which complements standard diagnostic methods. The device monitors the distribution of temperature in the breast tissue and records areas of higher temperatures, which may indicate malignant changes. Users download the free mobile app, buy the examination package and perform an examination using the device. The thermograms captured during the examination are then transmitted to the Braster Telemedical Centre where they are analysed by artificial intelligence algorithms. The user receives the results within two days. The jury highlighted the product’s user-friendly functionality which ensures a better experience, and noted that the device successfully takes up the challenge of integrating technology requirements with the needs of a wide range of women through an easy to understand interface and design. 7. Loclock Bicycle parking system RCD number: 003621572, Spain Owner and manufacturer: Durbanis S.A. Designer: Alex Fernández Camps      Loclock is a bicycle locking system for public spaces. It comes in six different colours and is made of concrete and polyethylene. It is easy to install and weighs only 15 kilogrammes. The bike lock is completely tamper-proof and its soft coating reduces stress and damage to bicycles locked to it. The jury praised the design’s simplicity and functionality as a piece of modern street furniture. 8. Nico Less Chair RCD number: 002801241, Slovenia Owner and manufacturer: Donar d.o.o. Designer: Primož Jeza   The Nico Less is a simple, but unique, chair made of felt, 70% of which comes from recycled plastic bottles. The chair’s shape is achieved by a combination of heat and pressure, to produce a comfortable design that adapts to the shape of the human body. The Nico Less chairs can be combined in various colours and easily stored in vertical stacks. The jury appreciated the attention paid to the sustainability of the design, and the creation of an easy-to-use product with a distinctive personality. The source information: https://euipo.europa.eu/ohimportal/dea-2018-finalists The article beginning here

 

The DesignEuropa Awards ceremony takes place every two years, in a prestigious location with architectural significance and resonance.


The POLIN conference centre hosted the DesignEuropa Awards ceremony on 27 November 2018. It is one of the most striking and emblematic buildings in Warsaw, Poland, and has won many major international architectural prizes.

Two outstanding European designs have been honoured at the ceremony in Warsaw:


The Small and Emerging Companies Award has been won by the Air.Go 2.0 automatic bag drop system, owned by Danish firm Marcus Pedersen ApS, and designed by Sara Clement. The Industry Award was won by the ARTIS pheno robotic C-arm angiography system from Siemens Healthcare GmbH, designed by Nadja Roth and Tobias Reese.

 

The Lifetime Achievement Award was presented to Hartmut Esslinger, a German designer with global reach and impact. He is known for his collaboration with Steve Jobs and Apple which led to the creation of the “Snow White” design language for Apple in the 1980s.

 

The industry award: finalists-2018


1. ARTIS pheno
Robotic C-arm angiography system
RCD number: 001453740, Germany
Owner and manufacturer: Siemens Healthcare GmbH
Designers: Nadja Roth; Tobias Reese

 
ARTIS pheno is a robot-supported C-arm angiography system, which is developed for use in minimally invasive surgery, interventional radiology and interventional cardiology.


These modern clinical approaches enable the treatment of patients with smaller incisions and less pain more effectively. For example, the vascular narrowing to be treated is visualized using X-ray-based technologies. This enables the physician to see, understand and correct the complex vessel structures in 2D or 3D visualization. The advantage for the patient is faster regeneration with fewer complications and less harm. ARTIS pheno accommodates any patient regardless of their size, condition or position requirements.


The jury appreciated the consistency of design language throughout the product, as well as the overall composition, both of which are oriented around patient needs. ARTIS pheno’s design allows medical staff to perform procedures with optimal access to the patient, and helps to combat infection and increase patient safety.


2. Docks
Modular outdoor furniture
RCD number: 002490193, Spain
Owner and manufacturer: Gandía Blasco S.A
Designer: Romero Vallejo

 

Docks is a modular, open and flexible outdoor furniture collection. The furniture pieces, based on a lightweight aluminium structure, are stackable and easily portable. They allow users to easily change the structure of the collection, to form sofas, beds or other rest areas.


The jury appreciated the possibility that the design offers of creating new layouts using a simple, minimal and light construction, and the rich range of compositions that can be obtained by using a relatively small number of modules.


3. Intercom
Smart video doorbell
RCD number: 002679852, Poland
Owner and manufacturer: Fibar Group S.A
Designer: Maciej Fiedler

 

The doorbell allows users to remotely manage access to their homes via high quality, full HD video using a very wide angle camera and a companion app.


The device, when linked to its app, allows users to view and record callers to their homes. They can make video calls via the device when someone calls to the door, and can also allow visitors to enter through the smart system.


The technology behind the device enables multiple smart home management functions, while increasing the security level of the household through an integrated solution.


The jury appreciated the integration of digital technologies with new functionalities and new formal solutions within the product.


4. Origami
Radiator
RCD number: 003061654, Italy
Owner and manufacturer: Tubes Radiatori Srl
Designer: Alberto Meda

  

The Origami is a floor-standing decorative radiator, the design of which is based on the Japanese art of origami; hence its name.


The radiator is extendable and foldable like a screen, and can be used to separate spaces and offer privacy. Touch controls allow the temperature to be controlled easily.


In its assessment, the jury praised both the quality of the design application and the dynamic nature and flexibility of the product’s design.


5. Air.Go 2.0
Airport bag drop system
RCD number: 003362748, Denmark
Owner and manufacturer: Marcus P Holding / Marcus Pedersen ApS
Designer: Sara Clement

 

Air.Go 2.0 is a fully automatic self-service bag drop solution, which helps airports remove queues in the check-in area.


The jury highlighted the design of the product as “catering to a user need and solving a problem,” and underlined how the design merged with its environment, for the benefit of the end user.


The Air.Go 2.0 has been designed to be as accessible and easy to use as possible, including for wheelchair users, and is currently installed in several airports around the world, including Toronto Pearson and Hamburg. It is a modular system, which means it can be customised by individual airports depending on their needs or layout.


6. Braster System
Home breast examination system
RCD number: 003352715, Poland
Owner and manufacturer: Braster S.A.
Designer: Arif Veendijk, Jakub Oller, et al.

 

Braster System is an innovative home breast examination device which complements standard diagnostic methods. The device monitors the distribution of temperature in the breast tissue and records areas of higher temperatures, which may indicate malignant changes.


Users download the free mobile app, buy the examination package and perform an examination using the device. The thermograms captured during the examination are then transmitted to the Braster Telemedical Centre where they are analysed by artificial intelligence algorithms. The user receives the results within two days.


The jury highlighted the product’s user-friendly functionality which ensures a better experience, and noted that the device successfully takes up the challenge of integrating technology requirements with the needs of a wide range of women through an easy to understand interface and design.


7. Loclock
Bicycle parking system
RCD number: 003621572, Spain
Owner and manufacturer: Durbanis S.A.
Designer: Alex Fernández Camps

    

Loclock is a bicycle locking system for public spaces. It comes in six different colours and is made of concrete and polyethylene. It is easy to install and weighs only 15 kilogrammes.


The bike lock is completely tamper-proof and its soft coating reduces stress and damage to bicycles locked to it.


The jury praised the design’s simplicity and functionality as a piece of modern street furniture.


8. Nico Less
Chair
RCD number: 002801241, Slovenia
Owner and manufacturer: Donar d.o.o.
Designer: Primož Jeza

 

The Nico Less is a simple, but unique, chair made of felt, 70% of which comes from recycled plastic bottles.


