SNIPER Bulletin
Searchable Networked Intellectual
Property Electronic Resource
March 2014
Note: Due to copyright requirements, IP Australia
Library is unable to directly supply copies of these
articles to readers outside IP Australia. Please contact
your local library to obtain copies of these articles by
interlibrary loan.
© Commonwealth of Australia 2014
You may share and adapt the information in this publication for any purpose, as long as you
attribute the material as follows:
This work by the Commonwealth of Australia is licensed under a Creative Commons Attribution 4.0
International Licence.
Contact us
Enquiries about this publication can be sent to:
IP Australia Library
Email: library@ipaustralia.gov.au
Phone: (02) 6283 2301
ISSN: 2202-753X
SNIPER: 2014/00056
Title: 40 cases of the year: from Grandmark to Google, China to Chile, the most influential cases
of 2013
Source: Managing Intellectual Property. No. 235, December 2013-January 2014, pp. 36-49.
Summary: Managing IP's most influential cases of the year -- selected by Managing IP's team in
Hong Kong, New York and London -- Tsit Wing Group v TWG Tea -- Castel v Panati -- Longchamp
v Al International -- CLS v Alice -- Google Books -- Myriad -- gTLD-related decisions -- .patagonia - .polo -- Asia -- Americas -- Europe and Africa.
Subject: Intellectual property--case law
SNIPER: 2014/00317
Author: Ghidini, Gustavo
Title: 2005-2007: focusing on the IP-competition law intersection(s)
Source: WIPO Journal. Vol. 4 No. 2, 2013, pp. 267-268.
Summary: Historical reflection by the former President of Association for the Advancement of
Teaching and Research in Intellectual Property (ATRIP) (2005-2007) -- organiser of two ATRIP
Congresses -- proceedings lead to publication of "Intellectual property and market power" ATRIP
papers 2006-2007 -- Association collaboration with Luis Mariano Genovesi.
Subject: International Association for the Advancement of Teaching and Research in Intellectual
Property
Subject: Professional bodies (Intellectual property)
Subject: Competition law--intellectual property industry
SNIPER: 2014/00209
Author: Guthrie, Robert
Title: Absolute grounds go global
Source: Intellectual Property Magazine. September 2013, pp. 59-60.
Summary: European Commission published its proposals for changes to European Union (EU)
trade mark law -- proposed changes to the ways in which the absolute grounds for refusal or
invalidity are applied -- changes would prevent the registration of national marks that would be
rejected on absolute grounds in any member state -- would require marks in any foreign language
to be refused if any of the absolute grounds were to apply, once the mark was translated into an
official language of the EU.
Subject: Trade marks--reform--Europe
Subject: Trade marks--law and legislation--Europe
SNIPER: 2014/00300
Author: Lybbert, Travis J.
Author: Zolas, Nikolas J.
Added author: World Intellectual Property Organization
Title: An 'algorithmic links with probabilities' concordance for trademarks for disaggregated
analysis of trademark and economic data
Source: WIPO Economic Research Working Paper. No. 14, January 2014.
SNIPER Bulletin – March 2014
Page 1 of 92
Summary: Existing empirical research in the economics of trade marks -- key challenges to
linking trade marks to economic data -- 'algorithmic links with probabilities' matching: trade marks -matching -- generating keywords for industry descriptors -- generating keywords for trade marks -matching -- filtering -- reweighting -- trade mark intensity by income group -- intensity of foreign
trade mark transfers by income group -- trade mark intensity for OECD nations -- regression
analysis.
Subject: Trade marks--economics
Subject: Innovation (Technological)--economics
SNIPER: 2014/00196
Author: Ryan, Tim
Title: Always on, always connected?
Source: Intellectual Property Magazine. September 2013, pp. 32-33.
Summary: "Wearable tech" could mean that you are always on, always connected -- do we want
to be connected and monitored, or to have our experiences shared, by wearable tech? -implications -- new innovations -- Google Glass -- Nike+ -- Sony SmartWatch -- allegations that
iPhones were tracking and storing users' every movement -- example of how technology can, or at
least be perceived to, cross the blurred line from usefulness into intrusiveness -- privacy
consequences -- data concerns -- intellectual property (IP) infringement.
Subject: Privacy
Subject: Intellectual property infringement--liability
SNIPER: 2014/00264
Author: Chapdelaine, Pascale
Title: The ambiguous nature of copyright users' rights
Source: Intellectual Property Journal (Carswell). Vol. 26 No. 1, December 2013, pp. 1-46.
Summary: Nature of exceptions to copyright infringement or users' rights as they are laid out in
Canada's Copyright Act -- copyright jurisprudence -- interaction with contracts and technological
protection measures (TPMs) -- significance of the Supreme Court of Canada characterisation of
exceptions as users' rights -- four exceptions to copyright infringement that we added to the
Copyright Act in 2012 -- focus on their relevance for consumers and their relation to pre-existing
users' rights set out in the Act -- how they can altered or overridden but non-negotiated standard
end-user agreements and TPM -- sample of non-negotiated standard terms of use for the online
distributions of books, musical recordings and films -- policy considerations -- legitimacy of
copyright law.
Subject: Canada. Copyright Act (1991)
Subject: Fair use (Copyright)--Canada
Subject: Copyright infringement--law and legislation--Canada
SNIPER: 2014/00044
Author: Folliard-Monguiral, Arnaud
Author: Miniotas, Mikas
Title: Apple v Samsung: The Hoge Raad legacy
SNIPER Bulletin – March 2014
Page 2 of 92
Source: Journal of Intellectual Property Law and Practice. Vol. 8 No. 12, December 2013, pp. 925931.
Summary: The Supreme Court of the Netherlands (Hoge Raad) dismisses appeal against a
decision which rejected claims that Samsung infringed Apple's registered Community design -Samsung tablet Galaxy Tab 10.1 -- the dispute between Apple and Samsung in proceedings in
Germany and the United Kingdom -- Apple's application for a preliminary injunction in the
Netherlands and a pan -EU injunction against Dutch affiliates -- Samsung's counterclaim -assessment of the design's -- individual character -- scope of protection -- uncertainty over the
issue of whether the validity of a Community design should be assessed against prior art on a
collective or individual basis -- assessment of other registered Community designs.
Subject: Industrial design infringement--case law--Netherlands
Subject: Industrial design litigation--Netherlands
Subject: Industrial designs--Europe
SNIPER: 2014/00113
Author: Alcácer, Juan
Author: Gittelman, Michelle
Author: Sampat, Bhaven
Title: Applicant and examiner citations in U.S. patents: an overview and analysis
Source: Research Policy. Vol. 38 No. 2, March 2009, pp. 415-427.
Summary: Prior art patent citations in the U.S. -- added by both patent examiners and patent
applicants -- analysis of prior art citations listed in all U.S. granted in 2001-2003 -- found examiners
played significant role in identifying prior art -- added 63% of citations on the average patent -- all
citations on 40% of patents granted -- firm-specific variables explain most of the variation in
examiner-citation shares -- foreign applicants had the highest proportion of citations added by
examiners -- high-volume patent applicants had a greater proportion of examiner citations -- higher
examiner citations among patents in electronics, communications and computer-related fields -findings suggest firm-level patenting practices have strong influence on citation data -- need for
further research
Subject: Patent examination--United States
Subject: Patent searching--United States
Subject: Inventive step--United States
SNIPER: 2014/00348
Author: Kuhnen, Rainer A.
Title: Approach to application of EPC Article 54(3) for European patent divisionals
Source: World Intellectual Property Report. Vol. 28 No. 2, February 2014, pp. 37-39.
Summary: Decision of Technical Board of Appeal of the European Patent Office -- case involving
a parent patent and its divisional application -- opposition proceedings against the parent patent -Board concluded claim 1 of the parent patent did not enjoy priority because it was generalized over
the content of the priority document -- the divisional application did enjoy priority -- decision raises
concerns with respect to the applicability of the European Patent Convention (EPC) Article 54(3)
between parent and divisional applications – analysis of the decision – significance.
Subject: European Patent Convention (1973 October 5)
Subject: Divisional applications (Patents)--Europe
SNIPER Bulletin – March 2014
Page 3 of 92
Subject: Patent novelty--case law--Europe
SNIPER: 2013/02460
Author: Burk, Dan. L.
Title: Are human genes patentable?
Source: IIC: International Review of Intellectual Property and Competition Law. Vol. 44 No. 7,
November 2013, pp. 747-749.
Summary: United States Supreme Court decision in Association for Molecular Pathology v. Myriad
-- Court found DNA sequences extracted from human cells to be products of nature and outside
patentable subject matter -- at the same time, Court found that other human gene sequences,
containing equivalent information, to be patentable subject matter -- reasoning puzzling and
contradictory -- leaves law in this are more confused and uncertain -- analysis of the decision -- did
not reference the Court's earlier opinion in Mayo v. Prometheus -- patentability of a diagnostic
method under the law of nature doctrine - -decisions leave the relationship between products of
nature and laws of nature in American patent law uncertain and undefined.
Subject: Genes--patentability--United States
Subject: Patenting of life forms--case law--United States
SNIPER: 2013/02954
Author: Singh Berwal, Paramjeet
Title: Articles 3 (a) and 3 (b) of the SPC Regulation: an analysis
Source: European Intellectual Property Review. Vol. 36 No. 1, 2014, pp. 29-38.
Summary: Medeva and Georgetown judgments -- preliminary ruling concerning the interpretation
of arts 3(a) and 3(b) of Regulation 469/2009 -- supplementary protection certificate (SPC) for
medicinal products -- investments in pharmaceutical research and development -- patent term
extension -- article discusses the questions arising in relation to the interpretation -- SPCs and
patents -- general principles and statutory provisions of patent law -- commercial aspects of the
pharmaceutical industry -- case of vaccines -- infringement test -- disclosure test.
Subject: Patent extension--law and legislation--Europe
Subject: Pharmaceutical industry--case law--Europe
SNIPER: 2014/00315
Author: Verma, S. K. (Surinder Kaur Verma)
Title: ATRIP: a sweet remembrance
Source: WIPO Journal. Vol. 4, No. 2, 2013, pp. 260-263.
Summary: Creation of the Association for the Advancement of Teaching and Research in
Intellectual Property (ATRIP) -- role to increase and disseminate knowledge about intellectual
property (IP) throughout the world, particularly in developing countries -- bring about commonality
on the teaching of IP laws -- author's association with ATRIP -- ATRIP's annual conferences -involvement of World Intellectual Property Organization (WIPO).
Subject: International Association for the Protection of Intellectual Property
Subject: Professional bodies (Intellectual property)
Subject: Intellectual property industry
SNIPER Bulletin – March 2014
Page 4 of 92
SNIPER: 2014/00318
Author: Kur, Annette
Author: Rosén, Jan
Title: ATRIP and publications
Source: WIPO Journal. Vol. 4, No. 2, 2013, pp. 269-277.
Summary: Association for the Advancement of Teaching and Research in Intellectual Property
(ATRIP) -- publications of academic associations -- ATRIPS publishing output -- early years (19801999) -- intermediate phase: book publications (2000-2008) -- 2008 and onwards -- publishing of
ATRIP Congress papers -- decision surrounding hardcopy publication of the Congresses -- ATRIP
online: website and related matters -- ATRIP's position on access to publications -- ATRIP's
response to a request by the Committee on Culture, Science and Education of the Parliamentary
Assembly of the Council of Europe -- assist in a hearing held by the Committee as an element in
the preparation of a Parliamentary resolution on a report on "Copyright in Todays Information
Society" -- statement on the imminent dangers for copyright holders ensuing from the (then) muchdebated business schemes for mass digitisation of books and archives by private commercial
actors such as Google -- questions whether the reserved attitude of ATRIP be replaced by a more
pro-active approach politically.
Subject: International Association for the Advancement of Teaching and Research in Intellectual
Property
Subject: Professional bodies (Intellectual property)
Subject: Culture and entertainment industry
SNIPER: 2014/00312
Author: Straus, Joseph
Title: ATRIP and the changing environment: a retrospective
Source: WIPO Journal. Vol. 4, No. 2, 2013, pp. 242-247.
Summary: Association for the Advancement of Teaching and Research in Intellectual Property
(ATRIP) -- historical perspective of the Association -- specific research objectives -- scientific and
technological achievements -- the social and economic conditions subject to evolutionary
developments and changes -- improvement of the intellectual property system -- incentive and
securities for a sustainable generation flow of innovation.
Subject: International Association for the Advancement of Teaching and Research in Intellectual
Property
Subject: Intellectual property industry
SNIPER: 2014/00311
Author: Cornish, W. R. (William Rodolph), 1937Author: Weston, Glen
Author: Bercovitz Rodrieguez-Cano, Alberto
Title: ATRIP: its formation and its lively adolescence
Source: WIPO Journal. Vol. 4, No. 2, 2013, pp. 235-241.
Summary: International Association for the Advancement of Teaching and Research in Intellectual
Property (ATRIP) -- foster the development of IP -- teaching framework and research opportunities
-- history of the association.
SNIPER Bulletin – March 2014
Page 5 of 92
Subject: International Association for the Advancement of Teaching and Research in Intellectual
Property
Subject: Intellectual property industry
SNIPER: 2014/00310
Author: Dinwoodie, Graeme B.
Title: ATRIP passes 30: an introduction
Source: WIPO Journal. Vol. 4, No. 2, 2013, pp. 232-234.
Summary: International Association for the Advancement of Teaching and Research in Intellectual
Property (ATRIP) -- history of the association -- research projects -- support from WIPO -scholarship of members.
Subject: International Association for the Advancement of Teaching and Research in Intellectual
Property
Subject: Intellectual property industry
SNIPER: 2013/02958
Author: Kolczyński, Janusz Piotr
Author: Antas, Przemyslaw Dominik
Title: Audiovisual works are integral works as broadcast or rebroadcast as a single work and not
as a set (collection) of various component works
Source: European Intellectual Property Review. Vol. 36 No. 1, 2014, pp. 61-66.
Summary: Polish Court of Appeal judgment -- history of the proceedings -- right to use audiovisual
work as a whole -- exclusive right of the producer -- additional licences for the integral parts not
required from the respective copyright collecting society -- an audiovisual work is a single work and
not a set (collection) of various so-called component works.
Subject: Television broadcasts
Subject: Copyright infringement--case law--Poland
Subject: Copyright levies--Poland
SNIPER: 2013/02887
Author: Sexton, Christopher
Title: The Australian designs system: the "poor cousin" of IP in need of a timely overhaul?
Source: Intellectual Property Forum. No. 95, December 2013, pp. 2-6.
Summary: Background of current system -- current concerns and emerging issues for
consideration under the issues paper -- "Review of the Designs Act" paper release by ACIP in
September -- other identified issues for comment -- 2013 Francis Gurry lecture: Re-thinking the
role of intellectual property -- rise of intangibles -- geopolitical shift from the west to the east -diffusion of power and the empowerment of non-state actors -- entitlement -- "appropriability" -access.
Subject: Industrial designs
Subject: Industrial design systems
Subject: Intellectual property
SNIPER Bulletin – March 2014
Page 6 of 92
SNIPER: 2014/00223
Author: Zemer, Lior
Title: Authors and users: lessons from outre-mer
Source: Intellectual Property Journal (Carswell). Vol. 25 No. 3, November 2013, pp. 231-268.
Summary: Israeli copyright system -- insights from recent Israeli copyright decisions delivered by
the Supreme Court -- balancing competing interests rights in ideas -- own intellectual creation -official medals and political figures -- literary inspiration -- contributory infringement and notice and
take down -- limited liability of universities -- limited liability of message boards -- user's right
departure -- 2007: from fair dealing to fair use -- 2009: from fair use to user's rights -- 2012: user's
rights departure.
Subject: Copyright systems--Israel
SNIPER: 2014/00207
Author: Kalaycı, Baris
Title: Battling Turkey's copycats on the border
Source: Intellectual Property Magazine. September 2013, pp. 55-56.
Summary: Turkey is ideally situated for the dissemination of counterfeit products -- Turkey's
customs play a key role in the protection of intellectual property (IP) rights -- regulations protecting
IP rights -- Turkish Customs Law -- rightsholders could file customs IP applications with a single
application filed through the General Directorate of Customs in Ankara -- covered all shipments
subject to importation and exportation at Turkish customs -- also covered transit trade and trade
located in any Turkish free-trade zones -- an amendment came into force which enabled IP
rightsholders to file online customs IP applications --advantages of the new system -- actions that
the Turkish government and industry can undertake to resolve counterfeit issues -- further
suggestions.
Subject: Customs--reform--Turkey
Subject: Counterfeiting--Turkey
SNIPER: 2014/00204
Author: Pierce, Jennifer
Author: Birch, Christopher
Title: Best kept secret
Source: Intellectual Property Magazine. September 2013, pp. 47-48.
Summary: Trade secrets and reverse engineering issues are common in in electrical and
mechanical areas, which form a considerable proportion of the 'cleantech' field -- increased
collaboration within cleantech sectors -- plenty of allegations of misappropriation of trade secrets -European Commission is investigating the position and considering legislative proposals -- difficult
to produce comprehensive EU legislation in view of the overlap with areas such as labour law and
privacy -- intellectual property protecting (IP) trade secrets -- ownership of such property -- likely
that it will be necessary to prove ownership in circumstances where it is contested -- crucial to
consider protecting confidential information through registration if possible -- ownership of IP -what will be disclosed -- methods of disclosure.
Subject: Trade secrets
Subject: Environmental issues in intellectual property
SNIPER Bulletin – March 2014
Page 7 of 92
SNIPER: 2014/00225
Author: Vaver, D.
Title: Best mode disclosure in Canadian patents
Source: Intellectual Property Journal (Carswell). Vol. 25 No. 3, November 2013, pp. 303-333.
Summary: Decision of the Federal Court of Canada holds that the duty under the Canadian Patent
Act to provide in the patent specification the best mode of working the invention applies only to
machines and no other class of invention -- reviews the history of the best mode requirement -origins in the wording of 18th century patent grants through to early 19th century Canadian
legislation and the present day -- restricting best mode and recent decisions -- best mode
antecedents in British law -- best mode in American law -- best mode in Canadian law -- SanofiAventis revisited -- minerals separation and consolboard redux -- consolboard and implied
exclusion -- re-reading subsection 27(3) -- contrary case law.
Subject: Patent disclosure--law and legislation--Canada
Subject: Patent disclosure--analysis--Canada
SNIPER: 2014/00335
Author: Calboli, Irene
Title: Betty Boop and the return of aesthetic functionality: a bitter medicine against "mutant
copyrights"?
Source: European Intellectual Property Review. Vol. 36 No. 2, 2014, pp. 80-87.
Summary: History and developments of the doctrine of aesthetic functionality in the US -- recent
decisions in Fleischer Studios, Inc v AVELA Inc -- ownership of the image and name of the Betty
Boop character -- practice of using trade mark law as an additional form of protection for
copyrighted creative works -- consequences of overlapping trade mark and copyright protection -court held that the Betty Boop character was aesthetically functional -- important element added to
the interpretation of the doctrine.
Subject: Famous trade marks
Subject: Trade mark infringement--case law--United States
Subject: Trade mark ownership--case law--United States
SNIPER: 2014/00292
Author: Herrlinger, Christoph
Author: Kock, Michael A.
Title: Biodiversity laws: an emerging regulation on genetic resources or 'IP on life' through the
backdoor?
Source: Bio-Science Law Review. Vol. 13 No. 4, 2013, pp. 119-139.
Summary: Genetic resources -- intellectual property rights and restrictions on use of genetic
resources -- biodiversity laws -- Convention on Biological Diversity -- affect the right to access,
transfer and use genetic resources -- preventive measure against biopiracy -- current
implementation of the Nagoya Protocol in the European Union -- overview of the mandatory
declaration of source and origin in patent and Plant Variety Protection (PVP) applications -retroactivity -- expansion of country of access -- expansion to derivatives -- expansion of 'user' -expansion of the definitions of 'utilisation' and 'biotechnology' -- expansion to subsequent users -declaration of source and origin in IP applications -- new requirement for patentability -- origin vs
source -- scope of declaration: genetic and biological resources and materials.
SNIPER Bulletin – March 2014
Page 8 of 92
Subject: Biodiversity--law and legislation
Subject: Plant breeder's rights--treaties
Subject: Plant rights systems
SNIPER: 2013/02791
Title: Blurring the lines: IP in a virtual world
Source: Trademarks Brands and the Internet. Vol. 2 No. 3, 2013, pp. 12-15.
Summary: Online games -- creation of virtual content by game players -- customisation -- question
of ownership of the content created -- blame for third party rights infringement -- copyright
infringement -- owners' rights
Subject: Multimedia works
Subject: Computer-related inventions
Subject: User-generated content
Subject: Intellectual property rights
Subject: Intellectual property ownership
SNIPER: 2014/00299
Author: Corrado, Carol A.
Author: Hao, Janet X.
Added author: World Intellectual Property Organization
Title: Brands as productive assets: concepts, measurement and global trends
Source: WIPO Economic Research Working Paper. No. 13, January 2014.
General Note: "November 2013".
Summary: Intangible assets -- brands from an economic point of view -- conditions under which
brands are long-lived productive assets and contribute to economic growth -- review and improve
the measurement of investment in brands -- define the brand equity component of intangible
assets -- comparison of data from China, Japan, Euro Area, United Kingdom and United States -difference between corporate and product brands -- innovation and knowledge capital -- intangibles
in a global value chain -- brand equity -- productivity trends in advanced countries -- need for
improved datasets.
Subject: Branding--reviews
Subject: Brand management
SNIPER: 2014/00245
Author: Prifti, Viola
Title: The breeding exemption on patent law: analysis of compliance with Article 30 of the TRIPS
Agreement
Source: Journal of World Intellectual Property. Vol. 16 No. 5-6, November 2013, pp. 218-239.
Summary: Breeding exemption -- limits the right of patent holders by allowing plant breeders to
use freely patented biological material for creating new plant variety types -- France, Germany, and
Switzerland, have already adopted this type of exemption into their patent laws -- Netherlands is
expected to amend its patent law -- debate in the Netherlands included the introduction of a
SNIPER Bulletin – March 2014
Page 9 of 92
"comprehensive breeding exemption" -- an exemption that allows the commercialization of plant
varieties containing patented elements -- industry raised concerns with respect to the compliance
of patent exceptions with the European directive on the legal protection of biological inventions and
the TRIPS Agreement -- article 30 of the TRIPS Agreement -- only provision that explicitly provides
for exceptions to patent rights at international level -- possible solution to the high legal uncertainty
characterizing the debate on patent exceptions for the plant-breeding sector.
Subject: Agreement on Trade-Related Aspects of Intellectual Property Rights (1994 April 15)
Subject: Plant breeder's rights
Subject: Patents--law and legislation
SNIPER: 2014/00215
Author: Borthwick, Alex
Title: BSkyB on cloud nine over 'SkyDrive'
Source: Intellectual Property Magazine. September 2013, pp. 73-74.
Summary: British Sky Broadcasting Group v Microsoft Corporation -- United Kingdom High Court - ruled Microsoft's use of the mark "SkyDrive" infringed BSkyB's trade marks for Sky and
constituted passing off -- trade mark infringement -- similar marks / identical services -- similar
marks / similar services -- similar marks and dilution -- passing off -- Microsoft's counterclaims.
Subject: Trade mark infringement--case law--United Kingdom
Subject: Confusing similarity
SNIPER: 2014/00320
Author: Yu, Peter K.
Title: Building the ladder: three decades of development of the Chinese patent system
Source: WIPO Journal. Vol. 5, No. 1, 2013, pp. 1-16.
Summary: Establishment of the modern Chinese patent system -- essential policy tool to help
China play economic and technological catch-up -- enactment of the 1984 Patent Law -- pressure
from United States and other countries on China to undertake further reform of its intellectual
property system -- China's accession to the World Trade Organization -- National Intellectual
Property Strategy -- development of an innovation and knowledge based economy -- lessons for
the developing world.
Subject: Intellectual property systems--history--China
SNIPER: 2014/00344
Author: Burshtein, Sheldon
Title: Canadian Supreme Court piqued by copyright infringement of "Curiosity"
Source: World Intellectual Property Report. Vol. 28 No. 2, February 2014, pp. 27-30.
Summary: Cinar Corporation v. Robinson -- Canadian Supreme Court (SCC) confirmed the test
for determining copyright infringement and factors for assessing compensation -- limiting the scope
of copyright protection -- SCC effectively strengthened copyright in entertainment properties in
Canada -- facts of the case -- lower court decision from Quebec Superior Court -- Quebec Court of
Appeal decision -- analysis of the decision – significance.
Subject: Copyright infringement--case law--Canada
Subject: Copyright--culture and entertainment industry—Canada
SNIPER Bulletin – March 2014
Page 10 of 92
Subject: Damages—Canada
SNIPER: 2014/00123
Author: Leathem, Peter
Title: Charting its success: PPL and the collection question
Source: Intellectual Property Magazine. December 2013-January 2014, pp. 18-19.
Summary: House of Commons Culture, Media and Sport Committee published its report,
'Supporting the Creative Economy' -- call for the appointment of a powerful champion of intellectual
property (IP) within government -- duty to protect and promote the interests of UK IP -- coordinate
the enforcement of IP rights -- educate customers on the value of IP and the importance of
respecting IP rights -- Mike Weatherley MP appointed as the Prime Minister's advisor on IP -issues that can be caused by proceeding with policy without sufficient understanding of the way
creative industries work -- areas of risk -- new opportunities -- the role of the music industry.
Subject: Copyright licensing societies--United Kingdom
Subject: Copyright--culture and entertainment industry--United Kingdom
SNIPER: 2014/00115
Author: Pugatch, Meir Perez
Author: Chu, Rachel
Author: Torstensson, David, 1980Author: Chamber of Commerce of the United States of America. Global Intellectual Property
Center.
Title: Charting the course: GIPC international IP index
Source: Charting the Course. 2014.
General Note: 2nd edition
Summary: GIPC Index as a statistical tool to help business and policy makers measure a
country's direction in moving towards innovative and creative economies -- maps the IP
environment of 25 countries using 30 factors -- indicates IP environments that foster growth and
development -- key findings -- list of countries heading in the right direction -- have moved towards
improving their IP systems by securing effective and transparent IP rules -- Canada, China,
Russia, Malaysia -- list of countries moving backwards -- have taken steps backward that will stifle
innovation and the ability of creators and inventors to protect their IP -- India, South Africa,
Canada, Ukraine and Australia -- claims Australia's plain packaging requirements for tobacco
severely limit the ability of trade mark owners to exploit their rights -- Australia ranked 5th overall
out of 25 nations
Subject: Intellectual property--policy
Subject: Intellectual property rights
SNIPER: 2014/00147
Author: San Martín, Beatriz
Author: Bilney, Philip
Title: Chemical reaction
Source: Intellectual Property Magazine. December 2013-January 2014, p. 71.
SNIPER Bulletin – March 2014
Page 11 of 92
Summary: Sumitomo Chemical preliminary ruling -- Court of Justice of the European Union
(CJEU) held that a supplementary protection certificate (SPP) for a plant protection product (PPP)
cannot be sought on the basis of an emergency marketing authorisation (MA) or of an MA that has
yet to be granted -- conditions for obtaining an SPC -- obtaining an MA -- insecticide clothianidin -Sumito and Bayer group -- CJEU's decision has provided welcome clarity.
Subject: Patent extension--case law--Europe
Subject: Science and research industry--Europe
SNIPER: 2014/00150
Author: Brassell, Martin
Title: Cheque mate?
Source: Intellectual Property Magazine. December 2013-January 2014, pp. 80-82.
Summary: Intangible assets -- companies now spend more time on building up their intangible
assets than they do on fixed assets -- usually intangibles which drive investor appetite and price in
equity funding -- difficult for companies to use intellectual property (IP) assets as security for debt
funding -- taking hard assets as security is beneficial for banks' capital adequacy ratios -reasonable proportion of the value they allocate to bricks and mortar is likely to prove recoverable
in the event of customer default -- main reason banks often cite for taking security is that it
provides them with a secondary exit route -- procedural issues -- no fundamental legal problem
with using IP as security -- mainstream lenders beginning to come round to the idea that they need
to pay more attention to IP -- avenues available to companies who need to raise funding based on
their IP.
Subject: Finance
Subject: Intellectual property--financial services industry
SNIPER: 2014/00052
Author: Tan, Loke Khoon, 1962Author: Wu, David
Title: China's new Trademark Law: another step in the journey
Source: Managing Intellectual Property. No. 235, December 2013-January 2014, pp. 20-22.
Summary: Amendments to China's Trademark Law -- key changes to the Trademark Law -impact on business -- fixed statutory timeframe -- faster procedures -- greater protection against
unfair competition -- prohibition on the use of the term "well-known trade mark" as advertisement -increased scope and penalties for trade mark infringement -- how to prepare for the new
Trademark Law.
Subject: Trade marks--reform--China
Subject: Trade marks--law and legislation--China
SNIPER: 2014/00346
Author: Chiu, Alan C. W.
Title: China's new Trademark Law Implementing Regulations
Source: World Intellectual Property Report. Vol. 28 No. 2, February 2014, pp. 34-35.
Summary: Recent revision to China's Trademark Law -- new Trademark Law Implementing
Regulations (Draft Regulations) prepared -- details of different trade mark procedures -- clarifies
SNIPER Bulletin – March 2014
Page 12 of 92
uncertainties and ambiguities under the new law -- regulates practices of trade mark agents in
China -- overview of key proposed changes -- e-service -- time limits -- 3D and sound marks -multi-class applications -- same day applications for conflicting marks -- amendment and
clarification -- partial acceptance -- opposition and assignment -- licence recordal -- non-use
cancellation -- Trademark and Adjudication Board (TRAB) proceedings -- Administration for
Industry for Commerce (AIC) administrative raid -- practices of trade marks agents -- consultation
continuing
Subject: Trade marks--law and legislation--China
Subject: Trade mark systems--reform--China
SNIPER: 2014/00347
Author: Barty, Susan
Author: Kilshaw, Lucy
Author: Dorrity, Fionnuala
Title: CJEU rules on database rights in meta search engine case
Source: World Intellectual Property Report. Vol. 28 No. 2, February 2014, pp. 36-37.
Summary: Decision of the Court of Justice of the European Union (CJEU) -- Innoweb BV v.
Wegener ICT Media BV, Wegener Mediaventions BV -- whether infringement of database rights
subsisting in third party websites --a meta search engine which searched a number of car sales
websites to compile a consolidated list of results -- facts of the case -- legal basis -- analysis of the
decision -- interpretation of the concept of "re-utilisation" of the database -- CJEU's decision that
the meta search engine infringed the database right in the AutoTrack database -- key factor in the
decision -- risk that use of the database by the meta search engine could deprive the database
maker of revenue as end user would not need to click through from results to original database
website -- CJEU limited their decision to the specific type of meta search engine referred to -application of decision may be limited
Subject: Database rights--case law--Europe
Subject: Internet--case law--Europe
SNIPER: 2014/00148
Author: Goodger, Ben
Author: McDonald, Jonathan
Title: Collaboration in the biopharma industry
Source: Intellectual Property Magazine. December 2013-January 2014, pp. 74-76.
Summary: After the global financial crisis -- Ernst & Young's annual Global Biotechnology Report - the biotechnology industry and those investing in it, no longer had the same appetite as before to
fund research and development (R&D) using the typical pre-financial crisis R&D model -- way to
reduce costs and increase efficiency would be for biotech companies to collaborate in a more
systematic way -- the issue of how to deal with the intellectual property rights (IP) arising from a
collaboration between potential competitors -- how big a problem is this? -- whether any potential
solutions exist.
Subject: Business collaboration--pharmaceutical industry
Subject: Industrial research and development
SNIPER: 2014/00322
SNIPER Bulletin – March 2014
Page 13 of 92
Author: Dutfield, Graham
Title: Collective invention and patent law individualism: origins and functions of the inventor's right
of attribution
Source: WIPO Journal. Vol. 5 No. 1, 2013, pp. 25-34.
Summary: Inventors names on inventions -- inventors right of attribution does not harm corporate
interests -- employer/employee relationship -- appreciation and recognition of efforts merited -inventors moral rights in international law -- avoiding anonymity: in the corporate interest -- names
of individuals on patents gives moral legitimacy to the patent system -- legal advantage of
employers.
Subject: Inventors' rights
Subject: Patent entitlement
SNIPER: 2013/02959
Author: Schacht, Hubertus
Title: Commencement or completion: what constitutes a "human embryo" within the meaning of
the EU Biotechnology Directive?
Source: European Intellectual Property Review. Vol. 36 No. 1, 2014, pp. 66-71.
Summary: Court of Justice of the European Union (CJEU) -- Brüstle judgment of the CJEU
clarified the legal framework for the patenting of inventions relating to human embryo -- CJEU's
concept of "human embryo" -- British High Court seeking clarification as to whether parthenotes
containing only pluripotent stem cells are included -- difficulties arising from the definition of
"human embryo" given by the CJEU -- arguments for a coherent interpretation -- recent decision of
the German Federal Court of Justice.
Subject: Patentability--biotechnology industry--Europe
Subject: Patenting of life forms--case law--Europe
Subject: Biotechnology--patentability--Europe
SNIPER: 2014/00126
Author: Rajendra, Arty
Author: Smillie, Mary
Title: Commitment issues
Source: Intellectual Property Magazine. December 2013-January 2014, pp. 24-25.
Summary: What triggered the European Commission's (EC) proceedings in the Samsung case? -what commitment has Samsung proposed? -- should the EC leave this issue to the Court of
Justice of the European Union (CJEU)? -- is a five year commitment long enough? -- arbitration of
Fair, Reasonable and Non- Discriminatory (FRAND) terms -- adjudication by patent court -- other
courts -- use of Unified Patents Court (UPC) or UPC patent mediation and arbitration centre -- what
about alternatives to set the royalty rate in FRAND cases?
Subject: Competition (Economics)--communication services industry
Subject: Intellectual property licensing
SNIPER: 2014/00140
Author: Kumar, Swarup
SNIPER Bulletin – March 2014
Page 14 of 92
Title: Compulsory licences: is India protecting its own?
Source: Intellectual Property Magazine. December 2013-January 2014, pp. 54-56.
Summary: India issued its first compulsory licence to Natco Pharma, an Indian generic company,
for Bayer's blockbuster anti-cancer drug Nexavar -- no other compulsory licence has been issued
by the Indian Patent Office -- not many applications for compulsory licences have been filed by
Indian generics -- belies the perception that India is on a spree to issue as many compulsory
licenses as possible -- Nexavar case -- Roche's Herceptin -- Dasatinib -- pointers for pharma
companies and in-house attorneys regarding compulsory licences in India.