The chair’s shape is achieved by a combination of heat and pressure, to produce a comfortable design that adapts to the shape of the human body. The Nico Less chairs can be combined in various colours and easily stored in vertical stacks.


The jury appreciated the attention paid to the sustainability of the design, and the creation of an easy-to-use product with a distinctive personality.


The source information: https://euipo.europa.eu/ohimportal/dea-2018-finalists


The article beginning here

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USA: campaign rallies and music: do artists have the right to demand politicians stop using their songs? https://en.nikolev.net/analytics/copyright/36-campaign-rallies-and-music-do-artists-have-the-right-to-demand-politicians-stop-using-their-songs.html During a campaign rally last month in West Virginia, Donald Trump’s team played a classic Aerosmith song, “Living on the Edge,” before he took to the stage.   The lead singer of Aerosmith, Steven Tyler, got wind of the usage and demanded that Trump and his campaign stop playing any of the band’s music at their rallies or public events.  Tyler tweeted, “This is not about Dems vs. Repub. I do not let anyone use my songs without permission.  My music is for causes, not political campaigns or rallies.  Protecting songwriters is what I’ve been fighting for even before this current administration took office.” Tyler’s stance left people on social media questioning whether it was  really possible for an artist to control when their music is played, or whether an artist could dictate that their music can only be played on certain mediums or at certain events. Copyright Tue, 15 Jan 2019 21:58:47 +0300 During a campaign rally last month in West Virginia, Donald Trump’s team played a classic Aerosmith song, “Living on the Edge,” before he took to the stage.   The lead singer of Aerosmith, Steven Tyler, got wind of the usage and demanded that Trump and his campaign stop playing any of the band’s music at their rallies or public events.  Tyler tweeted, “This is not about Dems vs. Repub. I do not let anyone use my songs without permission.  My music is for causes, not political campaigns or rallies.  Protecting songwriters is what I’ve been fighting for even before this current administration took office.” Tyler’s stance left people on social media questioning whether it was  really possible for an artist to control when their music is played, or whether an artist could dictate that their music can only be played on certain mediums or at certain events. Performance rights can allow candidates to play songs even if the artist  doesn’t like it   Candidates can use songs during campaign events, even if the songwriter doesn’t like it, by purchasing Performance Rights.  Most large venues where campaign rallies are held already have “public performance licenses” with organizations like ASCAP, BMI, and SESAC that apply to most songs in a musical group’s catalog.  However, campaigns usually go one step further by purchasing their own license in the event that the venue does not cover the music that they intend to use.  This allows the candidate to utilize a playlist of their choosing without fearing a copyright infringement claim from the artist or composer.   But… Performance licenses can be revoked & artists can still fight against  use of their music   Even if a candidate obtains the proper permission and license to use a song, the artist may still be able to take legal action to demand that the candidate stop using a particular song or catalog, or they may revoke the candidate’s performance license entirely. For example, musical artists may still be able to sue candidates under state “right of publicity laws” that are designed to protect a prominent person’s image.  Artists may also find relief under the Lanham Act, which seeks to stop unauthorized use of a trademarked brand or the appearance of a “false endorsement” of a candidate if the use of the song suggests that the artist is a political supporter.   Tyler’s attorney turned to the Lanham Act in the band’s latest battle against the president.  Aerosmith already revoked the Trump Campaign’s performance rights in 2015 after they used the song, “Dream On” at a rally.  His lawyer sent a new cease and desist letter that read in part, “Mr. Trump is creating the false impression that our client has given his consent for the use of his music, and even that he endorses the presidency of Mr. Trump… We demanded Mr. Tyler’s public performance societies terminate their licenses with you in 2015 in connection with Dream On and any other musical compositions written or co-written by Mr. Tyler. As such, we are unaware of any remaining public performance license still in existence which grants Mr. Trump the right to use his music in connection with the rallies or any other purpose.”   As with most things in intellectual property law, policing a musical copyright is up to the artist   Answering the question set at the beginning of the article – yes, it’s possible for an artist to demand that a political candidate stop using their music at rallies or campaign-related events. But, like most things in intellectual property law, policing and protecting a copyright is the responsibility of the musician. Source: Law Office of Jason H. Rosenblum, PLLC 

During a campaign rally last month in West Virginia, Donald Trump’s team played a classic Aerosmith song, “Living on the Edge,” before he took to the stage.

 

The lead singer of Aerosmith, Steven Tyler, got wind of the usage and demanded that Trump and his campaign stop playing any of the band’s music at their rallies or public events.  Tyler tweeted, “This is not about Dems vs. Repub. I do not let anyone use my songs without permission.  My music is for causes, not political campaigns or rallies.  Protecting songwriters is what I’ve been fighting for even before this current administration took office.”


Tyler’s stance left people on social media questioning whether it was really possible for an artist to control when their music is played, or whether an artist could dictate that their music can only be played on certain mediums or at certain events.


Performance rights can allow candidates to play songs even if the artist doesn’t like it

 

Candidates can use songs during campaign events, even if the songwriter doesn’t like it, by purchasing Performance Rights.  Most large venues where campaign rallies are held already have “public performance licenses” with organizations like ASCAP, BMI, and SESAC that apply to most songs in a musical group’s catalog.  However, campaigns usually go one step further by purchasing their own license in the event that the venue does not cover the music that they intend to use.  This allows the candidate to utilize a playlist of their choosing without fearing a copyright infringement claim from the artist or composer.

 

But… Performance licenses can be revoked & artists can still fight against use of their music

 

Even if a candidate obtains the proper permission and license to use a song, the artist may still be able to take legal action to demand that the candidate stop using a particular song or catalog, or they may revoke the candidate’s performance license entirely.

For example, musical artists may still be able to sue candidates under state “right of publicity laws” that are designed to protect a prominent person’s image.  Artists may also find relief under the Lanham Act, which seeks to stop unauthorized use of a trademarked brand or the appearance of a “false endorsement” of a candidate if the use of the song suggests that the artist is a political supporter.

 

Tyler’s attorney turned to the Lanham Act in the band’s latest battle against the president.  Aerosmith already revoked the Trump Campaign’s performance rights in 2015 after they used the song, “Dream On” at a rally.  His lawyer sent a new cease and desist letter that read in part, “Mr. Trump is creating the false impression that our client has given his consent for the use of his music, and even that he endorses the presidency of Mr. Trump… We demanded Mr. Tyler’s public performance societies terminate their licenses with you in 2015 in connection with Dream On and any other musical compositions written or co-written by Mr. Tyler. As such, we are unaware of any remaining public performance license still in existence which grants Mr. Trump the right to use his music in connection with the rallies or any other purpose.”

 

As with most things in intellectual property law, policing a musical copyright is up to the artist

 

Answering the question set at the beginning of the article – yes, it’s possible for an artist to demand that a political candidate stop using their music at rallies or campaign-related events. But, like most things in intellectual property law, policing and protecting a copyright is the responsibility of the musician.


Source: Law Office of Jason H. Rosenblum, PLLC 

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Protection of creative and non-creative databases https://en.nikolev.net/analytics/copyright/35-protection-of-creative-and-non-creative-databases.html All around the world databases are copyright objects and are protected in accordance with its tenets. A database is a compilation of works, data or other materials, i.e. collection of facts, arranged in a systematic or methodical way. In other words, the data are made up based on the logical rules set up by the compiler. The facts themselves can not be protected under copyright but their organization and layout can, provided that the compilation shows a certain level of creativity on the part of the author. Usually creative databases are subject to copyright protection. Herewith, in different jurisdictions the creativity level has not been determined explicitly. Therefore, in the world there formed two approaches: protection of creative and non-creative databases. Copyright Wed, 28 Nov 2018 12:37:57 +0300 All around the world databases are copyright objects and are protected in accordance with its tenets. A database is a compilation of works, data or other materials, i.e. collection of facts, arranged in a systematic or methodical way. In other words, the data are made up based on the logical rules set up by the compiler. The facts themselves can not be protected under copyright but their organization and layout can, provided that the compilation shows a certain level of creativity on the part of the author. Usually creative databases are subject to copyright protection. Herewith, in different jurisdictions the creativity level has not been determined explicitly. Therefore, in the world there formed two approaches: protection of creative and non-creative databases. creative approach In the making process of a database intellectual human resources are involved which are appeared in a systematic selection and creative arrangement of materials. non-creative approach ( ‘sweat of the brow’ right) A synonym of non-creative databases is a metaphor ‘sweat of the brow’ that means that a product is not creative enough, however, the author put tremendous effort and energy, involved technical resources, made significant investments during the making process. Although such databases are not creative, they require significant quantitative and qualitative investments fron the point of resources and elapsed time. The European Union jurisdiction. Sui generis right The fundamental legal act in the European copyright law field is the Directive 96/9 adopted in 1996, which Directive defined a database as a collection of independent works, data or other materials arranged in a systematic or methodical way and individually accessible by electronic or other means. The Directive legitimizes and equates protection of both kinds of databases – creative and non-creative, i.e. made with substantial human, technical and material resources involved. The latter are protected with so called special right - sui generis right. In a defeat for North American database interests, the sui generis right granted under the Directive refers only to databases created by companies which companies are located in countries that are members of the EU. Thus, databases created by European companies and their subsidiaries have a greater chance for protection in contrast to non-European firms. The USA jurisdiction. The minimal level of creativity Pursuant to the USA copyright Act a database is a collection and compilation of preexisting facts or data that are selected in such a way that the resulting work as a whole constitutes an original work of authorship. The preexisting materials may be protected by copyright, or may be unprotectable facts or ideas. As an example we can give a USA presidents’ citations database. The standalone citations are copyright objects. Along with that selection of particular phrases in the whole is recognized as an original product which, in its term, is also subject to copyright protection. Another prominent example of facts structuring is a database of Internet locations for selected legal articles. Each location contains the factual information, namely, that a particular article can be found at the specific URL-address. The URL-addresses themselves are unprotectable by copyright law and may be freely copied by anyone. At the same time copying of the whole database or its substantial portion infringes the copyright. In this case the creative idea consists in the structural arrangement of locations, for instance in accordance with subject sections. The USA law does not prohibit extraction of unprotectable data from protectable database. Thus, a database of unprotectable objects, such as basic facts, may be protected only as a compilation. Feist Publications, Inc.’s litigation In the case of Feist Publications, Inc. v. Rural Telephone Service Company, Inc., the U.S. Supreme Court ruled that a compilation work such as a database must contain a minimum level of creativity in order to be protectable under the Copyright Act. Rural Telephone Service Company, Inc. was a local telephone company in Kansas that published telephone directories based on data that it obtained from its subscribers. Feist Publications, Inc. was a publisher of area-wide telephone directories covering a much larger geographic range than Rural's directories. In order to publish its white pages, Feist needed to use the information Rural had in its telephone directories. Feist first tried to license the information in Rural's white pages directly from Rural. When Rural refused, Feist extracted the listings it needed from Rural's directory without Rural's consent. Although Feist altered many of Rural's listings, many were identical to listings in Rural's white pages. Rural sued Feist for copyright infringement in the compilation that made up its white pages. Two lower courts ruled in Rural's favor. The Supreme Court, however, held that Rural's white pages are not entitled to copyright protection, since the white pages did not meet the statutory requirement for originality. According to the Supreme Court, a compilation is not copyrightable per se, but is copyrightable only if its facts have been selected, coordinated, or arranged in such a way that the resulting work as a whole constitutes an original work of authorship. According to the Court, the statute envisions that some ways of selecting, coordinating, and arranging data are not sufficiently original to trigger copyright protection. Rural's selection of listings--subscribers' names, towns, and telephone numbers--was obvious and lacked the modicum of creativity necessary to transform mere selection into copyrightable expression. Arranging names alphabetically in a white pages directory is so commonplace that it has come to be expected. This holding overruled numerous lower courts that adopted a "sweat of the brow" or "industrious collection" test of copyrightability. As a result of the Supreme Court's holding in Feist, it is clear that not all databases are protected by copyright law as compilations. The Russian Federation jurisdiction. 10 000 information elements The Russian civil law stipulates the exclusive right for a creator of a database, which database is made with significant financial, material, managerial and other investments involved, i.e. actually recognizes the ‘sweat of the brow’ right. However, in the Russian national law there exist a crucial note, namely, that such a database shall comprise not less than 10 000 independent information items. In this case the product will be recognized laborious and requiring human and other investments. The exclusive right for a database arises from the moment of termination of its creation and lasts for 15 years starting from the 1st of January of the year following the year of creation or for 15 years from the promulgation moment starting from the 1st of January of the year following the year of promulgation. During the whole validity term of the exclusive right for a database the rightholder has the right to register it in the Russian Patent Office. The registration process usually takes about 2-3 months and envisages formal examination. In that way, such copyright object as a database has some peculiarities in Russia, namely: - registration of the exclusive right for a database is possible in the Russian Patent Office only; - it is necessary that a product contains not less than 10,000 items in order to have the exclusive right registered; - the exclusive right for a database is valid during 15 years; - the validity term may be repeatedly renewed in case of database correction. Pursuant to the statistics of the Russian Patent Office about 1,500 – 2,000 databases applications are submitted in Russia every year. At that, approximately 90% of them get registration. Summarizing all the above, one can make a conclusion that in different jurisdictions of the world the attitude to a database as a copyright object is ambiguous. In some countries a rightholder is recognized a person who made tremendous efforts to its creation, at this, it is not compulsorily that the product has an original expression, in other countries, vice versa, involved investments are ignored and only a person who created an original product may become a rightholder. But in spite of different attitudes, annually a great quantity of databases is created and registered all around the world, at this, databases oftentimes perform as litigations subject. This serves an evidence of vigorous functioning and development of the intellectual property system in the whole and the copyright in particular. Author: Julia Nikoleva Sources: Civil law of the Russian Federation http://www.wipo.int/wipolex/en/text.jsp?file_id=126789 https://www.bitlaw.com/copyright/database.html

All around the world databases are copyright objects and are protected in accordance with its tenets. A database is a compilation of works, data or other materials, i.e. collection of facts, arranged in a systematic or methodical way. In other words, the data are made up based on the logical rules set up by the compiler.


The facts themselves can not be protected under copyright but their organization and layout can, provided that the compilation shows a certain level of creativity on the part of the author.