Subject: Compulsory licensing--pharmaceutical industry--India
Subject: Compulsory licensing--case law--India
SNIPER: 2013/03006
Author: Australia. Productivity Commission.
Title: Compulsory licensing of patents: Productivity Commission inquiry report
Source: Compulsory Licensing of Patents. 28 March 2013.
General Note: The issues paper was released on 9 August 2012 and the draft report was released
on 14 December 2012
Summary: Compulsory licensing inquiry -- patents -- Australia -- rationale for patents and
associated safeguards -- key features of patent systems in Australia and comparable markets -utilisation of patents in Australia and comparable markets -- concerns about patent access -compulsory licensing provision -- crown use and acquisition -- other forms of non-voluntary access
in Australia -- alternative access mechanisms -- awareness-raising measures.
Subject: Compulsory licensing--reviews--Australia
Subject: Patents--reviews--Australia
SNIPER: 2014/00305
Author: Antonelli, Christiano
Title: Compulsory licensing: the foundations of an institutional innovation
Source: WIPO Journal. Vol. 4, No. 2, 2013, pp. 157-174.
Summary: Intellectual property rights when knowledge is both an output and an input -compulsory licensing -- as an institutional innovation -- economics of compulsory licensing in
product markets -- optimum royalty in the generation of knowledge -- increases the dissemination
of technical knowledge -- mechanism that favours the working of the markets for knowledge -securing appropriate rents to innovators and inventors.
Subject: Compulsory licensing
SNIPER: 2013/02889
Author: Kurts, Ann
Title: Consequences of the US Supreme Court decision on gene patenting
Source: Intellectual Property Forum. No. 95, December 2013, pp. 15-27.
Summary: Analysis of the decision 'Association for Molecular Pathology et al, Petitioners v Myriad
Genetics Inc et al' and consideration of the impact on stakeholders -- at odds with the position of
gene patenting in Australia and Europe -- US Supreme Court decision -- USPTO practice -Myriad's response -- third party views -- SACGHS (Secretary's Advisory Committee on Genetics,
SNIPER Bulletin – March 2014
Page 15 of 92
Health and Society) -- Australian legislation -- Judicial consideration -- Australian reviews and bills - Australian litigation -- European position -- European decisions relating to gene patents -- Myriad
patents in Europe -- international treaties -- Nagoya Protocol
Subject: Genes--patentability
Subject: Patents--law and legislation--United States
Subject: Patenting of life forms--case law--United States
SNIPER: 2013/02462
Author: Supasiripongchai, Noppanum
Title: Copyright exceptions and digital technology in educational institutions in Thailand
Source: IIC: International Review of Intellectual Property and Competition Law. Vol. 44 No. 7,
November 2013, pp. 765-789.
Summary: Copyright exceptions for educational institutions -- obstacle to the development of
lifelong learning and distance education in Thailand -- prevent the use of digital technology in the
Thai educational sector -- they only allow the distribution of educational materials by teachers and
educational institutions to be done in a class or in an educational institution -- cannot be used for
situation where the institutions distribute such materials to distance-learning students via electronic
means outside the institutions -- need for reform to the exceptions for educational institutions to
support the Thai government’s policy of distance education and lifelong learning -- proposal to
extend the scope of the current exceptions to cover the distribution of educational materials outside
the classroom for distance education, must be carried out together with the introduction of some
additional measures to ensure that such changes will only have a limited impact on the incentives
for creativity and the economic interests of copyright owners.
Subject: Fair use (Copyright)--education and training industry--Thailand
Subject: Electronic copyright--education and training industry--Thailand
SNIPER: 2014/00324
Author: Bracha, Oren
Title: Copyright history as history of technology
Source: WIPO Journal. Vol. 5, No. 1, 2013, pp. 45-53.
Summary: Copyright law -- understanding the relationship between the history of copyright and
the history of technology may be unsatisfactory -- alternative framework for combining the two -copyright as a reaction to technological change -- technology as a social phenomenon -- law and
technology as mediums of power -- critical copyright history.
Subject: Copyright--history
SNIPER: 2014/00291
Author: Harms, L. T. C.
Title: Copyright in photographs: a South African perspective
Source: Intellectual Property Journal (Carswell). Vol. 26 No. 1, December 2013, pp. 65-81.
Summary: Infringing the copyright of photographs -- 2011 English decision in Temple Island
Collections Ltd. v. New English Teas Ltd. -- photographs taken by tourists of a red bus passing the
British Houses of Parliament may infringe the copyright of a photograph in a brochure seen by the
tourist -- decision creates the impression that copyright has become too expansive -- South African
perspective and approach to "originality" and "reproduction" -- approach of European Union law
SNIPER Bulletin – March 2014
Page 16 of 92
based on civil law concepts that differ from those of the common law -- suggests that modern UK
judgments have become unreliable precedents elsewhere.
Subject: Copyright infringement--case law--United Kingdom
Subject: Copyright--South Africa
SNIPER: 2014/00331
Author: Birnhack, Michael D.
Title: Copyright pioneers
Source: WIPO Journal. Vol. 5 No. 1, 2013, pp. 118-126.
Summary: Micro copyright legal history -- first layer: microhistory -- second layer: law -- third
layer: copyright -- copyright pioneers -- Nahum Liphshitz (affected an international legal change as
a result of his private interest to protect a book he published) and Meir Kovalsky (activated the law)
-- case study of colonial copyright in Mandate Palestine (1917-1948) -- British law with a local twist
-- an illustrated Hagada -- a relentless agent in Palestine -- establishment of a copyright
relationship between the United States and all British protectorates.
Subject: Copyright--history--Palestine
SNIPER: 2014/00343
Author: Kalashyan, Maria
Title: Counterfeiting in Russia: to fight or not to fight
Source: World Intellectual Property Report. Vol. 28 No. 2, February 2014, pp. 23-26.
Summary: Anti-counterfeiting actions are workable and effective in Russia -- tools available to the
trade mark owner in anti-counterfeiting actions and their effectiveness -- applicable law -- legal
framework for trade mark infringement -- practice of law enforcement authorities -- preventive
measures -- Customs watch -- how to record trade marks with the Customs Register of Intellectual
Property Objects -- in-market watch as a preventive measure -- private investigations to trace the
source of counterfeit goods -- anti-counterfeiting actions -- preparatory steps to legal action -amicable settlement -- cease-and-desist letters -- public proceedings -- administrative and criminal
actions -- public proceedings -- civil action
Subject: Counterfeiting--Russia
Subject: Trade mark infringement--Russia
SNIPER: 2014/00090
Author: Rose, David
Title: Court of Appeal re-casts guidance on stays of patent proceedings
Source: CIPA: the journal, incorporating the 'Transactions', of the Chartered Institute of Patent
Agents. Vol. 42 No. 12, December 2013, pp. 713-715.
Summary: IPCom v HTC -- Court of Appeal -- sought a stay in patent infringement and validity
proceedings pending the outcome of the EPO opposition proceedings -- Supreme Court
recommendation in Virgin v Zodiac -- significance of the Supreme Court decision in Virgin -- Glaxo
v Genentech -- unpredictability in this area -- Court retains a wide discretion -- Genentech
guidelines.
Subject: Patent litigation--Europe
Subject: Patent litigation--United Kingdom
SNIPER Bulletin – March 2014
Page 17 of 92
SNIPER: 2014/00128
Author: Mudge, Brian S.
Title: Covered business method patents: one year on
Source: Intellectual Property Magazine. December 2013-January 2014, pp. 28-30.
Summary: As part of the America Invents Act -- transitional programme for post-grant review of
covered business method (CBM) patents by the Patent Trial and Appeal Board (PTAB) -- an
alternative to litigation for challenging validity of business method patents -- key lessons on how
CBM proceedings can be an effective tool for defending against patent infringement assertions -standard for what patents qualify as a CBM is broad -- CBM trials are instituted at a high rate -- a
broad array of invalidity challenges are available for CBM reviews -- a supplier may be able to file a
CBM petition if its customer is sued for or charged with infringement -- a party may file multiple
petitions for CBM review of the same patent to increase the number of grounds to be considered -motions to stay district court litigation based on CBM petitions are likely to be granted.
Subject: Business methods
Subject: Legal defences
SNIPER: 2014/00192
Author: Adediran, Peter
Title: Crime stoppers
Source: Intellectual Property Magazine. September 2013, pp. 23-24.
Summary: UK Intellectual Property Office (UKIPO) will provide funding to the City of London
Police, to establish and run a new Intellectual Property (IP) Crime Unit -- to tackle online piracy and
other forms of intellectual property crime -- criticism of the unit -- counterfeit trading -- copyright
before the internet -- why is there a need for a specialist unit today? -- conflicting arguments -copyright industry argument -- opposition argument.
Subject: Intellectual property enforcement--United Kingdom
Subject: Electronic copyright--United Kingdom
SNIPER: 2014/00326
Author: Rose, Mark
Title: Criticism in the courtroom: Nichols v Universal (1930) and the determination of infringement
Source: WIPO Journal. Vol. 5, No. 1, 2013, pp. 65-75.
Summary: Case best known for the "pattern test" -- Nichols v. Universal Pictures Corporation, 45
F.2d 119 (2d Cir. 1930) -- represents a framework through which to consider allegations of
infringement -- copyright infringement by non-literal copying of a dramatic work -- pattern test in
relation to plays Abie's Irish Rose and The Cohens and Kellys -- Court held that copyright
protection cannot be extended to the characteristics of stock characters in a story, whether it be a
book, play, or film -- copyright in the play by using similar elements.
Subject: Copyright infringement--United States
Subject: Copyright ownership--culture and entertainment industry
SNIPER: 2014/00200
Author: Matheson, Julia Anne
SNIPER Bulletin – March 2014
Page 18 of 92
Author: Cooke, Whitney
Title: Crowd control
Source: Intellectual Property Magazine. September 2013, pp. 39-40.
Summary: Crowdsourcing in the fashion industry -- crowdsourcing defined -- user-generated
clothing designs or user participation in the selection of fashion designs -- consumers can help
shape a fashion brand's identity -- examples of crowdsourcing in the fashion industry -Threadless.com -- Cut On Your Bias -- Rebecca Minkoff -- Oscar de la Renta -- krush.com -crowdfunding can be used to help launch independent fashion designers -- tech start-up, Luevo,
offers a fashion industry-specific crowdfunding platform -- how crowdsourcing and crowdfunding
ventures could affect the fashion industry -- the impact of social media -- creates an immediate and
dynamic relationship between the consumer and the brand -- exposes brands to potential risks -benefits of crowdsourcing -- effect of crowdsourcing for fashion brands.
Subject: Finance--fashion and design industry
Subject: Business collaboration
Subject: User-generated content
SNIPER: 2013/02895
Author: Friedgut, Martin
Author: Caldwell, Amanda
Author: Cordiner, Tom
Author: Nash, Alan
Author: Reynolds, Simon
Title: Current developments: Australia
Source: Intellectual Property Forum. No. 95, December 2013, pp. 70-79.
Summary: IP Australia's introduction of the 'General eService' functionality -- surge in patent
examination requests -- designs -- trade marks -- Workwear Industries Pty Ltd v Pacific Brands
Workwear Group Pty Ltd -- misleading and deceptive conduct claims -- Miles v Commissioner of
Patents -- patent application refused -- Acohs Pty Ltd v Ucorp Pty Ltd -- copyright -- damages -Vendor Advocacy Australia Pty Ltd v Seitanidis -- similar trading and domain names -- RPL Central
Pty Ltd v Commissioner of Patents -- Spirit Pharmaceuticals Pty Ltd v Mundippharma Pty Ltd -pharmaceutical substances
Subject: Intellectual property databases
Subject: Confusing similarity
Subject: Domain name dispute resolution
Subject: Patents--case law
Subject: Copyright--case law
SNIPER: 2013/02795
Author: Dudek-Urbanowicz, Izabella
Title: The damage caused by blurring and tarnishment
Source: Trademarks Brands and the Internet. Vol. 2 No. 3, 2013, pp. 28-31.
Summary: Distinct differences between blurring and tarnishment -- factors to assess whether a
mark is well known -- protection of marks sought by trade mark owners -- public awareness
SNIPER Bulletin – March 2014
Page 19 of 92
Subject: Trade mark dilution
Subject: Famous trade marks
Subject: Trade mark owners' rights
SNIPER: 2014/00143
Author: Tofalides, Margaret
Author: Collier, Carolyn
Title: Database rights: will they ever be truly global?
Source: Intellectual Property Magazine. December 2013-January 2014, pp. 62-64.
Summary: England and Wales High Court -- Flogas Britain Ltd v Calor Gas Ltd -- Calor Gas found
vicariously liable for its employees' infringement of Flogas' database rights -- awarded damages to
Flogas for loss of profits in connection with Calor's breach of confidence and infringement of
database rights -- legal protection afforded to databases owned or created by residents or citizens
of the European Union (EU) differs substantially to that provided to databases in the rest of the
world -- the United Kingdom and the EU -- database copyright -- sui generis database right -Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) -- the United States - Australia.
Subject: Database rights--case law--United Kingdom
Subject: Intellectual property infringement--liability--United Kingdom
SNIPER: 2014/00199
Author: Grist, Ewan
Title: Design time
Source: Intellectual Property Magazine. September 2013, pp. 37-38.
Summary: Lifecycle of a design from a legal perspective -- three phases -- protecting the design -design protection in the United Kingdom -- key characteristics of each regime -- factors to consider
in deciding on the most suitable means of protection -- territory in which protection is required -duration of protection required -- value of the design to the designer -- exploiting the design -enforcing the design against infringements -- court action against infringers -- customs
enforcement -- other means of enforcement.
Subject: Industrial designs--fashion and design industry--United Kingdom
Subject: Industrial designs--law and legislation--United Kingdom
SNIPER: 2014/00301
Author: Agrawal, Ajay K.
Added author: World Intellectual Property Organization
Title: Diaspora networks, knowledge flows and brain drain
Source: WIPO Economic Research Working Paper. No. 15, January 2014.
Summary: Literature review on how distance, relationships and ethnic ties influences knowledge
flows -- model that relates immigration and the diaspora to knowledge flows -- key study that
reports evidence of a link from the diaspora and knowledge flows to home country manufacturing
productivity -- ways in which intellectual property protection may influence knowledge flow patterns
through incentives (market for ideas) and disincentives (anticommons) -- how diaspora knowledge
SNIPER Bulletin – March 2014
Page 20 of 92
flows and intellectual property may alleviate developing country low-productivity equilibria ('poverty
traps') caused by an underinvestment in specialised human capital.
Subject: Inventors--analysis
Subject: Innovation (Technological)
SNIPER: 2014/00278
Author: Hall, Niamh
Title: DIESEL: it's all in the 'jeans': vintage dispute stretches on
Source: Journal of Intellectual Property Law and Practice. Vol. 9 No. 2, February 2014, pp. 100103.
Summary: Irish Patents Office rejected claim by Diesel Italy that Diesel Ireland stole its mark -Montex Holdings Ltd v Diesel SpA -- trade mark DIESEL -- Diesel Ireland filed application to
register trade mark in Ireland in 1992 -- history of case -- early findings for Diesel Italy of deceptive
similarity -- Irish Trade Marks Act 1963 -- oral evidence considered for the first time -- insufficient
evidence supplied by Diesel Italy -- decision made under legislation which has been repealed -decision appealed to High Court -- dispute to continue.
Subject: Trade mark infringement--case law--Ireland
Subject: Trade mark ownership--case law--Ireland
Subject: Confusing similarity--Europe
Subject: Evidence
SNIPER: 2014/00276
Author: Davies, Colin
Title: Dilution revisited: a heavy handed approach by the CJEU?
Source: Journal of Intellectual Property Law and Practice. Vol. 9 No. 2, February 2014, pp. 97-99.
Summary: Evidence of change in economic behaviour of consumers required to establish dilution
in trade mark opposition case -- Environmental Manufacturing LLP v Office for Harmonisation in
the Internal Market, Société Elmar Wolf -- Article 8(5) of Council Regulation 2007/09 and 40/94 -ability of owner of earlier trade mark ('senior mark') to oppose registration of later mark ('junior
mark') -- trade mark dilution -- legal context of case -- Intel Corp Inc v CPM UK Ltd -- CJEU
confirmed the Intel requirement but there are question marks over the validity of that decision -difficulties for brand owners -- function of trade marks has changed with the decision -- significance
of decision.
Subject: Trade mark dilution--case law--Europe
SNIPER: 2014/00275
Author: Macedo, Charles R.
Author: Kasdan, Michael J.
Author: Jain, Reena
Title: Divided Federal Circuit panel notes the lack of clarity in patent-eligibility law
Source: Journal of Intellectual Property Law and Practice. Vol. 9 No. 2, February 2014, pp. 96-97.
Summary: Computer system invention not patentable -- Accenture Global Services, GmbH v
Guidewire Software, Inc -- US Court of Appeals for the Federal Circuit -- patent-ineligible under 35
SNIPER Bulletin – March 2014
Page 21 of 92
USC section 101 -- legal context -- insurance organization computer program for generating and
organizing tasks -- earlier court decisions -- Judge Lourie's majority decision -- Judge Rader's
dissent -- Federal Circuit divided with regards to 35 USC section 101.