Usually creative databases are subject to copyright protection. Herewith, in different jurisdictions the creativity level has not been determined explicitly. Therefore, in the world there formed two approaches: protection of creative and non-creative databases.


creative approach


In the making process of a database intellectual human resources are involved which are appeared in a systematic selection and creative arrangement of materials.


non-creative approach ( ‘sweat of the brow’ right)


A synonym of non-creative databases is a metaphor ‘sweat of the brow’ that means that a product is not creative enough, however, the author put tremendous effort and energy, involved technical resources, made significant investments during the making process. Although such databases are not creative, they require significant quantitative and qualitative investments fron the point of resources and elapsed time.


The European Union jurisdiction. Sui generis right

The fundamental legal act in the European copyright law field is the Directive 96/9 adopted in 1996, which Directive defined a database as a collection of independent works, data or other materials arranged in a systematic or methodical way and individually accessible by electronic or other means.


The Directive legitimizes and equates protection of both kinds of databases – creative and non-creative, i.e. made with substantial human, technical and material resources involved. The latter are protected with so called special right - sui generis right.


In a defeat for North American database interests, the sui generis right granted under the Directive refers only to databases created by companies which companies are located in countries that are members of the EU. Thus, databases created by European companies and their subsidiaries have a greater chance for protection in contrast to non-European firms.


The USA jurisdiction. The minimal level of creativity


Pursuant to the USA copyright Act a database is a collection and compilation of preexisting facts or data that are selected in such a way that the resulting work as a whole constitutes an original work of authorship. The preexisting materials may be protected by copyright, or may be unprotectable facts or ideas.


As an example we can give a USA presidents’ citations database. The standalone citations are copyright objects. Along with that selection of particular phrases in the whole is recognized as an original product which, in its term, is also subject to copyright protection.


Another prominent example of facts structuring is a database of Internet locations for selected legal articles. Each location contains the factual information, namely, that a particular article can be found at the specific URL-address. The URL-addresses themselves are unprotectable by copyright law and may be freely copied by anyone. At the same time copying of the whole database or its substantial portion infringes the copyright. In this case the creative idea consists in the structural arrangement of locations, for instance in accordance with subject sections. The USA law does not prohibit extraction of unprotectable data from protectable database. Thus, a database of unprotectable objects, such as basic facts, may be protected only as a compilation.


Feist Publications, Inc.’s litigation


In the case of Feist Publications, Inc. v. Rural Telephone Service Company, Inc., the U.S. Supreme Court ruled that a compilation work such as a database must contain a minimum level of creativity in order to be protectable under the Copyright Act.


Rural Telephone Service Company, Inc. was a local telephone company in Kansas that published telephone directories based on data that it obtained from its subscribers. Feist Publications, Inc. was a publisher of area-wide telephone directories covering a much larger geographic range than Rural's directories. In order to publish its white pages, Feist needed to use the information Rural had in its telephone directories. Feist first tried to license the information in Rural's white pages directly from Rural. When Rural refused, Feist extracted the listings it needed from Rural's directory without Rural's consent. Although Feist altered many of Rural's listings, many were identical to listings in Rural's white pages. Rural sued Feist for copyright infringement in the compilation that made up its white pages. Two lower courts ruled in Rural's favor.


The Supreme Court, however, held that Rural's white pages are not entitled to copyright protection, since the white pages did not meet the statutory requirement for originality. According to the Supreme Court, a compilation is not copyrightable per se, but is copyrightable only if its facts have been selected, coordinated, or arranged in such a way that the resulting work as a whole constitutes an original work of authorship. According to the Court, the statute envisions that some ways of selecting, coordinating, and arranging data are not sufficiently original to trigger copyright protection. Rural's selection of listings--subscribers' names, towns, and telephone numbers--was obvious and lacked the modicum of creativity necessary to transform mere selection into copyrightable expression. Arranging names alphabetically in a white pages directory is so commonplace that it has come to be expected.


This holding overruled numerous lower courts that adopted a "sweat of the brow" or "industrious collection" test of copyrightability. As a result of the Supreme Court's holding in Feist, it is clear that not all databases are protected by copyright law as compilations.


The Russian Federation jurisdiction. 10 000 information elements


The Russian civil law stipulates the exclusive right for a creator of a database, which database is made with significant financial, material, managerial and other investments involved, i.e. actually recognizes the ‘sweat of the brow’ right.


However, in the Russian national law there exist a crucial note, namely, that such a database shall comprise not less than 10 000 independent information items. In this case the product will be recognized laborious and requiring human and other investments.


The exclusive right for a database arises from the moment of termination of its creation and lasts for 15 years starting from the 1st of January of the year following the year of creation or for 15 years from the promulgation moment starting from the 1st of January of the year following the year of promulgation. During the whole validity term of the exclusive right for a database the rightholder has the right to register it in the Russian Patent Office. The registration process usually takes about 2-3 months and envisages formal examination.


In that way, such copyright object as a database has some peculiarities in Russia, namely:


- registration of the exclusive right for a database is possible in the Russian Patent Office only;
- it is necessary that a product contains not less than 10,000 items in order to have the exclusive right registered;
- the exclusive right for a database is valid during 15 years;
- the validity term may be repeatedly renewed in case of database correction.


Pursuant to the statistics of the Russian Patent Office about 1,500 – 2,000 databases applications are submitted in Russia every year. At that, approximately 90% of them get registration.


Summarizing all the above, one can make a conclusion that in different jurisdictions of the world the attitude to a database as a copyright object is ambiguous. In some countries a rightholder is recognized a person who made tremendous efforts to its creation, at this, it is not compulsorily that the product has an original expression, in other countries, vice versa, involved investments are ignored and only a person who created an original product may become a rightholder. But in spite of different attitudes, annually a great quantity of databases is created and registered all around the world, at this, databases oftentimes perform as litigations subject. This serves an evidence of vigorous functioning and development of the intellectual property system in the whole and the copyright in particular.


Author: Julia Nikoleva


Sources:

Civil law of the Russian Federation

http://www.wipo.int/wipolex/en/text.jsp?file_id=126789
https://www.bitlaw.com/copyright/database.html