Subject: United States. 35 U.S. Code section 101
Subject: Computer-related inventions--case law--United States
Subject: Computer-related inventions--patentability
Subject: Patentability
SNIPER: 2014/00202
Author: Bradbury, Simon
Title: Does Myriad really make a difference?
Source: Intellectual Property Magazine. September 2013, pp. 43-44.
Summary: Will the Myriad decision make a difference to the parties whose patents are potentially
affected and the biotechnology industry? -- Sir Robin Jacob asked the IPKat blog readership -Myriad's answer -- DNA basics -- what is/is not patentable in the US? -- difference in the practical
world -- is Myriad clutching at straws? -- patentability of naturally occurring DNA sequences outside
of the US -- does Myriad make a difference?
Subject: Genes--patentability
Subject: Patentability--case law
SNIPER: 2013/02715
Author: Sheridan, Jenny Lynn
Title: Does the rise of property rights theory defeat copyright's first sale doctrine?
Source: Intellectual Property Law Review. Vol. 45, 2013, pp. 527-602.
General Note: Originally published in: Santa Clara Law Review, Vol. 52 No. 2, 2012, pp. 297-372.
Summary: Secondary markets for the supply of information through books, discs and tapes -facilitated through recognition of the 'first sale" doctrine -- permits resale of copyrighted work to
occur freely without authorization from copyright owner -- changing distribution practices to
electronic distribution -- example of software industry -- initial distribution structured as limited right
of use -- software licence limited to the immediate buyer -- whether consumers can sell, donate
their digital copies -- court decisions generally upheld validity of the licences -- removes traditional
first sale rights from consumers in these digital products -Subject: Copyright exhaustion--analysis
Subject: Copyright--information technology industry
SNIPER: 2014/00141
Author: Mukerjee, Gaurav
Title: Drinks maker and police collide
Source: Intellectual Property Magazine. December 2013-January 2014, p. 58.
Summary: Manufacturer of the liquor Jägermeister -- High Court of Madras -- a writ petition
against the Tamil Nadu Police for removal of signage bearing images of its product and registered
trade marks in relation to a 'don't drink and drive' campaign -- Tamil Nadu Police were making
unauthorised use of images of its products and its registered trade marks -- implying that accidents
SNIPER Bulletin – March 2014
Page 22 of 92
occur/could occur on account of consumption of its product -- Mast-Jägermeister dedicated to
cause of 'responsible drinking' -- requests to remove objectionable signage -- signage was not
removed -- sufficient cause of action for Mast-Jägermeister to sue the Tamil Nadu Police for
infringement -- intention was to have the objectionable signage removed -- litigation had no
pecuniary inclinations -- action was successful.
Subject: Trade mark infringement--case law--India
Subject: Trade marks--law and legislation--India
SNIPER: 2014/00224
Author: Siebrasse, Norman
Title: The duty to disclose "the invention": the wrong tool for the job
Source: Intellectual Property Journal (Carswell). Vol. 25 No. 3, November 2013, pp. 269-301.
Summary: Duty of good faith disclosure -- not a duty to disclose the invention -- Sildenafil decision
-- Supreme Court of Canada held Pfizer's Viagra patent to be invalid for failure to disclose "the
invention" -- no explicit definition of "the invention" was provided -- new, useful, non-obvious
contribution to knowledge which is disclosed in the patent -- unsound as a matter of law and policy
-- implies that if any important claim in a patent is invalid, all the claims will be invalid -- Section 58
of the Patent's Act -- doctrinal basis for the Court's decision -- case raises questions relating to the
duty of good faith disclosure, not a duty to disclose the invention -- subsequent cases.
Subject: Patent disclosure--case law--Canada
Subject: Patent disclosure--analysis
SNIPER: 2014/00325
Author: Johns, Adrian
Title: The ecological origins of copyright scepticism
Source: WIPO Journal. Vol. 5 No. 1, 2013, pp. 54-64.
Summary: Natural law of information -- copyright scepticism -- reprinting as practice and principle.
Subject: Copyright--history
SNIPER: 2014/00274
Author: Wilkof, Neil J.
Title: The econometrics of IP: the case of patents and innovation
Source: Journal of Intellectual Property Law and Practice. Vol. 9 No. 2, February 2014, p. 95.
Summary: Statistical analysis of Intellectual Property (IP) matters -- little empirical research
performed by IP scholars -- dominance of economists in this area of IP -- analysis of innovation
and IP -- study by Shai Bernstein -- measurement of innovation -- count of patents granted as a
measure of innovative output -- tally of citations an approved patent receives -- limitations of
restricting study to patents as an indicator of innovation -- failure to include trade secrets may
simply be the difficulty in their measurement -- suggestion that economists and the IP community
need to meet more often to better study and measure innovation and IP.
Subject: Intellectual property--statistics
Subject: Patents--statistics
Subject: Innovation (Technological)--statistics
SNIPER Bulletin – March 2014
Page 23 of 92
SNIPER: 2014/00295
Author: Wunsch-Vincent, Sacha
Added author: World Intellectual Property Organization
Title: The economics of copyright and the internet: moving to an empirical assessment relevant in
the digital age
Source: WIPO Economic Research Working Paper. No. 9, July 2013.
Summary: Economics of copyright, the baseline model before digitisation -- effects of the
copyright system: a conceptual framework -- baseline impacts on the baseline copyright economics
model -- digital content share and growth -- digital broadband content business models -- what the
economic literature produced so far and what data issues remain obstacles -- identifies three major
areas where change has taken place, potentially affecting the economics of copyright -- how
content is created -- how it is accessed -- how copyrights are administered.
Subject: Electronic copyright
Subject: Copyright systems
Subject: Internet
SNIPER: 2014/00135
Author: Lainson, Daphne C.
Author: Pei, Nancy P.
Title: Enhanced IP rights in Canada
Source: Intellectual Property Magazine. December 2013-January 2014, p. 43.
Summary: Canadian government and the European Union (EU) announced an agreement in
principle to a Comprehensive Economic and Trade Agreement (CETA) -- CETA will change three
areas of protection for pharmaceuticals -- innovator right of appeal -- patent terms restoration
(PTR) -- data protection -- other provisions in CETA.
Subject: International trade--Canada
Subject: International trade—Europe
SNIPER: 2014/00186
Author: Lewin, Harley I.
Title: The e-revolution
Source: Intellectual Property Magazine. September 2013, pp. 6-7.
Summary: Social media has empowered the consumer -- mobile computing -- develop a
comprehensive approach to managing the brand and message on social media -- understanding
the framework developing with regard to brands and the related enterprise in the context of social
media -- factors and events that provide advantages to a brand also increase the risk of brand
damage and long term harm to the enterprise -- media strategy -- educate employees -- establish
archiving methods -- be open and transparent -- integrate risk assessment -- governance must
support a comprehensive strategy -- select and identify company-wide the groups who you want to
build the brand -- be prepared to suffer some brand misuse.
Subject: User-generated content
Subject: Brand management
SNIPER Bulletin – March 2014
Page 24 of 92
SNIPER: 2013/02955
Author: Manu, Thaddeus
Title: Essential medicines and the complexity of implementing nationally based compulsory
licensing: on the need for a regional system of compulsory licensing in sub-Saharan Africa
Source: European Intellectual Property Review. Vol. 36 No. 1, 2014, pp. 39-52.
Summary: Pharmaceutical patents under the TRIPS Agreement -- essential medicines very
expensive for least developed countries (LDCs) -- limiting supply for the majority of patients in subSaharan Africa (SSA) -- feasibility of a regional system for compulsory licensing in order to
manufacture and distribute essential medicines in SSA -- compulsory licensing by SSA countries
will not provide a suitable means of procuring essential medicines in view of their individual
economic and political constraints -- inability of LDCs in SSA to obtain compulsory licences -- legal,
institutional and political pressures as major obstacles to the implementation of the WTO
Paragraph 6 Programme -- regional system for compulsory licensing that is arguably compliant
with TRIPS is proposed -- regional arrangement for a pharmaceutical compounding programme as
a pooled manufacturing scheme to distribute essential medicines within SSA recommended.
Subject: Agreement on Trade-Related Aspects of Intellectual Property Rights (1994 April 15)
Subject: Compulsory licensing--Africa, Sub-Saharan
Subject: Pharmaceutical manufacturing--Africa, Sub-Saharan
SNIPER: 2014/00268
Author: Pastor, Elena
Title: EU and intellectual property: new year, new challenges and new resources
Source: IPR Helpdesk Bulletin. No. 12 January-February 2014, pp. 2-4.
Summary: European Commission summary of issues relating to intellectual property within
Europe in 2014 – the establishment of an updated copyright regime for the 'digital age' to address
the following areas: cross-border access and portability of online content services; user-generated
content and micro-licensing; online availability of European films; and the licensing required for
text- and data-mining, which relates to the process of extracting information through automated
scanning of text or datasets, used widely for scientific research -- creation of a single patent for the
European market -- Unified Patent Court (UPC) Agreement -- review of the trade mark system -protection of trade secrets -- common definition of trade secrets -- strengthening the conditions and
procedures for EU customs action.
Subject: Intellectual property systems--Europe
Subject: Intellectual property systems--reform--Europe
SNIPER: 2014/00127
Author: Morton, Jeremy
Author: Dorrity, Fionnuala
Title: EU customs enforcement of IP rights: the latest figures
Source: Intellectual Property Magazine. December 2013-January 2014, pp. 26-27.
Summary: European Commission (EC) published its annual report on European Union (EU)
customs enforcement of intellectual property rights for 2012 -- EU member states must send the
European Commission certain information on customs applications and detentions on a regular
basis -- EC uses the information to compile its report -- statistical information about detentions
SNIPER Bulletin – March 2014
Page 25 of 92
made under customs procedure at EU external borders -- key outcomes for 2012 -- intellectual
property rights relied on -- outcomes following detention -- most effective customs authorities -new European Customs Regulation -- extension of protection -- compulsory simplified procedure -small consignments -- costs -- exchange of information -- goods in transit.
Subject: Customs
Subject: Intellectual property enforcement
SNIPER: 2014/00304
Author: Overwalle, Geertrui van
Title: Exclusive ownership versus open commons: the case of gene patents
Source: WIPO Journal. Vol. 4, No. 2, 2013, pp. 139-156.
Summary: US Court of Appeals for the Federal Circuit (CAFC) Myriad case -- role of knowledge
and patent protection in human genomic science -- individual ownership -- concept -- "blocking
patents" -- multiple and collective ownership -- patent pools -- comparative illustration of the
different licenses needed in the absence or presence of a patent pool -- clearing houses -- open
source licenses -- intermediate conclusion -- open commons -- provisions and consumption of the
Genome Commons.
Subject: Patent licensing
Subject: Genes--patentability
Subject: Patenting of life forms--case law--United States
SNIPER: 2014/00298
Author: Fink, Carsten
Author: Khan, Mosahid, 1969Author: Zhou, Hao
Added author: World Intellectual Property Organization
Title: Exploring the worldwide patent surge
Source: WIPO Economic Research Working Paper. No. 12, September 2013.
Summary: Trends in worldwide patent filings -- historically high levels -- understanding what is
behind the growth -- analysis of global patenting trends utilising comprehensive patent data -evaluate how the patent system can cope with the increasing flow of applications -- subsequent
patent filings, additional filings of the same invention, mostly in additional countries, contributed
considerably to the growth in filings worldwide -- can growth in specific technologies explain the
surge in filings.
Subject: Patent filing--statistics
Subject: Intellectual property management--statistics
SNIPER: 2014/00193
Author: Maggioni, Ilaria
Title: Fact or fiction
Source: Intellectual Property Magazine. September 2013, pp. 25-26.
Summary: United States Court of Appeals for the Second Circuit -- vacated the lower court's class
action certification in the oldest case of the Google Books litigation, the Authors Guild case --
SNIPER Bulletin – March 2014
Page 26 of 92
decertification is not a surprise -- on remand, the district court now faces a high burden on fair use
-- outlook for settlement in the Googles Books case -- other practical implications for Google.
Subject: Fair use (Copyright)--case law--United States
Subject: Copyright litigation--United States
SNIPER: 2014/00273
Author: Pérez Cano, Carmen
Author: Villén Altamirano, José
Title: Factors that influence the propensity to patent
Source: Engineering Management Journal. Vol. 25, No. 3, September 2013, pp. 27-38.
Summary: Decision framework on the practice of engineering management -- protection of
product and process innovation through patents -- study of the influence that innovation effort of a
company and degree of codification of the innovations has on the propensity to patent -- analysis
of how the sector that the company is engaged in and the type of innovation affect these
relationships -- conclude that both the innovation effort of a company and the degree of codification
of the innovations have a positive influence on the propensity to patent -- influence is greater in
some sectors of activity -- greater for product and radical innovations.
Subject: Industrial research and development--management
Subject: Innovation (Technological)--management
Subject: Intellectual property management
SNIPER: 2014/00212
Author: Ng, Victor
Title: Fair game?
Source: Intellectual Property Magazine. September 2013, pp. 65-66.
Summary: Copyright reform is focused on proposals for a 'fair-use' exception to infringement -Australian Law Reform Commission (ALRC) inquiry on copyright law reform in Australia -- current
exceptions to infringement -- proposed 'fair use' reforms -- arguments for fair use -- arguments
against fair use -- Australian Greens party introduced the 'Copyright Legislation Amendment (Fair
Go for Fair Use) Bill 2013' into parliament -- Bill includes the proposed introduction of a fair-use
exception into the Copyright Act -- ALRC is expected to continue advocating for fair use.
Subject: Copyright--reform--Australia
Subject: Fair use (Copyright)--Australia
SNIPER: 2014/00131
Author: Assim, Gary
Author: Joyce, Jo
Title: Fame: I'm going to live forever
Source: Intellectual Property Magazine. December 2013-January 2014, pp. 36-37.
General Note: Second article is a series of two. See also: 2013/02506
Summary: Personalities are big business -- David Beckham -- Image Register created by
Guernsey -- allows for the registration of a personality right along with images associated with that
personality -- five categories of personality rights that an applicant can use -- once the personality
SNIPER Bulletin – March 2014
Page 27 of 92
right is registered you can then register the image rights associated with that personality -- benefits
in registering an image right -- major disadvantage raised against the Guernsey legislation -territorial right enforceable only in Guernsey -- much wider scope than first thought -- sales over
the internet -- products -- United Kingdom still resists developing laws related to image rights -- real
test will come when a Guernsey registered image right is litigated in England.
Subject: Personality rights--law and legislation--Guernsey
Subject: Personality rights--law and legislation--United Kingdom
SNIPER: 2014/00198
Author: Hoy, Ruth
Author: Kay, Rebecca
Title: Fashion face off
Source: Intellectual Property Magazine. September 2013, pp. 35-36.
Summary: Many global brands seeking fresh opportunities in emerging markets -- intellectual
property (IP) risks for a fashion business -- key areas retailers should focus on -- essential to
become familiar with local IP laws -- Brazil case study -- trade marks -- copyright -- industrial
designs -- patents -- indication of a source -- unfair competition -- court and registry system -Brazilian Patent and Trademark Office (PTO) -- civil procedures -- criminal action -- customs
corruption -- fashion business issues -- counterfeits -- trade mark squatters -- exploitation of IP
rights -- minimising the risks.
Subject: Intellectual property rights--fashion and design industry--Brazil
Subject: Brand management--Brazil
SNIPER: 2014/00197
Author: Drangel, Jason M.
Author: Sands, Ashly E.
Title: The fashion police
Source: Intellectual Property Magazine. September 2013, p. 34.
Summary: Counterfeiting business is often run by criminal or terrorist organisations -- brand
owners expend substantial human and financial resources enforcing their rights and combating
counterfeiters -- education programs on how to identify counterfeit products -- uFaker was
designed as a means to encourage consumers to report counterfeits they come across -- enable
consumers to send reports directly to brand owners -- uFaker grants discount rewards to
consumers for confirmed report submissions -- private investigators also have the ability to report
counterfeits to brand owners -- uFaker is also designed to be used by brand and licensee sales
teams and employees -- information is the key ingredient in any investigation -- uFaker
investigation management and case tracking database -- tool to share and manage this information
-- customs data -- allows brand owners to monitor the importation of potentially counterfeit goods.
Subject: Counterfeiting
Subject: Intellectual property enforcement
SNIPER: 2014/00309
Author: Gloglo, Midjohodo Franck
Title: Finding the law: the case of copyright and related rights enforcement in the digital era
SNIPER Bulletin – March 2014
Page 28 of 92
Source: WIPO Journal. Vol. 4 No. 2, 2013, pp. 220-231.
Summary: Fundamentals for copyright protection -- definition of copyright -- meaning of copyright
exclusivity -- exclusive commercial use -- doctrine of fair use of copyrighted works -- purpose and
character of the use -- nature of the copyrighted work -- amount and substantiality of the portion
used -- effect of the use upon the owner's potential business -- use of copyrighted works on the
internet -- protecting the economic rights of copyrighted works in the digital era -- challenges posed
by new technologies for copyright protection -- difficulty in proving a connection between
technology providers and online infringers of copyrighted works -- consistent refusal to impose
liability on technology providers -- need to push the online copyrights enforcement movement
forward -- reasons for failure to address online piracy of copyrighted works -- digital rights
management.
Subject: Copyright owners' rights
Subject: Copyright enforcement
SNIPER: 2014/00055
Author: Fraser, Hamish
Author: Merlino, Connie
Author: Chwu, Ted
Author: Fennell, Gareth
Author: Genders, Rob
Author: Sreedharan, Sunita K.