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Trademarks Infringement - world judicial practice https://en.nikolev.net/analytics/trademarks/34-trademarks-infringement-world-judicial-practice.html International trademark infringement cases commonly result from the use of linguistically or phonetically similar words or phrases in another language. However in some cases they result from companies specifically copying profitable and well-known brands to increase their business. “Borrowing” the branding of another company can bring financial gain and increased exposure to a lesser-known, local company. However, positioning a company to profit off of the branding of another does not come without repercussions. That being said, some companies will still try to get away with it. Trademarks Sun, 07 Oct 2018 00:49:52 +0300 International trademark infringement cases commonly result from the use of linguistically or phonetically similar words or phrases in another language. However in some cases they result from companies specifically copying profitable and well-known brands to increase their business. “Borrowing” the branding of another company can bring financial gain and increased exposure to a lesser-known, local company. However, positioning a company to profit off of the branding of another does not come without repercussions. That being said, some companies will still try to get away with it. 1. South Korea: Louis Vuitton vs. Louis Vuiton Dak Verdict in favor of Louis Vuitton In one of the more shocking examples of international trademark infringement, a South Korean fried chicken restaurant recently lost a trademark battle with designer Louis Vuitton. The court ruled in the designer's favor after determining that the restaurant's name of Louis Vuiton Dak was too similar to Louis Vuitton. In addition to the name infringement, the restaurant's logo and packaging closely mirrored the designer's iconic imagery. The restaurant, ‘Louis Vuitton Dak,’ is a play on the designer name and the Korean word for whole chicken, tondak. Louis Vuitton had the court ban the restaurant from using his brand name, as it “damaged the originality and value of the French brand.” Kim came up with a new name for the restaurant, "chaLOUISVUI TONDAK," and Louis Vuitton demanded 14.5 million won (USD 12 750) from Kim for breaking compliance for 29 days. The court once again ruled in the brand’s favor, stating that although he changed the name with different spacing, the two names sound almost the same. So he violated the court order and should pay the money. 2. US: Academy Awards vs. GoDaddy Verdict in favor of GoDaddy In a cybersquatting case that lasted more than five years, the Academy of Motion Picture Arts and Sciences has suffered a landmark loss to GoDaddy with a judge ruling in the domain registrar giant's favor. The Academy had hoped to win as much as $30 million and looked to be the heavy favorite given earlier rulings in the case. Initially, the Academy managed to demonstrate in court that 57 domains out of 293 were sold by GoDaddy with the potential for confusion, since they were confusingly similar to their trademarks. However, a U.S. District Court Judge decided there were a lack of proof that GoDaddy had a bad faith intent to traffic in trademarks like the "Academy Awards" and "Oscars". The lawsuit was targeted GoDaddy for allowing customers to buy domains like 2011Oscars.com or betacademyawards.com, "park" that page and collect a portion of revenue from GoDaddy's advertising partners on a pay-per-click basis. GoDaddy's program hardly made any money. Domains like academyawardbuzz.com generated just a few hundred dollars in advertising revenue and less than 50,000 page impressions in total. Nevertheless, it triggered litigation that lasted half a decade. Many saw this as a test case in the cybersquatting arena. Towards the end of the lengthy ruling, the judge says there is a "fundamental problem" with the Academy's theory of liability under the Anticybersquatting Consumer Protection Act. He writes, "It confuses GoDaddy’s technical capacity to filter all trademarks with AMPAS’s legal duty to police its own trademarks. At its core, AMPAS’s ACPA claim would impose upon GoDaddy (and presumably any other company offering parking, hosting, or other basic internet services) the unprecedented duty to act as the internet’s trademark police. The ACPA did not impose such sweeping obligations". Julia Nikoleva's remark: The Anticybersquatting Consumer Protection Act is a U.S. law enacted in 1999 that established a cause of action for registering, trafficking in, or using a domain name confusingly similar to, or dilutive of, a trademark or personal name. The law was designed to thwart “cybersquatters” who register Internet domain names containing trademarks with no intention of creating a legitimate web site, but instead plan to sell the domain name to the trademark owner or a third party. 3. China: 3M vs. 3N Verdict - in favor of 3M A Chinese court recently ordered a Chinese company that had blatantly infringed one of the world's better known trademarks to pay significant damages to the trade mark owner. African companies that have heeded their lawyers' advice and registered their trade marks in China should take heart from this. The facts in this case are simple. The 3M Company has two Chinese trade mark registrations for the trade mark 3M. These registrations are in class 17 and they cover "thin sheets or strips made from retro-reflective materials" and "retro-reflective plastic film other than for packing (to improve and boost visibility and safety)". A subsidiary, 3M China Ltd, is a licensed user of the trademarks, and it has been manufacturing and distributing 3M retro-reflective marking products in China since 2004. A local company, Changzhou Huawei Advanced Material Co Ltd ("Huawei"), filed an application to register the less-than-original trade mark 3N in class 19 for a range of goods. 3M opposed this application but the trade mark authorities accepted the application for a limited specification. 3M took this decision on appeal to the Trademark Review and Adjudication Board which upheld the opposition. 3M also launched trade mark infringement proceedings in the Hangzhou Intermediate Court. It sought all the usual relief – an injunction, damages and legal costs. Huawei defended this action by raising some interesting defences. It said that the trademarks 3M and 3N were not similar and, even if they were, they wouldn't be confused. This is because it had been using the trade mark 3N for a number of years on goods that were cheaper than 3M's, and that it had, in the process, built up a stable market. Finally, it said that it had never intended to infringe the trade mark 3M – as part of this argument, it claimed that 3N comprised the initials of the company's corporate philosophy or slogan, which was "New Concept, New Technologies, New Products". The court of first instance found for 3M. It made the point that the 3M mark was distinctive and well known. It said that as the trade marks were visually similar, there was a likelihood of confusion or, at very least, association. Further, it said that the infringement was clearly intentional because the company had never promoted its apparent slogan. The court issued an injunction ordering the company to stop selling goods under the trade mark 3N and it ordered Huawei to pay 3M's legal costs. Huawei took this decision on appeal, but the Zhejiang High Court upheld the decision. It said that it would be quite wrong for a court to recognise the defence that there would be no confusion because of the considerable market share and client base that the alleged infringer company had acquired through its unlawful conduct. Recognising this would simply be sending this message to other potential infringers – go big or go home! 4. India: Zara fashion vs. Zara food Verdict – in favor of fashion One is a well-known fashion brand, operating all across the world; the other was a restaurant operating in a single Indian city. Would any consumer confuse one for the other — or assume that the restaurant was started by the fashion brand? The Delhi High Court thought so. This was so because the fashion brand Zara, which opened its first store in India in 2010, had a presence (through a joint venture) in the country since 1986 and had even applied for a few trademarks. The restaurant now operates simply as The Tapas Bar. The Honorable High Court of Delhi granted an injunction, restraining the defendant from the use of the plaintiff’s well-known trademark ZARA as a part of the defendant’s mark, ZARA Tapas Bar. The Court emphasized the defendant’s bad faith intent, which the Court said was evident from the defendant’s website advertising the mark. The Court observed that the word “ZARA” was used in such a manner that it was almost 10 times bigger than other words following it. In certain places, the said word was used per se, leaving no doubt of it being identical/deceptively similar to the plaintiff’s well-known mark. The Court held: “If the Defendants did not want to ride on the plaintiff’s reputation, they would have not used the word ZARA prominently in the words ”ZARA Tapas Bar” or ”ZARA, the Bar and Restaurant”. With respect to the issue of ZARA being common to trade, the Court observed that the defendant could not establish the generic nature of the word ZARA. Further, the plaintiff provided several registrations in its name for the mark ZARA, whereas the defendant relied on 46 third-party registrations for marks it contended to be similar/identical to ZARA, which according to the Court was misconceived, as the words HAZARA, KEWDA, ZARATOR, LOZAR-A, etc. were sought to be claimed similar to the word ZARA by the defendant. The Court held: “We are living in the 21st century. At least since the beginning of this century, there is widespread dissemination of information through the Internet and television. ZARA was catering to the middle class and higher middle class. Consumers in India cannot be unaware of the plaintiff’s company and its product”. 5. India: Eclairs Cadbury’s or everyone’s? Verdict – in favor of everyone’s Cadbury is very particular about intellectual property. In some jurisdictions, it even owns the right to the use of a shade of purple on chocolate wrappers. In India, it had registered three trademarks containing the word Eclairs (Chocolate Eclairs, Orange Flavoured Chocolate Eclairs and Chocolate Eclairs Pop). All three names were, however, not in use despite being registered way back in 1972. In a win for ITC Ltd, the Intellectual Property Appellate Board (IPAB) said that Cadbury India is no longer the owner of the three trademarks, putting to rest over a decade-old battle. The three trademarks were ordered to be removed from the trademarks registry as the patent board found that Cadbury could not provide evidence showing the use of the three trademarks after they were registered. The only defence of the respondent is that they are registered proprietors both in India and abroad. Section 47 of the Trademarks Act, 1999, provides for removal by IPAB of a trademark on the ground of non-use, or if there has been no proof of use for a period of five continuous years from the date of application for registration of the trademark. It is puzzling why Cadbury could not provide proof of usage, given that usage can be proved by giving evidence of advertisements of the product and showing proof that it was available in the market. This, however, does not mean Cadbury will no longer be able to use the word Eclairs on their products. You do not need registration to use a name. Éclair is a common word and everyone is entitled to use it. 6. London Dairy vs. Londonderry Verdict – in favor of Londonderry London Dairy sells premium quality ice cream. Londonderry sells inexpensive confectionery items. Phonetically, they are the same. However, all the rest except the sound of the brand is different. The order held there to be no visual or structural similarities between the products, and, for the want of demonstration of deceit or misrepresentation or differences in color, trade dress, the goods and their pricing, sided with the defendant (Londonderry). 7. Bata vs. Bata Verdict – in favor of foam materials In the 1980s, the shoe maker Bata wanted to stop a company marketing foam materials from operating under the same name. The judge asked, “How would the customers know that Bata is not producing foam?” The judge reasoned that it is reasonable to assume that a customer would not ask a seller whether the product is manufactured by the shoe maker. For this reason, Bata the foam producer, won the case, despite the fact that its domain is completely different. 8. China: Qiaodan Sports Co. vs. Michael Jordan Verdict – in favor of Michael Jordan Perhaps one of the most well recognized pieces of footwear and its “jumpman” logo faced a case of brand “borrowing” in China. Whether or not you agree Michael Jordan is the greatest basketball player of all time, he is certainly well-known. And after an over four-year battle, China’s trademark courts have agreed. Michael Jordan and his JORDAN brand have been a staple of Nike’s shoe and apparel business for over thirty years. Nike so values the “Jumpman” logo that it transcends basketball – the Michigan Wolverines, for example, wear the logo on jerseys for all sports, including football. But in China, where trademark rights belong to the first party to file a trademark, rather than the first to use, the JORDAN wording has effectively belonged to another company. A sportswear company called Qiaodan Sports owned the rights to the JORDAN mark in Chinese characters – Qiaodan, pronounced “chee-ow-dan,” is a transliteration of JORDAN used in China and elsewhere for over thirty years. Qiaodan operates some 6,000 stores in China, and its associated logos also bear a striking resemblance to the Jumpman logo. Jordan brought a lawsuit against Qiaodan in 2012, to seek cancellation of Qiaodan’s Chinese-character trademarks and, separately, a suit to enjoin use of those marks in China. Jordan filed his appeal to China’s Supreme Сourt after his claims were rejected by two lower courts. The Court found the Chinese character mark for JORDAN should be returned to China’s trademark office (after which, presumably, Jordan can obtain a registration of his own). In the ruling Qiaodan Sports Co must stop using the Chinese characters for Qiaodan on its merchandise, according to a transcript of court records posted on an official website. “The decision ensures that my Chinese fans and all Chinese consumers know that Qiaodan Sports and its products have no connection to me” – said Jordan. What conclusions can be made? First, it’s advisable to apply for marks in China as soon as practicable. Unlike other jurisdictions (such as the United States), China does not require proof of use for a trademark to obtain registration. Therefore, the concept of a “defensive registration” exists in China, but not the U.S. And in most cases, a trademark may not be challenged on grounds of non-use for three years after registration. So long as some genuine good faith use is made in China during that three-year period, the registration will generally avoid a non-use cancellation. Second, this should apply equally to the concept of “transliterated” marks in Chinese characters. A Chinese trademark specialist can propose a variety of potential Chinese character marks that are the phonetic equivalent of an English language mark. It’s also possible that consumers in China may already associate a certain combination with your brand as a “de facto” transliteration. 9. Russia: Valio vs. «Баба Валя» (baba Valya) Verdict – in favor of Valio The roots of production of the Finnish butter go back to 1908. This year the export of the product to Russia began. Today the butter is exported to about 30 countries. Around 2014 butter appeared in the Russian stores strikingly resembling the package of Finnish Valio butter. The design of Valio butter package with the image of a girl with a jug on a light background, which is familiar to the Russian consumer, was developed several years earlier. According to the poll results about 50% of the Russian consumers were misled and confused the two products. Valio LLC - the Russian branch of the Finnish concern Valio launched a proceeding in the Federal Antimonopoly Service (FAS) Office in St. Petersburg about the similarity to the degree of confusion, misleading consumers and violating the Law on the Protection of Competition. Consumers, as a rule, are guided by the main, most striking elements of the goods including color and design style, can confuse the outwardly similar packages of “Baba Valya” and “Valio” and purchase one product instead of another. In support of its attitude Valio LLC provided a comparative analysis performed by a patent attorney, according to which the composition and color-graphic scheme of packages are almost identical. The defendant, the Russian company «Traditsiya» LLC, disagreed with the plaintiff but during the proceeding altered the package of its butter. As a result, the FAS order was not issued but despite this, the confusion was established, the defendant was found guilty of unfair competition and violation of the Law on Protection of Competition, and a fine of 110 thousand rubles was imposed on him. For reference: Par. 1 of art. 14 of the Law on Protection of Competition prohibits unfair competition. For such a violation par. 1 of art. 14.33 of the Administrative Code of the Russian Federation stipulates administrative liability in the form of a fine on legal entities in the amount of 100,000 to 500,000 rubles. In Julia Nikoleva's editing Original articles: https://www.trademarknow.com/blog/9-nasty-trademark-infringement-cases-and-how-to-avoid-them http://www.foxnews.com/food-drink/2016/04/21/louis-vuitton-fried-chicken-knockoff-ordered-to-pay-luxury-retailer-12000.html https://www.hollywoodreporter.com/thr-esq/film-academy-loses-godaddy-oscars-821998 http://www.mondaq.com/southafrica/x/486460/Trademark/Chinese+Court+Sends+3N+Packing https://www.inta.org/INTABulletin/Pages/India_7015.aspx https://www.livemint.com/Companies/v2om2cMruwjp1CPzvPDXyO/Cadbury-loses-trademark-case-on-Eclairs.html https://www.indiamart.com/proddetail/londonderry-6763989062.html https://vakilsearch.com/advice/trademark-infringement-india/ https://www.languageconnections.com/blog/blatant-international-trademark-infringement-cases/ https://www.duetsblog.com/2016/12/articles/advertising/jordan-v-qiaodan-the-lessons-of-trademark-enforcement-in-china/ https://www.theguardian.com/world/2016/dec/08/michael-jordan-scores-partial-victory-china-trademark-case-qiaodan https://vc.ru/flood/20126-baba-valya-fine https://roscontrol.com/journal/news/valya-protiv-valio-schet-01/