Author: Collins, John
Title: Five approaches to software inventions
Source: Managing Intellectual Property. No. 235, December 2013-January 2014, pp. 30-35.
Summary: Five jurisdictions with different approaches to the patentability and protection of
software inventions -- Australia, China, India, the United States and the European Patent Office
(EPO) -- status of software invention patentability -- issues considered when deciding whether a
software invention is patentable -- key cases involving software patents -- advice for companies
looking to protect a software-related invention -- new laws or regulations -- issues they will deal
with -- filing trends for software patents.
Subject: Computer-related inventions--patentability
Subject: Computer-related inventions--case law
SNIPER: 2014/00124
Author: Takase, Kensaku
Author: Suga, Ayako
Title: Flat-fee licensing system falls flat
Source: Intellectual Property Magazine. December 2013-January 2014, p. 20.
Summary: Japan's copyright collecting organisation, Japanese Society for Rights of Authors,
Composers and Publishers (JASRAC) -- dealt a significant blow by the Tokyo High Court -- held it
acted in an anti-competitive manner -- court ruled that JASRAC's flat-fee system significantly
inhibited new entry to the music copyright collecting business -- JASRAC was the only copyright
collecting society in Japan -- copyright owners and users called for competition in the industry -law was introduced to allow competing collecting organisations -- e-License started providing
SNIPER Bulletin – March 2014
Page 29 of 92
collection services -- JASRAC's flat-fee system -- Japan Fair Trade Commission's (JFTC) cease
and desist order -- e-License succeeds -- impact on the music industry.
Subject: Copyright licensing societies--Japan
Subject: Competition (Economics)--Japan
SNIPER: 2014/00132
Author: Ridgway, Mark
Author: Ward, Annsley Merelle
Title: Forum shopping in the UPC
Source: Intellectual Property Magazine. December 2013-January 2014, p. 38.
Summary: Many commentators believe forum shopping will be more pronounced under the new
European Unified Patent Court (UPC) -- patentees will have a substantial degree of control as to
where, and in which, courts they commence a claim and/or seek an injunction -- question will be
how to get maximum leverage against a defendant -- different judges interpreting the same rules
will often produce different results -- courts of the UPC will be inherently competitive, so as to
establish themselves as the 'best' and attract business -- problems arise for defendants, who will
have no choice as to where they are sued -- will have some scope for objecting to the competence
of the patentee's chosen division -- pre-emptive steps a defendant might take.
Subject: Forum shopping--Europe
Subject: Patent litigation--Europe
SNIPER: 2013/02713
Author: Mitten, Matthew J., 1959Title: From Dallas Cap to American Needle and beyond: antitrust law's limited capacity to stitch
consumer harm from professional sports club trademark monopolies
Source: Intellectual Property Law Review. Vol. 45, 2013, pp. 433-464.
General Note: Originally published in: Tulane Law Review, Vol. 86 No. 4, 2012, pp. 901-932.
Summary: Analysis of the intersection of trade mark and antitrust law -- historical perspective -role in the development of the current multibillion dollar professional sports trade mark
merchandising industry -- collective trade mark licensing by a professional sports league -consumer welfare effects on sports fans
Subject: Trade mark licensing--tourism and recreation industry--United States
Subject: Competition law--tourism and recreation industry--United States
SNIPER: 2014/00314
Author: Dessemontet, François
Title: From exhaustion to enhancement: recounting four decades of research and teaching in
intellectual property
Source: WIPO Journal. Vol. 4, No. 2, 2013, pp. 254-259.
Summary: Association for the Advancement of Teaching and Research in Intellectual Property
(ATRIP) -- role of the Association -- initiative of the World Intellectual Property Organization
(WIPO) -- influence by Dr Árpád Bogsch, WIPO Director General -- need for intellectual property
law-culture -- culture cultivated by universities and other scientific institutions -- formation of
ATRIP's Constitution.
SNIPER Bulletin – March 2014
Page 30 of 92
Subject: International Association for the Advancement of Teaching and Research in Intellectual
Property
Subject: Intellectual property industry
Subject: Research--intellectual property industry
SNIPER: 2014/00219
Author: Durden, Jayne
Title: From the inside out
Source: Intellectual Property Magazine. September 2013, pp. 82-84.
Summary: Outsourcing as an integral part of intellectual property (IP) management strategies -market for outsourced IP management services has developed from a 'one size fits all' model to a
more collaborative, consultative approach, with solutions tailored to meet the differing requirements
of individual clients -- key to developing a successful relationship -- finding the best solution -critical factors which influence how successful the relationship is -- management support -outsourcing 'champion' -- transparency -- 'outsourcing' has erroneously become synonymous with
'offshoring' -- combination of offshoring and onshoring, may be the preferred solution -- best
practices.
Subject: Outsourcing
Subject: Intellectual property management
SNIPER: 2014/00218
Author: Powell, Nikki
Title: Full force
Source: Intellectual Property Magazine. September 2013, pp. 79-80.
Summary: United Kingdom Court of Appeal -- Force India Formula One Team Ltd v Aerolab SRL
and Ors -- decision offers guidance for parties negotiating confidentiality clauses in commercial
agreements -- guidance for those considering commencing a claim for misuse of confidential
information -- background to the case -- the contract -- the trial -- the appeal.
Subject: Confidentiality agreements--case law--United Kingdom
Subject: Trade secrets--United Kingdom
SNIPER: 2014/00210
Author: Miller, Judith
Author: Sica, Cynthia
Author: Selig, Danielle
Title: Future of franchising
Source: Intellectual Property Magazine. September 2013, pp. 61-62.
Summary: Australia's franchising industry is rapidly growing -- Australian franchising regulations -Franchising Code of Conduct is a prescribed, mandatory industry code -- purpose is to regulate the
ongoing relationship between franchisees and franchisors -- Australian government appointed an
industry expert to review the code and make recommendations to ensure the franchising sector
was operating in the best interests of its participants -- key changes and impact on franchisors -disclosure obligations -- franchisor failure -- good faith obligations -- transfer, renewal or end of a
franchise agreement -- dispute resolution -- enforcement -- what next?
SNIPER Bulletin – March 2014
Page 31 of 92
Subject: Franchising--law and legislation--Australia
Subject: Franchising--reform--Australia
SNIPER: 2014/00313
Author: Rangel-Ortiz, Horacio
Title: The Geneva meetings: Bogsch, Ledakis and ATRIP
Source: WIPO Journal. Vol. 4, No. 2, 2013, pp. 248-253.
Summary: International IP organisations -- background of the founders of ATRIP (Association for
the Advancement of Teaching and Intellectual Property) -- establishment of the Association -involvement by Árpád Bogsch, then Director General of the World Intellectual Property
Organization (WIPO) -- professors and researchers from developed and developing countries -from the Geneva meetings (1979, 1989 and 1981) to the present -- IP teachers and researchers in
sister organisations -- relevance of Inter-American Association of Intellectual Property (ASIPI) and
INTA (United States Trademark Association).
Subject: International Association for the Advancement of Teaching and Research in Intellectual
Property
Subject: Intellectual property industry
Subject: Research--intellectual property industry
SNIPER: 2013/02797
Author: Fuller, Stuart
Title: Give your domain portfolio a .springclean
Source: Trademarks Brands and the Internet. Vol. 2 No. 3, 2013, pp. 34-36.
Summary: ICANN soon to begin the generic top level domain program to revolutionise the internet
-- over the next three years, up to 20 new domain suffixes a week will be introduced -- need to
have a formal strategy to monitor brand abuse online -- cybersquatting -- a proper strategy -- five
key elements of what, when, why, how and who
Subject: Domain names
Subject: Domain name registration
Subject: Brand management
SNIPER: 2014/00120
Author: Curry, John Austin
Title: Goodlatte bill is not the answer to the patent troll problem
Source: Intellectual Property Magazine. December 2013-January 2014, pp. 13-14.
Summary: United States Congress on the brink of enacting legislation -- Congressman
Goodlatte's Innovation Act -- proposed solution to the patent troll problem is to make it harder to
enforce patent rights in litigation -- Goodlatte bill indiscriminately treats all plaintiffs as patent trolls - would make patent rights harder to enforce in litigation by imposing a variety of rules, most
notably in pleading requirements and discovery limits -- there would be an increased number of
disputes between parties in patent infringement cases resulting in more disputes for the courts to
resolve -- patent infringement litigation would be less efficient and more expensive -- Goodlatte bill
attempts to end abusive litigation by raising the cost of litigation for the plaintiff -- fundamental
problems with the solution.
SNIPER Bulletin – March 2014
Page 32 of 92
Subject: Patent trolls--United States
Subject: Patent systems--law and legislation--United States
SNIPER: 2014/00280
Author: Rosati, Eleonora
Title: Google Books' Library Project is fair use
Source: Journal of Intellectual Property Law and Practice. Vol. 9 No. 2, February 2014, pp. 104106.
Summary: Victory for Google as Library Project deemed to be protected by fair use -- The Authors
Guild, Inc and Others v Google Inc -- Judge Chin summary judgment -- 17 USC s 107 -- factors
that need to be considered for a finding of fair use of a copyright-protected work -- scope of
Google's activities -- background to case -- benefits of the Library Project -- analysis of fair use
factors with respect to Google's activities -- Authors Guild intends to appeal -- decision is relevant
outside the United States.
Subject: Google Library Project
Subject: Fair use (Copyright)--case law--United States
Subject: Electronic copyright--United States
SNIPER: 2014/00139
Author: Jafri, Safdar
Title: A guide to protecting foreign IPR in Iran
Source: Intellectual Property Magazine. December 2013-January 2014, pp. 52-53.
Summary: History of Iran's legal framework for the protection of trade marks and patents -- issues
foreign intellectual property (IP) owners confront while protecting and enforcing those rights in Iran
-- protection of trade marks associated with alcoholic drinks is a major challenge in Iran -- as an
Islamic country, alcoholic trade marks are banned -- most owners of such trade marks give up on
protecting their brands in Iran thinking of it as a futile exercise -- allows trade mark predators to
exploit the situation and hijack these brands -- non-use of trade marks in Iran -- co-existence
agreements -- trade mark hijacking by local agents and distributors -- parallel imports are a matter
of concern in Iran -- .ir domain name hijacking of famous foreign brands has become
commonplace in Iran.
Subject: Intellectual property rights--Iran
Subject: Trade mark owners' rights--Iran
SNIPER: 2014/00060
Author: Koenraad, Hidde
Title: A guide to the new EU Anti-Piracy Regulation
Source: Managing Intellectual Property. No. 235, December 2013-January 2014, pp. 60-62.
Summary: European Commission announced a new Anti-Piracy Regulation -- repeals the current
version -- core of the Regulation remains the same -- new Regulation introduces some changes -provide for a more efficient procedure -- lower costs for rights owners -- question of how to deal
with goods in transit remains outside the Regulation -- rights owners should review the changes to
see where they might be used to their advantage.
Subject: Piracy--law and legislation--Europe
SNIPER Bulletin – March 2014
Page 33 of 92
Subject: Customs--procedure--Europe
SNIPER: 2014/00133
Author: Murnane, Graham
Title: Happy birthday EPC
Source: Intellectual Property Magazine. December 2013-January 2014, pp. 39-41.
Summary: Celebrations to mark the 40th anniversary of the European Patent Convention (EPC) -developments in the 40-year history of the EPC -- what makes a successful patent system? -unitary patent and the Unified Patent Court (UPC) -- innovation in Europe -- what has changed for
users of the EPC? -- what do users expect to see in the future? -- changing times for patent
examiners -- backlogs need resources.
Subject: European Patent Convention (1973 October 5)
Subject: Patent systems
SNIPER: 2014/00345
Author: Baud, Emmanuel
Author: Kay, Randy
Title: Harmonizing European legislation on protection of trade secrets
Source: World Intellectual Property Report. Vol. 28 No. 2, February 2014, pp. 31-33.
Summary: European Commission proposal for a Directive to protect trade secrets and
confidential business information against misuse by third parties -- background to the proposal -unequal protection of trade secrets across the EU -- main features of the proposed Directive -homogenous definitions of trade secrets and illicit conduct -- limitation period -- available measures
-- preserving confidentiality -- limits of the proposition -- next steps -- Council of Ministers and the
European Parliament to determine whether the proposed Directive is adopted -- could enter force
by the end of 2014.
Subject: Trade secrets--law and legislation--Europe
Subject: Harmonisation of laws--Europe
SNIPER: 2014/00142
Author: Mellucci, Fulvio V.
Author: Ruggiero, Paola
Title: Has the 'Budweiser' bubble burst?
Source: Intellectual Property Magazine. December 2013-January 2014, pp. 60-61.
Summary: Anheuser-Bush v Budejovjcky Budvar -- Italian Supreme Court -- proceedings that
have had both parties litigating for use of the expression 'Budweiser' for their beers -- last
developments of Italian case law -- previous decisions issued by various Italian courts in the past
decade -- the story -- the recent decision issued by the Supreme Court -- questioned if 'Budweiser'
is an appellation of origin.
Subject: Geographical indicators--Italy
Subject: Trade mark infringement--case law--Italy
SNIPER: 2014/00330
SNIPER Bulletin – March 2014
Page 34 of 92
Author: Kongolo, Tshimanga
Title: Historical developments of industrial property law in Africa
Source: WIPO Journal. Vol. 5 No. 1, 2013, pp. 105-17.
Summary: Industrial property systems in Africa during the colonial era -- African industrial property
laws after independence until the 1990s -- evolution of two African regional intellectual property
organisations -- OAPI (Organisation Africaine de la Propriété Intellectuelle (African Intellectual
Property Organization)) -- ARIPO (African Regional Industrial Property Organization) -- selected
African national industrial property laws after independence -- African countries and the
international IP framework's historical connection -- IP legislation bought to African through
colonisation.
Subject: Intellectual property systems—history--Africa
Subject: Intellectual property offices--Africa
SNIPER: 2014/00323
Author: Kretschmer, Martin
Author: Bently, Lionel, 1964Author: Beazley, Ronan
Title: The history of copyright history (revisited)
Source: WIPO Journal. Vol. 5, No. 1, 2013, pp. 35-44.
Summary: Copyright history -- history of legal, particularly proprietary, mechanisms for the
regulation of the reproduction and distribution of cultural products -- historiography of copyright -international framework of treaties -- Berne Convention for the Protection of Literary and Artistic
Works (Berne Convention) of 1886 -- revisiting privilege and property -- digital archive Primary
Sources on Copyright (1450-1900) -- funded by the UK's Art and Humanities Research Council
(AHRC) -- contains 550 documents, 10,000 pages in facsimile, transcription and translation with
accompanying editorial commentary of about 500,000 words -- open access edited collection to
accompany the digital resource: Privilege and Property: Essays on the History of Copyright -- the
Primary Sources archive -- scope of inquiry.
Subject: Copyright--history
Subject: Copyright--research
SNIPER: 2014/00206
Author: Kilman, Larry
Title: Hot off the press
Source: Intellectual Property Magazine. September 2013, pp. 52-54.
Summary: Issue of content aggregators -- publishers contend that it is wrong for Google to make
money from displaying ads alongside links to publishers' content, without sharing the revenue with
the producers of that content -- global issues -- World Association of Newspapers and News
Publishers (WAN-IFRA) summit -- WAN-IFRA organised its first IP and Copyright Forum at the
World Newspaper Congress and World Editors Forum held in Bangkok -- publishers rely on such
meetings for ideas, strategies and answers -- launched a project to create guidelines to better
ensure that users of news sites are protected from unauthorised collection of data -- issue of data
leakage is a growing issue in the online world -- hot topics -- leveraging legitimate collection and
interpreting the data -- world press trends -- sponsored content on digital platforms -- impact of
technology -- what the future holds.
Subject: Culture and entertainment industry--trends
SNIPER Bulletin – March 2014
Page 35 of 92
Subject: Electronic copyright
SNIPER: 2013/02464
Author: Feng, Shujie
Title: How are unregistered trademarks protected in China
Source: IIC: International Review of Intellectual Property and Competition Law. Vol. 44 No. 7,
November 2013, pp. 815-830.
Summary: Need to fight piracy and the passing off of unregistered marks in China -- China has
adopted the same regime as most civil law countries for the protection of unregistered trade marks
-- bona fide principle against trade mark piracy -- passing off action against imitation -- protection of
well-known trade marks against both piracy and imitation -- but still there are problems with the
protection of unregistered marks in China -- insufficient legal framework with defects in trade mark
legislation -- conservative attitude in interpretation and application of the law -- effect of recent
revisions to the Peoples' Republic of China Trademark Law
Subject: Unregistered trade marks—China
Subject: Famous trade marks--China
Subject: Passing-off--China
SNIPER: 2013/02956
Author: Hull, John
Title: How (not to) use non-disclosure agreements: a note on Dorchester Project Management v
BNP Paribas Real Estate Advisory and Property Management
Source: European Intellectual Property Review. Vol. 36 No. 1, 2014, pp. 53-57.
Summary: Non-disclosure agreements -- dangers of using these agreements -- confidentialdisclosure agreement -- Dorchester Project Management v BNP Paribas Real Estate Advisory and
Property Management -- difficulty over the drafting and interpretation of the agreement -- terms of
agreement -- misuse of the information.
Subject: Confidentiality agreements--case law--United Kingdom
Subject: Trade secrets--United Kingdom
SNIPER: 2014/00058
Author: Comer, Steve
Author: Yakura, Chie
Title: How to use product-by-process claims to your advantage
Source: Managing Intellectual Property. No. 235, December 2013-January 2014, pp. 54-56.
Summary: Recent decision by Japan's Intellectual Property (IP) High Court -- guidance on how to
construe product-by-process claims -- court held that the scope of such claims should generally be
limited to products made by that process -- previously many Japanese courts held that such claims
cover all identical products regardless of how it was made -- important implications in both patent
prosecution and litigation -- patentees should try to claim the invented product as well as the
process.
Subject: Patent claims--case law--Japan
Subject: Patent litigation--Japan
SNIPER Bulletin – March 2014
Page 36 of 92
SNIPER: 2013/02798
Author: McElwaine, John
Author: McGrady, Paul
Title: ICANN: growing pains of Internet domain expansion
Source: Trademarks Brands and the Internet. Vol. 2 No. 3, 2013, pp. 37-39.
Summary: ICANNS's (Internet Corporation for Assigned Names and Numbers) management of
the address system for the Internet -- increasing criticism and scrutiny over its new generic top
level domain program -- what can organisations and trade mark owners do to prevent the possible
destabilisation of the Internet -- trade mark owners weigh in on new gTLDs -- new gTLD program is
launched, but concerns persist -- governance, costs and hope
Subject: Domain names
Subject: Domain name registration
Subject: Trade mark owners' rights
SNIPER: 2014/00270
Author: Office for Harmonization in the Internal Market (Trade Marks and Designs)
Title: Impact of intellectual property rights intensive industries in the European Union
Source: IPR Helpdesk Bulletin. No. 12 January-February 2014, pp. 5.
General Note: See also: Intellectual property rights intensive industries: contribution to economic
performance and employment in the European Union (2013/02256).
Summary: Joint study produced by the Office for Harmonization in the Internal market (OHIM) and
the European Patent Office (EPO) revealed the extent of the contribution made by intellectual
property rights industries to the EU economy -- correlated IP rights to industries -- study details the
extent to which IP is present in the EU's economy -- intangible assets very important for innovative
companies -- no policy recommendations -- provides evidence-based data on the impact, role, and
public perception of intellectual property in the economy of the European Union – follow-up study
looking at the contribution of IPR-intensive industries at firm level in the EU, to be released in 2014.
Subject: Intellectual property--research--Europe
Subject: Economic development--research--Europe
Subject: Industrial research and development--Europe
SNIPER: 2014/00222
Author: Hudson, Emily
Title: Implementing fair use in copyright law: lessons from Australia
Source: Intellectual Property Journal (Carswell). Vol. 25 No. 3, November 2013, pp. 201-229.
Summary: Copyright reform debates in Commonwealth countries -- whether to adopt an openended fair use exception similar to that found in the United States -- respective merits of general
and specific provisions -- suggests future reform processed using Australian developments -Australian Law Reform Commission review on Copyright and the Digital Economy -- case study on
Australia's bespoke hybrid exception s200AB -- factors suitable for implementation of fair use.
Subject: Fair use (Copyright)--reform--Australia
Subject: Copyright--law and legislation--Australia
SNIPER Bulletin – March 2014
Page 37 of 92
SNIPER: 2014/00050
Author: Germany. Bundesgerichtshof
Title: Implied transfer of priority right within a group of companies: vehicle window
Source: Journal of Intellectual Property Law and Practice. Vol. 8 No. 12, December 2013, pp. 961963.
Summary: Assignment of the right to claim priority -- Case No. X ZR 49/12 -- German Federal
Court of Justice (BGH) -- configuration for joining a vehicle window to another section -- BGH
rejected view that requirements set out in Art. 72 EPC need to be applied to the transfer of the right
to claim priority -- grounds of decision.
Subject: Patent priority--case law--Germany
Subject: Patent assignment--case law--Germany
SNIPER: 2013/02888
Author: Levy, Geoffrey
Title: In conversation with Keith Callinan
Source: Intellectual Property Forum. No. 95, December 2013, pp. 7-14.
Summary: Career of the highly distinguished patent attorney from Melbourne -- father and
grandfather were also patent attorneys -- graduated from RMIT in electrical engineering -- was
asked by Wayne McMaster to join his practice at Freehills -- long term secondment to Singapore -partner at Marks & Clerk -- diagnosis of Parkinson's disease -- active in Rotary
Subject: Callinan, Keith--interviews
Subject: Patent attorneys--Australia
SNIPER: 2013/02893
Author: Bhutani, Shalini
Title: In the knowledge bazaar: protecting India's (biodiversity) know-how?: a critical look at laws
and policies on traditional knowledge and intellectual property
Source: Intellectual Property Forum. No. 95, December 2013, pp. 57-65.
Summary: The bazaar -- term has come to capture the negative connotations of 'globalisation,
liberalisation and privatisation' in India -- disdain for the free market system -- global rules -- TradeRelated Aspects of Intellectual Property Rights (TRIPs) -- protection regimes -- biopiracy -biodiversity legislation -- Biological Diversity Act 2002 -- intellectual property -- knowledge
management
Subject: Traditional knowledge--India
Subject: Biodiversity--India
Subject: Indigenous issues in intellectual property
SNIPER: 2014/00296
Author: De Beer, Jeremy, 1975Author: Fu, Kun
Author: Wunsch-Vincent, Sacha
SNIPER Bulletin – March 2014
Page 38 of 92
Added author: World Intellectual Property Organization
Title: The informal economy, innovation and intellectual property: concepts, metrics and policy
considerations
Source: WIPO Economic Research Working Paper. No. 10, July 2013.
Summary: Reviews the literature defining the information economy -- main characteristics -original synthesis of statistical data regarding the informal economy's social and economic
significance -- sectors of informal economic activity -- innovation in the informal economy -application of established and emerging concepts of innovations to the context of informal systems
-- spectrum of appropriation mechanisms of knowledge protection, sharing and exchange -- review
of existing policy approaches toward innovation in the formal economy -- establishment a
framework to consider future scenarios for the application of intellectual property concepts in this
context.
Subject: Innovation (Technological)--statistics
SNIPER: 2014/00051
Author: Nurton, James
Title: Inside Google's patent strategy
Source: Managing Intellectual Property. No. 235, December 2013-January 2014, pp. 16-19.
Summary: Interview with Allen Lo, Google's deputy general counsel, patents and litigation -- how
Google's patent strategy has evolved -- problem of patent trolls -- what legal changes are needed.
Subject: Lo, Allen--interviews
Subject: Patents--law and legislation--United States
Subject: Patent trolls--United States
SNIPER: 2014/00246
Author: Seuba Hernández, Xavier
Title: Intellectual property in preferential trade agreements: what treaties, what content?
Source: Journal of World Intellectual Property. Vol. 16 No. 5-6, November 2013, pp. 240-261.
Summary: Preferential trade agreements (PTAs) have become a major source of international
intellectual property regulation -- preferential trade agreements notified to the World Trade
Organization -- which among them regulate intellectual property in a significant manner -- which is
the level of development of treaty members -- general structure of the covenants -- what categories
of intellectual property are covered -- what areas of intellectual property enforcement are
addressed in each treaty -- characteristics of intellectual property regulation via PTAs -- analysis of
the 141 PTAs that regulate intellectual property -- draws attention to transplantation of intellectual
property law -- as well as unexpected features, particularly concerning intellectual property
enforcement and the interests of developing countries.
Subject: Agreement on Trade-Related Aspects of Intellectual Property Rights (1994 April 15)
Subject: Free trade
Subject: Developing countries
SNIPER: 2014/00265
Author: Vaver, D.
SNIPER Bulletin – March 2014
Page 39 of 92
Title: The intellectual property judgments of Mr. Justice Harms of the Supreme Court of Appeal of
South Africa
Source: Intellectual Property Journal (Carswell). Vol. 26 No. 1, December 2013, pp. 47-64.
Summary: Reflects of the career of Justice Louis Harms retired Deputy President of the Supreme
Court of Appeal of South Africa -- unique record in intellectual property law -- with the exception of
one case, all Justice Harms' decisions over the twenty years he served on the appellate bench
were delivered as the unanimous opinion of the court -- only one was reversed on appeal -celebrates an extraordinary body of jurisprudence produced by a judge who had been a leader of
the South African intellectual property bar before appointment -- instructive tour through the range
of problems faced by a major jurisdiction in a period of major technological development and
massive social change.
Subject: Intellectual property industry--South Africa
SNIPER: 2014/00306
Author: Grosse Ruse-Khan, Henning, 1974Title: The international legal framework for the protection of utility modes: unmatched flexibility for
domestic experimentation?
Source: WIPO Journal. Vol. 4 No. 2, 2013, pp. 175-190.
Summary: Multilateral IP agreements -- The Paris Convention -- WTO TRIPS Agreement -regional and bilateral agreements -- free trade and economic partnership agreements -international investment agreements -- key aspects of policy space for designing domestic
protection -- protected subject matter -- requirements for protection -- rights granted to the right
holder -- exceptions and limitations to the exclusive rights -- duration of protection -- enforcement
mechanisms.
Subject: Minor patents
SNIPER: 2014/00303
Author: Breschi, Stefano
Author: Lissoni, Francesco
Author: Tarasconi, Gianluca
Added author: World Intellectual Property Organization
Title: Investor data for research on migration and innovation: a survey and a pilot
Source: WIPO Economic Research Working Paper. No. 17, January 2014.
Summary: Examination of literature on migration and innovation -- emphasis on empirical studies
based on patent and inventor data -- a pilot database, based on patent filings at the European
Patent Office -- information on individual inventors, including country or residence and origin -preliminary evidence suggests that immigrant inventors contribute to innovation not only in the
united States but also in selected European countries -- data on returnee inventors to selected
counties of origin suggest to be of limited scale and highly subject to errors of measurement.
Subject: Inventors--analysis
Subject: Innovation (Technological)
SNIPER: 2014/00220
Author: Bell, Graham
SNIPER Bulletin – March 2014
Page 40 of 92
Author: Carden, Steven
Title: IP assurances: a solid platform for IP deals
Source: Intellectual Property Magazine. September 2013, pp. 85-86.
Summary: Intellectual property (IP) transactions typically include technology transfer, mergers and
acquisitions (M&As), out-sourcing and investment and financing -- legal contract in these
transactions seeks to provide protection and certainty over IP transfer -- successfully taking on IP
requires a number of factors for success -- requirement to rigorously examine the claims made of
the IP -- IP assurance team explore the core elements of the IP including claims, components,
products and project status -- technical team providing the IP assurance works with the acquirer to
prioritise the different elements of the IP -- measures the completeness of each element against a
predefined 'gold standard?' template of what would be expected to be in a particular kind of
element -- measures the quality of each element by reviewing the detail of the embodiment of the
IP for each technical discipline involved -- reviews the quality and completeness and produces a
report for each element of the embodiment that identifies risks and gaps in the IP and
recommendations for closing those gaps
Subject: Value of intellectual property
Subject: Due diligence
SNIPER: 2013/02892
Author: Biggs, Ella
Title: Is the "emotive baggage" of the author restraining the law's recognition of creativity?: the
implications of authorship in Australian copyright law
Source: Intellectual Property Forum. No. 95, December 2013, pp. 41-56.
Summary: Re-examines aspects of copyright law and protection -- traditional form of 'author' may
exclude different and new creative works from copyright law protection -- impact of internet based
technologies on the traditional understanding of creativity -- implications of the court's focus on
authorship in establishing copyright subsistence -- conceptual framework of authorship in copyright
law -- consideration to broadening the analysis of copyright law -- creativity in the law - how much
is enough for copyright protection -- on shaky ground -- the conceptual basis for authorship in
copyright law -- the creator, creativity and copyright law in the 21st century
Subject: Copyright owners' rights
Subject: Moral rights
Subject: Copyright
Subject: Fair use (Copyright)
SNIPER: 2014/00191
Author: Lingard, Tom
Author: Tillett, Charlotte
Author: Milas, Henry
Title: Is the latest DRM 'saviour' of ebooks more fiction than fact?
Source: Intellectual Property Magazine. September 2013, pp. 20-21.
Summary: Digital rights management (DRM) systems encompass a range of technical measures
licensed for the purposes of controlling, measuring and enabling the use of copyright-protected
digital content -- huge growth in the popularity of ebooks -- the fact that the file size is relatively
small means they are easier to copy -- new DRM feature secure documents by individual marking
SNIPER Bulletin – March 2014
Page 41 of 92
or SiDiM -- copyright protection in the digital era -- SiDiM has been suggested as the next
generation of watermark DRM -- legal issues of SiDiM.
Subject: Electronic rights management
Subject: Copyright owners' rights
SNIPER: 2013/02894
Author: Fysh, Michael
Title: Is the world shrinking?: UK and EPO perspectives on patentable subject matter
Source: Intellectual Property Forum. No. 95, December 2013, pp. 66-69.
Summary: General principles -- specific exclusions from patentability -- computer programs -public order and morality -- biotechnological inventions -- methods of treatment or diagnosis -patentability largely harmonised in Europe
Subject: Patentability
Subject: Patents--law and legislation
Subject: Inventions
SNIPER: 2014/00146
Author: Dine, Jeffrey M.
Title: isoHunt closes: the BitTorrent hunter is hunted down
Source: Intellectual Property Magazine. December 2013-January 2014, pp. 69-70.
Summary: Motion Picture Association of America (MPAA) settled its long running lawsuit against
the BitTorrent website isoHunt.com and its operator, Gary Fung -- isoHunt agreed to shut down
and have judgment entered against it for one hundred and ten million dollars -- federal appeals
court affirmed a lower court's determination that isoHunt and related sites were liable for
contributory copyright infringement -- by settling isoHunt averted a trial on damages.
Subject: Copyright infringement--case law--United States
Subject: Copyright infringement--liability--United States
SNIPER: 2014/00281
Author: Clark, Birgit
Title: Keeping it clean: invalidity of a registered Community design based on likelihood of
confusion with earlier 3D Community trade mark
Source: Journal of Intellectual Property Law and Practice. Vol. 9 No. 2, February 2014, pp. 106108.
Summary: The General Court of the European Union confirmed that registered Community design
(RCD) infringed earlier 3D Community trade mark (CTM) -- Su-Chen v OHIM-AM Denmark -Article 25(1)(e) of the Community Design Regulation (CDR) -- Article 9(1)(b) of the Community
Trade Mark Regulation (CTMR) -- General Court analysis and the likelihood of confusion -cleaning device -- Nice Class 21 -- recent cases involving a conflict between trade marks and
designs -- practical significance.
Subject: Industrial design validity--case law--Europe
Subject: Confusing similarity--case law--Europe
SNIPER Bulletin – March 2014
Page 42 of 92
SNIPER: 2014/00221
Author: Ball, Lyle
Title: Language barriers: when is a snail not a snail?
Source: Intellectual Property Magazine. September 2013, p. 87.
Summary: Purpose of an IP translation for filing -- secure patent rights at the widest scope
possible for the technology disclosed, in the shortest time possible -- multinational enterprises set
aside large annual budgets to make sure every single document is accurately translated and
localised for each country in which they plan to file -- less experienced corporate managers and
attorneys often try to cut corners in their already dwindling budgets by looking to do much of the
work in-house, using free online services such as Google Translate, or hiring freelance translators
with limited expertise -- result in lower quality translations -- result in hidden costs down the road -Yokohama Rubber Co.
Subject: Translations--costs
Subject: Patent filing
SNIPER: 2014/00062
Author: Nurton, James
Author: Alves, Sheila
Author: Duran, Gabriela
Author: Guerra, Alberto
Author: Keyack, Albert
Author: Luna, Alejandro
Title: Latest developments in Latin American litigation
Source: Managing Intellectual Property. No. 235, December 2013-January 2014, pp. 68-71.
Summary: Patent litigation in Mexico and Brazil -- are parties in litigation satisfied with what's
available in the region? -- litigation in Argentina takes a long time -- the law hasn't changed in a
while -- specialised judges -- courts -- complaints by international companies -- reasons why courts
are so slow -- strategic issues -- areas for improvement.
Subject: Patent litigation--trends--Latin America
Subject: Patents--law and legislation--Latin America
SNIPER: 2014/00053
Author: Brelsford, James
Author: Keyte, James
Author: Pozen, Sharis
Author: Tepe, Sean
Title: The latest trends in US antitrust law
Source: Managing Intellectual Property. No. 235, December 2013-January 2014, pp. 23-25.
Summary: Intersection between intellectual property (IP) law and antitrust law -- recent court
decisions and regulatory action highlighted the need for IP lawyers to be aware of ensuring that
their commercial activities do not violate antitrust rules -- pay-for-delay patent infringement
settlements in the pharmaceutical industry have come under scrutiny -- United States Supreme
Court rulings on such arrangements could impact licensing arrangements in the technology sector
SNIPER Bulletin – March 2014
Page 43 of 92
-- antitrust regulators will be putting the activity of patent assertion entities under the microscope -important that IP owners are aware of past guidance provided by the Federal Trade Commission
and the Department of Justice as well contemporary application of antitrust law by the country's
courts.
Subject: Competition (Economics)--United States
Subject: Competition law--trends--United States
SNIPER: 2014/00293
Author: Kapetanaki, Natalia A.
Title: Legal definition of human genes and patent eligibility in the light of the Myriad case
Source: Bio-Science Law Review. Vol. 13 No. 4, 2013, pp. 140-146.