International trademark infringement cases commonly result from the use of linguistically or phonetically similar words or phrases in another language. However in some cases they result from companies specifically copying profitable and well-known brands to increase their business.

“Borrowing” the branding of another company can bring financial gain and increased exposure to a lesser-known, local company. However, positioning a company to profit off of the branding of another does not come without repercussions. That being said, some companies will still try to get away with it.


1. South Korea: Louis Vuitton vs. Louis Vuiton Dak
Verdict in favor of Louis Vuitton


In one of the more shocking examples of international trademark infringement, a South Korean fried chicken restaurant recently lost a trademark battle with designer Louis Vuitton.


The court ruled in the designer's favor after determining that the restaurant's name of Louis Vuiton Dak was too similar to Louis Vuitton. In addition to the name infringement, the restaurant's logo and packaging closely mirrored the designer's iconic imagery.


The restaurant, ‘Louis Vuitton Dak,’ is a play on the designer name and the Korean word for whole chicken, tondak.


Louis Vuitton had the court ban the restaurant from using his brand name, as it “damaged the originality and value of the French brand.”


Kim came up with a new name for the restaurant, "chaLOUISVUI TONDAK," and Louis Vuitton demanded 14.5 million won (USD 12 750) from Kim for breaking compliance for 29 days.

The court once again ruled in the brand’s favor, stating that although he changed the name with different spacing, the two names sound almost the same. So he violated the court order and should pay the money.


2. US: Academy Awards vs. GoDaddy
Verdict in favor of GoDaddy


In a cybersquatting case that lasted more than five years, the Academy of Motion Picture Arts and Sciences has suffered a landmark loss to GoDaddy with a judge ruling in the domain registrar giant's favor.


The Academy had hoped to win as much as $30 million and looked to be the heavy favorite given earlier rulings in the case. Initially, the Academy managed to demonstrate in court that 57 domains out of 293 were sold by GoDaddy with the potential for confusion, since they were confusingly similar to their trademarks. However, a U.S. District Court Judge decided there were a lack of proof that GoDaddy had a bad faith intent to traffic in trademarks like the "Academy Awards" and "Oscars".


The lawsuit was targeted GoDaddy for allowing customers to buy domains like 2011Oscars.com or betacademyawards.com, "park" that page and collect a portion of revenue from GoDaddy's advertising partners on a pay-per-click basis.


GoDaddy's program hardly made any money. Domains like academyawardbuzz.com generated just a few hundred dollars in advertising revenue and less than 50,000 page impressions in total. Nevertheless, it triggered litigation that lasted half a decade. Many saw this as a test case in the cybersquatting arena.


Towards the end of the lengthy ruling, the judge says there is a "fundamental problem" with the Academy's theory of liability under the Anticybersquatting Consumer Protection Act. He writes, "It confuses GoDaddy’s technical capacity to filter all trademarks with AMPAS’s legal duty to police its own trademarks. At its core, AMPAS’s ACPA claim would impose upon GoDaddy (and presumably any other company offering parking, hosting, or other basic internet services) the unprecedented duty to act as the internet’s trademark police. The ACPA did not impose such sweeping obligations".


Julia Nikoleva's remark: The Anticybersquatting Consumer Protection Act is a U.S. law enacted in 1999 that established a cause of action for registering, trafficking in, or using a domain name confusingly similar to, or dilutive of, a trademark or personal name. The law was designed to thwart “cybersquatters” who register Internet domain names containing trademarks with no intention of creating a legitimate web site, but instead plan to sell the domain name to the trademark owner or a third party.


3. China: 3M vs. 3N
Verdict - in favor of 3M

A Chinese court recently ordered a Chinese company that had blatantly infringed one of the world's better known trademarks to pay significant damages to the trade mark owner. African companies that have heeded their lawyers' advice and registered their trade marks in China should take heart from this.


The facts in this case are simple. The 3M Company has two Chinese trade mark registrations for the trade mark 3M. These registrations are in class 17 and they cover "thin sheets or strips made from retro-reflective materials" and "retro-reflective plastic film other than for packing (to improve and boost visibility and safety)". A subsidiary, 3M China Ltd, is a licensed user of the trademarks, and it has been manufacturing and distributing 3M retro-reflective marking products in China since 2004.


A local company, Changzhou Huawei Advanced Material Co Ltd ("Huawei"), filed an application to register the less-than-original trade mark 3N in class 19 for a range of goods. 3M opposed this application but the trade mark authorities accepted the application for a limited specification. 3M took this decision on appeal to the Trademark Review and Adjudication Board which upheld the opposition.


3M also launched trade mark infringement proceedings in the Hangzhou Intermediate Court. It sought all the usual relief – an injunction, damages and legal costs. Huawei defended this action by raising some interesting defences. It said that the trademarks 3M and 3N were not similar and, even if they were, they wouldn't be confused. This is because it had been using the trade mark 3N for a number of years on goods that were cheaper than 3M's, and that it had, in the process, built up a stable market. Finally, it said that it had never intended to infringe the trade mark 3M – as part of this argument, it claimed that 3N comprised the initials of the company's corporate philosophy or slogan, which was "New Concept, New Technologies, New Products".


The court of first instance found for 3M. It made the point that the 3M mark was distinctive and well known. It said that as the trade marks were visually similar, there was a likelihood of confusion or, at very least, association. Further, it said that the infringement was clearly intentional because the company had never promoted its apparent slogan.


The court issued an injunction ordering the company to stop selling goods under the trade mark 3N and it ordered Huawei to pay 3M's legal costs.


Huawei took this decision on appeal, but the Zhejiang High Court upheld the decision. It said that it would be quite wrong for a court to recognise the defence that there would be no confusion because of the considerable market share and client base that the alleged infringer company had acquired through its unlawful conduct. Recognising this would simply be sending this message to other potential infringers – go big or go home!


4. India: Zara fashion vs. Zara food
Verdict – in favor of fashion


One is a well-known fashion brand, operating all across the world; the other was a restaurant operating in a single Indian city. Would any consumer confuse one for the other — or assume that the restaurant was started by the fashion brand? The Delhi High Court thought so. This was so because the fashion brand Zara, which opened its first store in India in 2010, had a presence (through a joint venture) in the country since 1986 and had even applied for a few trademarks. The restaurant now operates simply as The Tapas Bar.


The Honorable High Court of Delhi granted an injunction, restraining the defendant from the use of the plaintiff’s well-known trademark ZARA as a part of the defendant’s mark, ZARA Tapas Bar.


The Court emphasized the defendant’s bad faith intent, which the Court said was evident from the defendant’s website advertising the mark. The Court observed that the word “ZARA” was used in such a manner that it was almost 10 times bigger than other words following it. In certain places, the said word was used per se, leaving no doubt of it being identical/deceptively similar to the plaintiff’s well-known mark.


The Court held: “If the Defendants did not want to ride on the plaintiff’s reputation, they would have not used the word ZARA prominently in the words ”ZARA Tapas Bar” or ”ZARA, the Bar and Restaurant”.


With respect to the issue of ZARA being common to trade, the Court observed that the defendant could not establish the generic nature of the word ZARA. Further, the plaintiff provided several registrations in its name for the mark ZARA, whereas the defendant relied on 46 third-party registrations for marks it contended to be similar/identical to ZARA, which according to the Court was misconceived, as the words HAZARA, KEWDA, ZARATOR, LOZAR-A, etc. were sought to be claimed similar to the word ZARA by the defendant.


The Court held: “We are living in the 21st century. At least since the beginning of this century, there is widespread dissemination of information through the Internet and television. ZARA was catering to the middle class and higher middle class. Consumers in India cannot be unaware of the plaintiff’s company and its product”.


5. India: Eclairs Cadbury’s or everyone’s?
Verdict – in favor of everyone’s


Cadbury is very particular about intellectual property. In some jurisdictions, it even owns the right to the use of a shade of purple on chocolate wrappers. In India, it had registered three trademarks containing the word Eclairs (Chocolate Eclairs, Orange Flavoured Chocolate Eclairs and Chocolate Eclairs Pop). All three names were, however, not in use despite being registered way back in 1972.