Summary: Patent eligibility case in the United States -- Association for Molecular Pathology, et al.
v Myriad Genetics, Inc. et al. -- patent eligibility for human genes -- a human gene sequence is a
(particular) chemical compound -- a human gene sequence is information -- striking a balance -legal treatment of human gene sequences -- whether the Myriad decision and the changes
regarding the degree of human intervention on biotechnological patents will also influence
European practice is too early to predict.
Subject: Genes--patentability--United States
Subject: Patenting of life forms--case law--United States
SNIPER: 2014/00205
Author: Blue, Jessica
Title: Licensing lights up
Source: Intellectual Property Magazine. September 2013, pp. 49-51.
Summary: Licensing Expo 2013 -- Mandalay Bay Convention Center in Las Vegas -- top five
global licensors -- top trends shaping the industry -- keynote presentations -- Licensing Expo 2014.
Subject: Intellectual property licensing
Subject: Intellectual property industry
SNIPER: 2014/00121
Author: Potter, Julian
Author: McKinnon, Alistair
Title: Limit on filing divisional applications
Source: Intellectual Property Magazine. December 2013-January 2014, p. 15.
Summary: Rule changes announced by the European Patent Office (EPO) relating to the filing of
divisional applications -- removal of the two-year time limit for filing divisionals introduced in April
2010 -- new rules no longer contain the restrictive time limit for filing divisionals -- similar to the
rules which were effective pre-April 2010 -- unintended consequences arising from the 2010 rules - numbers of divisionals filed, spiked sharply upon introduction of the time limit -- where will we be
in April 2014?
Subject: Divisional applications (Patents)--Europe
Subject: Patent filing--reform--Europe
SNIPER Bulletin – March 2014
Page 44 of 92
SNIPER: 2014/00122
Author: Payne, Alistair
Author: Lawless, Amy
Title: Major reform of Irish copyright
Source: Intellectual Property Magazine. December 2013-January 2014, pp. 16-17.
Summary: Copyright Review Committee -- mandate of recommending ways to modernise
copyright legislation in the digital age -- published 'Modernizing Copyright' report -- recommends a
major overhaul of Irish copyright legislation -- overview of principal recommendations -establishment of a Copyright Council of Ireland -- establishment of an Irish Orphan Works
Licensing Agency -- establishment of specialist intellectual property (IP) courts in Ireland -establishment of specialist intellectual property jurisdictions in the lower district and circuit courts -proposal that metadata should be protected -- recommends bolstering the position of copyright
users by transposing the full range of EU copyright exceptions -- linking and marshalling -innovation -- fair use.
Subject: Copyright--reform--Ireland
Subject: Copyright--law and legislation--Ireland
SNIPER: 2014/00217
Author: Hall, Susan
Title: Making airwaves: Zodiac flies high against Virgin
Source: Intellectual Property Magazine. September 2013, pp. 77-78.
Summary: Virgin Atlantic Airways Ltd v Zodiac Seats (UK) Ltd -- United Kingdom Supreme Court - raises issues for practitioners -- avoids the injustice of a defendant having to pay damages under
a patent whose relevant claims were invalidated between trial on liability and trial on quantum -gives limited comfort with respect to wider concerns about estoppel in
intellectual property matters -- means that practitioners need to be alert to later estoppel risks when
advising their clients as to which causes of action to pursue and which to drop -- Supreme Court
decided Virgin v Zodiac on comparatively limited grounds -- analysis of the case.
Subject: Patent validity--case law--United Kingdom
Subject: Damages--case law--United Kingdom
SNIPER: 2014/00328
Author: Wilf, Steven Robert
Title: Making intellectual property law in the shadow of law: International News Service v
Associated Press
Source: WIPO Journal. Vol. 5, No. 1, 2013, pp. 87-94.
Summary: International News Service v. Associated Press, 248 U.S. 215 (1918) -- United States
Supreme Court decision -- upheld the common law rule that there is no copyright in facts -- private
ordering and collective action -- twin beginnings of copyright in the United States -- "telegraph
copyright" -- the telegraph was the first electrical communication media in the United States -- what
is a new technology -- reading as a new technology -- "publication" difficult to define.
Subject: Copyright infringement--case law--United States
Subject: Competition (Economics)--case law--United States
SNIPER Bulletin – March 2014
Page 45 of 92
SNIPER: 2014/00208
Author: Lopez, Ronald F.
Title: Making your mark
Source: Intellectual Property Magazine. September 2013, pp. 57-58.
Summary: Mexico's Inventions and Trademarks Law was amended in 1994, changing its name to
Industrial Property Law -- included new stipulations regarding well-known trade marks -- the term
was finally defined in the domestic legal system -- brought further confusion towards the owners of
well-known marks -- Mexico has not yet entered into an opposition system for the prosecution of
trade mark applications -- only two ways for a trade mark to be considered 'well-known' -- 2005
amendments -- owners of trade marks had the possibility to request to the Mexican Institute of
Industrial Property (IMPI), the declaration of a well-known or famous trade mark -- requested by an
interested party and evidence of such quality should be filed along with the application -- evidence
that can be filed with the application -- IMPI has no time limit to issue the declaration -- limited term
of five years for well-known or famous trade marks declarations to be in force -- term may be
extended for another five years.
Subject: Famous trade marks--Mexico
Subject: Trade mark owners' rights--Mexico
SNIPER: 2014/00045
Author: Royhan, Pradip
Title: Market access challenges and opportunities for Bangladesh pharmaceutical products under
TRIPS
Source: Journal of Intellectual Property Law and Practice. Vol. 8 No. 12, December 2013, pp. 932938.
Summary: Access to medicines and patenting of pharmaceuticals taking Bangladesh as a case
study -- Trade-Related aspects of Intellectual Property Rights (TRIPS) -- TRIPS and market access
-- TRIPS and public health -- TRIPS and pharmaceuticals -- developing countries ability to import
patented products under TRIPS -- TRIPS transition period -- exceptions to patentability under
TRIPS -- the promotion of technology transfer to Least Developed Countries (LDC) under TRIPS -domestic laws and regulations and their influence on the pharmaceutical industry of Bangladesh -issues which require reform in Bangladesh -- reform of TRIPS -- what should be done next.
Subject: Agreement on Trade-Related Aspects of Intellectual Property Rights (1994 April 15)-Bangladesh
Subject: Patents--pharmaceutical industry--Bangladesh
Subject: Pharmaceuticals--patentability--Developing countries
SNIPER: 2014/00114
Author: Pugatch, Meir Perez
Author: Chu, Rachel
Author: Torstensson, David, 1980Author: Chamber of Commerce of the United States of America. Global Intellectual Property
Center.
Title: Measuring momentum: GIPC International IP index
Source: Measuring Momentum. 2012.
General Note: 1st edition
SNIPER Bulletin – March 2014
Page 46 of 92
Summary: First edition of the GIPC Index highlights strengths and weaknesses of 11 economically
and geographically diverse countries -- covers all major areas of IP rights -- shows efforts by
countries to create more effective and transparent IP rules -- United States leads the rankings -positive steps being taken in China to improve IP rules and enforcement -- Australia ranked third
overall, behind the United States and the United Kingdom
Subject: Intellectual property--policy
Subject: Intellectual property rights
SNIPER: 2013/02799
Author: Anand, Safir
Title: Multiple threats: IP on the Internet
Source: Trademarks Brands and the Internet. Vol. 2 No. 3, 2013, pp. 40-41.
Summary: Multitude of problems when operating online businesses -- case law examples -phishing -- passing-off -- trade mark infringement potential with metatags -- cybersquatting -- social
media websites -- celebrity rights
Subject: Passing-off
Subject: Cybersquatting
Subject: User-generated content
Subject: Domain names--case law
Subject: Personality rights
SNIPER: 2014/00145
Author: Blake, Daniel
Title: Musicians clash over band name
Source: Intellectual Property Magazine. December 2013-January 2014, p. 68.
Summary: Court held that a former band member of Wishbone Ash cannot perform under a name
which includes the original band name combined with his own name -- Martin Turner's Wishbone
Ash mark was confusingly similar to Wishbone Ash -- took unfair advantage or was detrimental to
the reputation and distinctive character of the registered trade mark -- Turner denied infringement - counterclaimed that the registered trade mark should be held invalid as it was registered in bad
faith by Powell -- judge found in favour of Powell.
Subject: Trade mark infringement--case law--United Kingdom
Subject: Trade mark entitlement--United Kingdom
SNIPER: 2014/00316
Author: Gendreau, Ysolde, 1962Title: Musing over ATRIP
Source: WIPO Journal. Vol. 4, No. 2, 2013, pp. 264-266.
Summary: Association for the Advancement of Teaching and Research in Intellectual Property
(ATRIP) -- experiences of the author as President of the Association (2003-2005) -- promotion of
research in intellectual property -- academic membership of ATRIP -- publishing of the ATRIP
Congress proceedings.
SNIPER Bulletin – March 2014
Page 47 of 92
Subject: International Association for the Advancement of Teaching and Research in Intellectual
Property
Subject: Intellectual property industry
SNIPER: 2014/00194
Author: Marth, Ryan W.
Author: Parness, Hillel I.
Title: The never ending story
Source: Intellectual Property Magazine. September 2013, pp. 27-28.
Summary: US district judge Denise Cote issued her opinion and order in US v Penguin Group -government's antitrust case against Apple and five of the 'big six' US book publishers -- ruling that
"Apple participated in and facilitated a horizontal price-fixing conspiracy" -- Apple had violated the
antitrust laws, via its successful efforts to enter into agreements with the major publishers -dispute will continue -- trial to determine damages -- appeals of the Court's decisions -- pending
class action cases against Apple and the publishers -- case background -- the opinion -- important
lessons from the Court's decision.
Subject: Competition (Economics)--case law--United States
SNIPER: 2014/00271
Author: Brassell, Martin
Title: New developments in IP
Source: IPR Helpdesk Bulletin. No. 12, January-March 2014, pp. 6-7.
General Note: See also: Banking on IP Report 2013/02576
Summary: Importance of IP development for growth -- examination of the relationship between IP
and business funding in Great Britain -- determine how to take forward recommendations of the
Banking on IP report -- international attention paid to unlocking the security value inherent in IP -different approaches -- Asia and South-East Asia -- US and Europe -- IP illiquidity -- available types
of IP debt -- IP awareness -- businesses failing to recognise the vital contribution IP and other
intangible assets make to their businesses -- greater bank interest in IP assets.
Subject: Intellectual capital--United Kingdom
Subject: Intellectual property awareness--United Kingdom
Subject: Value of intellectual property--United Kingdom
SNIPER: 2014/00349
Author: Slaney, Brett
Author: Turco, Antonio
Title: No glasses required: 3D printing and the current Canadian IP framework
Source: World Intellectual Property Report. Vol. 28 No. 2, February 2014, pp. 40-42.
Summary: 3D printing -- additive manufacturing -- process of creating a three-dimensional object
form a digital model by successively "adding" together layers of material in the shape of the
desired object -- distributed manufacturing -- just-in-time production, customization and
replacement -- possible new business models -- allow products to come to the market more quickly
-- 3D printing technology will become cheaper, more accessible and faster -- a disruptive
technology threatening IP rights -- need for IP system to keep up with these rapid developments --
SNIPER Bulletin – March 2014
Page 48 of 92
whether current IP law are sufficient to protect IP rights holders -- challenges to IP laws, especially
copyright law -- IP laws in Canada -- impact of 3D printing on patented objects -- industrial designs
protection -- trade marks -- IP system need to provide adequate protection
Subject: Intellectual property rights--manufacturing and processing industry--Canada
SNIPER: 2014/00211
Author: Drummond, Frances
Author: O'Brien, Jackie
Title: Non-traditional marks under scrutiny
Source: Intellectual Property Magazine. September 2013, pp. 63-64.
Summary: Non-traditional marks becoming increasingly important as marketing methods and
communication evolves -- non-traditional marks are not easy to register -- difficulties faced by
brand owners -- globalisation -- representation -- distinctiveness -- functionality -- non-traditional
trade mark registrations remain relatively rare -- the global position -- Europe -- United Kingdom Kit
Kat decision -- North America -- Australia -- Australian Kit Kat decision -- New Zealand Kit Kat
decision -- Asia.
Subject: Non-traditional marks--Australia
Subject: Trade mark registration
SNIPER: 2013/02463
Author: Kur, Annette
Title: Not prior in time, but superior in right: how trademark registrations can be affected by thirdparty interests in a sign
Source: IIC: International Review of Intellectual Property and Competition Law. Vol. 44 No. 7,
November 2013, pp. 790-814.
Summary: Trade mark law -- principle of priority -- person first filing for registration becomes the
owner of the right -- certain exceptional cases where priority is discarded due to superior interests
of third parties -- recognition in international law of two situations -- protection of well-known marks
-- unauthorised registration by an agent or representative -- priority may not apply if the mark is
filed in bad faith -- international and European legal perspective on these three situations -European Commission proposals for reform of European trade mark law.
Subject: Trade mark priority
Subject: Trade marks--law and legislation--Europe
SNIPER: 2014/00091
Author: Pearce, David
Author: Fulconis, Renaud
Title: Opposing views on partial priority
Source: CIPA: the journal, incorporating the 'Transactions', of the Chartered Institute of Patent
Agents. Vol. 42 No. 12, December 2013, pp. 716-720.
Summary: Nestec SA & Ors v Dualit Ltd & Ors [2013] EWHC 923 (Pat) -- issue of partial priority
under Article 88(2) EPC -- question of whether a patent can be found to lack novelty over its own
published priority application -- case involves a coffee machine -- broad interpretation -- narrow
SNIPER Bulletin – March 2014
Page 49 of 92
interpretation -- disagreement over how to interpret "a limited number of clearly defined alternative
subject-matters" in decisions of the EPO Boards of Appeal.
Subject: Patent priority--case law--United Kingdom
Subject: Patent novelty--case law--United Kingdom
SNIPER: 2014/00321
Author: Khan, B. Zorina
Title: A page of history: patents, prizes and technological innovation
Source: WIPO Journal. Vol. 5, No. 1, 2013, pp. 17-24.
Summary: Empirical analysis of patents and prizes -- incentive activity -- prizes in Britain -industrial prizes in the United States -- technology spillovers and patents and prizes -- patents and
prizes then and now -- introduction of industrial prizes problematic for developing countries.
Subject: Innovation (Technological)
SNIPER: 2014/00350
Author: Acharya, Rajesh
Author: Tanna, Girish
Title: Patent law and the concept of novelty in India
Source: World Intellectual Property Report. Vol. 28 No. 2, February 2014, pp. 42-44.
Summary: Concept of novelty in patent law -- principle that only true inventions deserve patent
protection -- novelty is a question of whether the invention has been anticipated anywhere in the
world by a previous patent, or publication, or by use -- anticipation test -- standard of anticipation -novelty involves comparison between the invention and the thing that is revealed by prior
publication or is publicly known or publicly used
Subject: Patents--law and legislation--India
Subject: Patent novelty--India
SNIPER: 2012/00977
Added author: IP Australia
Title: Patent Law Treaty: public consultation paper
Source: Patent Law Treaty: Public Consultation Paper. 2007.
Summary: Australian Government considering joining the Patent Law Treaty (PLT) -- IP Australia
undertaking consultation process to provide input to a National Interest Analysis -- PLT harmonises
and simplifies many formality and procedural requirements relating to the administration of patents
-- reduces red tape by regulating the maximum set of requirements which the Office of a
Contracting Party may ask for -- makes procedures more user-friendly, more consistent across
countries, less time-consuming and less expensive -- information sessions held -- comments
invited on proposals to accede to the PLT -- due 30 June 2007.
Subject: Patent Law Treaty (2000 June 1)
Subject: Patents--treaties--Australia
SNIPER: 2014/00144
SNIPER Bulletin – March 2014
Page 50 of 92
Author: Masters, Robert M.
Author: Timofeyev, Igor
Title: The patentees' burden?
Source: Intellectual Property Magazine. December 2013-January 2014, pp. 66-67.
Summary: Medtronic, Inc v Boston Scientific Corporation -- United States Supreme Court -- case
will determine whether the patent holder or the patent licensee bears the burden of proof in an
action seeking a declaratory judgment of non-infringement -- judges are likely to place the burden
on the patentee -- could have significant implications for intellectual property rights holders -companies that grant licences to their intellectual property portfolio should consider potential
modifications to their licensing arrangements in order to mitigate the impact of the Supreme Court's
likely decision -- the case.
Subject: Intellectual property licensing--United States
Subject: Patent litigation--United States
SNIPER: 2014/00352
Author: Cooper, David
Title: Patently absurd
Source: New Scientist. Vol. 221 No. 2956, 15 February 2014, pp. 32-33.
General Note: The online version of this article is titled: Strengthening Europe's patent laws will
weaken them
Summary: New European unitary patent (EUP) -- allows a European patent holder to stop a
competitor from infringing in all EU states with a single legal action -- way this is being
implemented will harm innovation across Europe -- EUP undermines exiting high-quality justice
systems for minor cost saving -- countries with low-ranked judicial systems could become popular
venues for patent litigation -- forum shopping -- Luxembourg as host of the EUP's court of appeal -obliges companies appealing against a ruling to carry out activities in Luxembourg -- exposes
companies to the risks of operating in a tax haven -- consequences of weak protection of
intellectual property
Subject: Unified Patent Court
Subject: Patent systems--reform--Europe
Subject: Patent litigation--reform--Europe
Subject: Legal jurisdiction--Europe
SNIPER: 2014/00272
Author: Chowdhury, Pritom
Author: Khan, Siraj A.