In a win for ITC Ltd, the Intellectual Property Appellate Board (IPAB) said that Cadbury India is no longer the owner of the three trademarks, putting to rest over a decade-old battle.


The three trademarks were ordered to be removed from the trademarks registry as the patent board found that Cadbury could not provide evidence showing the use of the three trademarks after they were registered.


The only defence of the respondent is that they are registered proprietors both in India and abroad.


Section 47 of the Trademarks Act, 1999, provides for removal by IPAB of a trademark on the ground of non-use, or if there has been no proof of use for a period of five continuous years from the date of application for registration of the trademark.


It is puzzling why Cadbury could not provide proof of usage, given that usage can be proved by giving evidence of advertisements of the product and showing proof that it was available in the market.


This, however, does not mean Cadbury will no longer be able to use the word Eclairs on their products. You do not need registration to use a name. Éclair is a common word and everyone is entitled to use it.


6. London Dairy vs. Londonderry
Verdict – in favor of Londonderry


London Dairy sells premium quality ice cream. Londonderry sells inexpensive confectionery items.


Phonetically, they are the same. However, all the rest except the sound of the brand is different.



















The order held there to be no visual or structural similarities between the products, and, for the want of demonstration of deceit or misrepresentation or differences in color, trade dress, the goods and their pricing, sided with the defendant (Londonderry).


7. Bata vs. Bata
Verdict – in favor of foam materials


In the 1980s, the shoe maker Bata wanted to stop a company marketing foam materials from operating under the same name. The judge asked, “How would the customers know that Bata is not producing foam?” The judge reasoned that it is reasonable to assume that a customer would not ask a seller whether the product is manufactured by the shoe maker.

For this reason, Bata the foam producer, won the case, despite the fact that its domain is completely different.


8. China: Qiaodan Sports Co. vs. Michael Jordan
Verdict – in favor of Michael Jordan


Perhaps one of the most well recognized pieces of footwear and its “jumpman” logo faced a case of brand “borrowing” in China.

Whether or not you agree Michael Jordan is the greatest basketball player of all time, he is certainly well-known. And after an over four-year battle, China’s trademark courts have agreed.


Michael Jordan and his JORDAN brand have been a staple of Nike’s shoe and apparel business for over thirty years. Nike so values the “Jumpman” logo that it transcends basketball – the Michigan Wolverines, for example, wear the logo on jerseys for all sports, including football.

But in China, where trademark rights belong to the first party to file a trademark, rather than the first to use, the JORDAN wording has effectively belonged to another company. A sportswear company called Qiaodan Sports owned the rights to the JORDAN mark in Chinese characters – Qiaodan, pronounced “chee-ow-dan,” is a transliteration of JORDAN used in China and elsewhere for over thirty years. Qiaodan operates some 6,000 stores in China, and its associated logos also bear a striking resemblance to the Jumpman logo.


Jordan brought a lawsuit against Qiaodan in 2012, to seek cancellation of Qiaodan’s Chinese-character trademarks and, separately, a suit to enjoin use of those marks in China.


Jordan filed his appeal to China’s Supreme Сourt after his claims were rejected by two lower courts.


The Court found the Chinese character mark for JORDAN should be returned to China’s trademark office (after which, presumably, Jordan can obtain a registration of his own).


In the ruling Qiaodan Sports Co must stop using the Chinese characters for Qiaodan on its merchandise, according to a transcript of court records posted on an official website.


“The decision ensures that my Chinese fans and all Chinese consumers know that Qiaodan Sports and its products have no connection to me” – said Jordan.


What conclusions can be made?


First, it’s advisable to apply for marks in China as soon as practicable. Unlike other jurisdictions (such as the United States), China does not require proof of use for a trademark to obtain registration. Therefore, the concept of a “defensive registration” exists in China, but not the U.S. And in most cases, a trademark may not be challenged on grounds of non-use for three years after registration. So long as some genuine good faith use is made in China during that three-year period, the registration will generally avoid a non-use cancellation.


Second, this should apply equally to the concept of “transliterated” marks in Chinese characters. A Chinese trademark specialist can propose a variety of potential Chinese character marks that are the phonetic equivalent of an English language mark. It’s also possible that consumers in China may already associate a certain combination with your brand as a “de facto” transliteration.


9. Russia: Valio vs. «Баба Валя» (baba Valya)
Verdict – in favor of Valio


The roots of production of the Finnish butter go back to 1908. This year the export of the product to Russia began. Today the butter is exported to about 30 countries.


Around 2014 butter appeared in the Russian stores strikingly resembling the package of Finnish Valio butter. The design of Valio butter package with the image of a girl with a jug on a light background, which is familiar to the Russian consumer, was developed several years earlier.


According to the poll results about 50% of the Russian consumers were misled and confused the two products.

Valio LLC - the Russian branch of the Finnish concern Valio launched a proceeding in the Federal Antimonopoly Service (FAS) Office in St. Petersburg about the similarity to the degree of confusion, misleading consumers and violating the Law on the Protection of Competition.


Consumers, as a rule, are guided by the main, most striking elements of the goods including color and design style, can confuse the outwardly similar packages of “Baba Valya” and “Valio” and purchase one product instead of another.


In support of its attitude Valio LLC provided a comparative analysis performed by a patent attorney, according to which the composition and color-graphic scheme of packages are almost identical.


The defendant, the Russian company «Traditsiya» LLC, disagreed with the plaintiff but during the proceeding altered the package of its butter.

As a result, the FAS order was not issued but despite this, the confusion was established, the defendant was found guilty of unfair competition and violation of the Law on Protection of Competition, and a fine of 110 thousand rubles was imposed on him.


For reference:

Par. 1 of art. 14 of the Law on Protection of Competition prohibits unfair competition.
For such a violation par. 1 of art. 14.33 of the Administrative Code of the Russian Federation stipulates administrative liability in the form of a fine on legal entities in the amount of 100,000 to 500,000 rubles.


In Julia Nikoleva's editing


Original articles:

https://www.trademarknow.com/blog/9-nasty-trademark-infringement-cases-and-how-to-avoid-them

http://www.foxnews.com/food-drink/2016/04/21/louis-vuitton-fried-chicken-knockoff-ordered-to-pay-luxury-retailer-12000.html

https://www.hollywoodreporter.com/thr-esq/film-academy-loses-godaddy-oscars-821998

http://www.mondaq.com/southafrica/x/486460/Trademark/Chinese+Court+Sends+3N+Packing

https://www.inta.org/INTABulletin/Pages/India_7015.aspx

https://www.livemint.com/Companies/v2om2cMruwjp1CPzvPDXyO/Cadbury-loses-trademark-case-on-Eclairs.html

https://www.indiamart.com/proddetail/londonderry-6763989062.html

https://vakilsearch.com/advice/trademark-infringement-india/

https://www.languageconnections.com/blog/blatant-international-trademark-infringement-cases/

https://www.duetsblog.com/2016/12/articles/advertising/jordan-v-qiaodan-the-lessons-of-trademark-enforcement-in-china/

https://www.theguardian.com/world/2016/dec/08/michael-jordan-scores-partial-victory-china-trademark-case-qiaodan

https://vc.ru/flood/20126-baba-valya-fine

https://roscontrol.com/journal/news/valya-protiv-valio-schet-01/

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