Author: Dutta, Prafulla
Author: Mahanta, Jagadish
Title: Pharmaceutical and biotech product patents in India: doldrums or blissfulness?
Source: Nature Biotechnology. Vol. 32 No. 2, February 2014, pp. 133-134.
Summary: Confusion about pharmaceutical and biotech-related patents in India -- pharmaceutical
patents -- issues with gene patenting -- inconsistent application of patent law -- effects of patenting
decisions -- conflicting interests of R&D driven multinationals and Indian generic companies --
SNIPER Bulletin – March 2014
Page 51 of 92
actual scope of product patents is uncertain -- need for India to revise its patent law and policies -harmonize with international standards -- deal with domestic issue of drug pricing.
Subject: Patents--pharmaceutical industry--India
Subject: Pharmaceuticals--India
SNIPER: 2014/00137
Author: Chaudri, Abida
Title: Pharmaceutical trademarks in the 'city of music'
Source: Intellectual Property Magazine. December 2013-January 2014, pp. 47-49.
Summary: 87th conference of the Pharmaceutical Trade Marks Group (PTMG) in Vienna -language as a barrier -- trade marks and prescribed packaging -- regulatory proposals on brand
names for pharmaceuticals -- co-existence agreements -- falsified medicines -- anti-counterfeiting
in Africa -- The Madrid Protocol.
Subject: Trade marks--pharmaceutical industry
Subject: Pharmaceuticals
SNIPER: 2014/00329
Author: Seville, Catherine
Title: The principles of international intellectual property protection: from Paris to Marrakesh
Source: WIPO Journal. Vol. 5, No. 1, 2013, pp. 95-104.
Summary: Revisits historical intellectual property protection principles -- Paris Convention for the
Protection of Industrial Property (Paris Convention) -- can they be expressed in the current
international landscape -- Agreement on Trade-Related Aspects of Intellectual Property Rights (the
TRIPS Agreement) -- lack of harmonisation a problem in the global marketplace -- TRIPS and
beyond -- principles from opposition to breadth and balance -- desire to promote creativity by
protecting the works of the mind remains a fundamental principle -- remarks by Francis Gurry,
WIPO Director General in regards to the Marrakesh Treaty -- time of refining and reassessing
systems of intellectual property protection to make it fit for a global world -- "fair balance".
Subject: Intellectual property rights--treaties
Subject: Intellectual property rights--history
SNIPER: 2014/00048
Author: Tsoutsanis, Alexander, 1976Title: Privacy and piracy in cyberspace: justice for all
Source: Journal of Intellectual Property Law and Practice. Vol. 8 No. 12, December 2013, pp. 952956.
Summary: Balancing privacy rights against intellectual property rights in the online environment -privacy as an universal right -- need for remedy for the rule of law -- need for accountability so
rights can be protected -- the 'does-privacy-trump-piracy debate' -- role of Internet service
providers (ISPs) -- Promusicae v Telefónica -- LSG v Tele2 -- Bonnier Audio AB and Others v
Perfect Communication Sweden AB -- uncertainty, high cost and delay in identifying ISP customers
-- importance of a balanced model.
Subject: Carriage service providers
Subject: Privacy
SNIPER Bulletin – March 2014
Page 52 of 92
Subject: Piracy
Subject: Intellectual property rights
Subject: Internet
SNIPER: 2014/00189
Author: Wong, Kenny K. S.
Author: Low, Eugene I.
Title: Private eye
Source: Intellectual Property Magazine. September 2013, pp. 13-14.
Summary: Privacy protection in the People's Republic of China (PRC) -- no specific piece of
legislation for privacy -- protection is scattered around various laws and regulations -- PRC
Constitution protects the personal integrity of China's citizens -- further protects the citizens'
freedom and secrecy of correspondence -- PRC General Principles of Civil Law -- other relevant
laws -- recent developments -- criminal law -- civil procedure law -- Standing Committee of the
National People's Congress issued the 'Decision to Strengthen the Protection of Data on the
Internet' -- changes to the consumer law.
Subject: Privacy--law and legislation--China
SNIPER: 2014/00269
Author: Farcot, Matthieu
Title: Proper intellectual property management for derivative software creation: the case of
licensing interoperability issues
Source: IPR Helpdesk Bulletin. No. 12, January-March 2014, pp. 3-4.
Summary: Licences an essential means for managing the distribution and market recognition of
software -- a licence which would grant reciprocity of rights for all users on industrial property used
within a given piece of software has to be respected for derivative -- developments free and open
source licensing frameworks are not homogeneous -- technically complex legal maze -interoperability issues of licences pose a serious threat to software developments -- need to be
managed accordingly -- software IPR management.
Subject: Computer-related inventions--management
Subject: Intellectual property licensing
SNIPER: 2014/00049
Author: Bühling, Jochen, 1961Title: The protection of computer-implemented inventions: an analysis of the latest case law of the
German Federal Court of Justice
Source: Journal of Intellectual Property Law and Practice. Vol. 8 No. 12, December 2013, pp. 957960.
Summary: How the German Federal Court of Justice (BGH) has dealt with computer-implemented
inventions (CIIs) in case law -- patentability of CIIs under international agreements, regional and
national laws -- exceptions to patentability, and programs for computers and presentation of
information -- overview of case law of the BGH in recent times -- assessment of the scope of
protection -- assessment of potential infringement -- case law shows that the patentability of CIIs
follow rules asked of all inventions -- BGH has managed to increasingly harmonize with the case
law of the European Patent Office.
SNIPER Bulletin – March 2014
Page 53 of 92
Subject: Computer-related inventions--case law--Germany
Subject: Computer-related inventions--Europe
Subject: Computer-related inventions--patentability
Subject: Patents--Information technology industry
SNIPER: 2014/00307
Author: Marie-Vivien, Delphine
Title: The protection of geographical indications for handicrafts: how to apply the concepts of
natural and human factors to all products
Source: WIPO Journal. Vol. 4, No. 2, 2013, pp. 191-205.
Summary: Geographical indications (GIs) -- concepts underlying GIs -- link to origin based
essentially on human factors -- handicraft goods -- absence of the specific origin of the raw
material -- foodstuffs -- link to origin via a combination a natural and human factors -- agricultural
goods and foodstuffs -- processed products using local raw material -- processing under special
environmental factors natural factors as the source of raw material -- need for a homogenised GI
legal framework for all products -- issue of designs -- legal instruments according to natural and/or
human factors.
Subject: Geographical indicators
Subject: Environmental issues in intellectual property
SNIPER: 2014/00369
Author: Mitchell, Andrew D., 1974Author: Voon, Tania
Author: Whittle, Jeffrey S.
Title: Public health and the Trans-Pacific Partnership Agreement
Source: Public Health and the Trans-Pacific Partnership Agreement. 10 February 2014.
General Note: Published on Social Science Research Network (SSRN).
General Note: Forthcoming in Asian Journal of International Law
Summary: Trans-Pacific Partnership Agreement (TPP) negotiations nearing completion -- treaty
will radically reshape trade in the Asia-Pacific region -- potential of TPP obligations to significantly
restrict the ability of governments to regulate in the interests of public health -- analysis of the
impact that the TPP could have on two areas of public health regulation, tobacco control and
access to medicines -- concludes that a number of legitimate concerns arise from the known
content of the TPP -- inclusion of a general health exception would be the preferable means of
safeguarding the regulatory responsibility of governments in relation to public health -- should
resist United States proposals for stronger intellectual property protections that could restrict
affordable access to medicine -- TPP parties' desires to promote international trade and investment
must not overshadow the need of governments to be able to implement sensible and effective
public health policy.
Subject: Draft Trans-Pacific Partnership Agreement
Subject: Free trade--Pacific Area
Subject: International trade--treaties
SNIPER: 2014/00267
SNIPER Bulletin – March 2014
Page 54 of 92
Author: Simone, Daniela
Title: Recalibrating the joint authorship test: insights from scientific collaborations
Source: Intellectual Property Journal (Carswell). Vol. 26 No. 1, December 2013, pp. 111-135.
Summary: Challenge of attributing authorship in respect of highly collaborative work -- concept of
authorship -- different meanings to copyright lawyers and scientists -- activities of large
collaborations -- attempts of biomedical science journals to limit authorship claims to dominant
contributors -- contrasted with the highly inclusive approach taken by particle physics collaboration
-- important to retain a core legal notion of authorship -- ought to be applied in a way that is
sensitive to the context in which creativity occurs -- suggestions on how the joint authorship test
might be recalibrated in the light of the different ways large groups create.
Subject: Moral rights--science and research industry
SNIPER: 2014/00059
Author: Wilks, John
Author: Oldroyd, Kate
Title: The renewed threat of genericism
Source: Managing Intellectual Property. No. 235, December 2013-January 2014, pp. 57-59.
Summary: Many historical examples of trade marks becoming generic words -- brand owners
need to take care to ensure their trade marks do not become generic -- practical steps that all
intellectual property owners can take -- advise employees on how they use the brand name in
public -- take swift action to correct misuse by the media -- educate consumers about the problems
of genericism -- weigh up the pros and cons of litigating to enforce rights.
Subject: Generic use--Europe
Subject: Brand management--Europe
SNIPER: 2014/00188
Author: Harris, Radiance W.
Title: Retail value
Source: Intellectual Property Magazine. September 2013, pp. 11-12.
Summary: Signature store layout plays a crucial role in establishing the goodwill and reputation of
a retail company -- valuable asset -- representation of a company's brand -- move toward eyecatching and distinctive retail store design -- retailers striving to differentiate themselves from their
competitors -- big investment in layout of stores -- increase foot traffic -- provide consumers with a
unique shopping experience -- increase sales -- conveying a poignant message about the brand's
identity and values -- retail companies have made efforts to protect and register their store layout
designs -- Apple registered its store design with the United States Patent and Trademark Office
(USPTO) -- evidence of acquired distinctiveness -- Microsoft's federal registration on the
Supplemental Register because the layout was not inherently distinctive -- trade dress in the retail
space -- tailor elements that define the overall retail store concept -- consistency in maintaining the
overall look and feel -- consider other forms of intellectual property protection.
Subject: Intellectual property rights--retail industry
Subject: Trade dress--retail industry
SNIPER: 2013/02891
Author: Bouvier, Scott
SNIPER Bulletin – March 2014
Page 55 of 92
Title: The role of IP advisors in capturing the economic opportunities in Asia for our Australian
clients
Source: Intellectual Property Forum. No. 95, December 2013, pp. 37-40.
Summary: Merger of China's King & Wood IP firm with Mallesons Stephen Jaques in 2012 to
become King & Wood Mallesons -- author's experience working on collaborative projects with
colleagues in China -- a policy perspective -- IP Australia's IP Forum in July 2013 -- assessment of
the Labor government's policy perspective on Asia and innovation -- "Smarter manufacturing for a
smarter Australia" report -- the IP landscape in Asia -- our opportunity
Subject: Professional bodies (Intellectual property)
Subject: Intellectual property industry
Subject: Intellectual property systems
SNIPER: 2014/00094
Author: Olive, Gretchen M.
Author: Calandra, Mark
Title: Safeguarding brands in the fast-changing digital space
Source: World Trademark Review. Online Brand Enforcement 2014, pp. 7-12.
Summary: Rapid evolution of digital media is making it harder to protect trade marks online -- easy
and cheap for anyone to hijack a brand and siphon off its value -- a brand's digital footprint is
growing all the time -- direct visits to websites -- potential for fraud -- many defensive and
enforcement options for trade mark owners -- fraudsters developing excellent search engine
optimisation (SEO) skills -- bogus mobile apps -- phishing emails -- fraudulent social media activity
-- new generic top level domains (gTLDs) -- protection strategies -- importance of an effective
monitoring strategy -- enforcement options.
Subject: Trade mark enforcement
Subject: Brand management
SNIPER: 2014/00046
Author: Banerjee, Someshwar
Title: Section 8 requirements of the Indian Patent Act: neither a mere formality nor a groundless
threat
Source: Journal of Intellectual Property Law and Practice. Vol. 8 No. 12, December 2013, pp. 939945.
Summary: The intent of Section 8, its interpretation by Indian courts and tribunals and the
importance of applicants following its' procedural requirements -- section 8 and rules associated
with it -- requirement to supply details of patent applications filed in foreign jurisdictions which
relate specifically to the invention -- the intent of s 8 -- the Manual of Patent Office Practice and
Procedure does not provide much in the way of guidance with regard to the section -- most
revocation petitions include a challenge on s 8 -- The Chemtura case -- F Hoffmann-La Roche Ltd
& OSI Pharm, Inc v Cipla Ltd -- Tata Chemicals Ltd v Hindustan Unilever Ltd -- Fresenius Kabi
Oncology Limited v Glaxo Group Limited and others -- recommended practice for the applicant -- at
the time the legislation was enacted s 8 was important but today obtaining publications filed abroad
is easier -- possibility of repealing s 8.
Subject: India. Indian Patent Act 1970 (IPA)
Subject: Patent applications--India
SNIPER Bulletin – March 2014
Page 56 of 92
Subject: Patents--law and legislation--India
SNIPER: 2014/00125
Author: McIver, Timothy
Author: McCulloch, Ramsay
Title: SEPs and injunctive relief: an emerging consensus?
Source: Intellectual Property Magazine. December 2013-January 2014, pp. 22-23.
Summary: Patent enforcement has fallen under the exclusive jurisdiction of national patent courts
-- intellectual property law provides possible remedies -- investigations by the European
Commission (EC) and recent enforcement action by the Federal Trade Commission (FTC) -indicate an emerging consensus that standard essential patents (SEPs) should be treated
differently -- there should be no unequivocal right to injunctive relief -- SEPs and fair, reasonable
and non-discriminatory (F/RAND) licensing commitments -- implications for SEP holders -- action
items for in-house counsel.
Subject: Injunctions--communication services industry
Subject: Intellectual property licensing--communication services industry
SNIPER: 2014/00266
Author: Laroche, Guillaume
Title: Settling the score: copyright in modern editions of public domain musical works
Source: Intellectual Property Journal (Carswell). Vol. 26 No. 1, December 2013, pp. 83-110.
Summary: Overview of the sheet music publishing industry's copyright practices -- doctrinal
approaches tested using various editions of Chopin’s Raindrop Prelude -- application of the
doctrine of originality, as described in CCH v. Law Society of Upper Canada -- investigates the
nature of musical scores as works -- publishers have sometimes argued, a proper application of
the Copyright Act should classify them as musical works instead of artistic works -- findings of the
court in the British case Sawkins v. Hyperion are applied to the Canadian context -- policy
implications of its findings -- contrasting the benefits accruing to musicians.
Subject: Musical works--Canada
Subject: Public domain--analysis--Canada
SNIPER: 2014/00279
Author: Lazur, Ján
Author: Pala, Radovan
Title: Significant changes to Slovakian copyright law
Source: Journal of Intellectual Property Law and Practice. Vol. 9 No. 2, February 2014, pp. 103104.
Summary: Copyright law reform in Slovakia -- Act no 289/2013 Coll of 3 September 2013 -Slovakian Copyright Code has not kept up with advances in digital technology -- 1 November 2013
amendment has partially abolished the requirement that a valid licensing agreement be in writing -inflexibility of the Slovakian Copyright Code to deal with a variety of different licences -- licensing
agreements analysed -- 'double' unjust enrichment -- flaws in the new statutory 'double' unjust
enrichment regulation -- rights of copyright holders strengthened -- practical significance.
Subject: Copyright--reform--Slovakia
SNIPER Bulletin – March 2014
Page 57 of 92
Subject: Copyright--law and legislation--Slovakia
Subject: Copyright licensing--law and legislation--Slovakia
SNIPER: 2013/02714
Author: Vermont, Samson
Title: The sine qua non of copyright is uniqueness not originality
Source: Intellectual Property Law Review. Vol. 45, 2013, pp. 467-526.
General Note: Originally published in: Texas Intellectual Property Law Journal, Vol. 20 No. 2,
Spring 2012, pp. 327-386.
Summary: Whether originality or uniqueness is the essential condition of copyright -- US Supreme
Court view that originality is the most important -- author's argument that uniqueness is the most
important -- copyright only protects unique work, a one-of-a-kind work -- a work no one created
before (novel) and no one could independently create after (unrepeatable) -- uniqueness also
defines the boundary between copyright and utility patent -- influence of the sweat of the brow
doctrine -- uniqueness largely unifies copyright's many limiting doctrines, including the useful
article doctrine, the idea- and fact-expression dichotomies, and others -- some of the limiting
doctrine cases cannot be explained without supplementing uniqueness with a 'dominance principle'
-- similar to antitrust -- limits protection for work even if it is unique
Subject: Copyright--philosophy
SNIPER: 2012/00978
Added author: IP Australia
Title: Singapore Treaty on the Law of Trademarks: public consultation paper
Source: Singapore Treaty on the Law of Trademarks: Public Consultation Paper. 2007.
Summary: Australian Government considering joining the Singapore Treaty on the Law of
Trademarks (Singapore Treaty) -- IP Australia undertaking consultation process to provide input to
a National Interest Analysis -- Singapore Treaty harmonises and simplifies many formality and
procedural requirements relating to the administration of patents -- reduces red tape by regulating
the maximum set of requirements which the Office of a Contracting Party may ask for -- makes
procedures more user-friendly, more consistent across countries, less time-consuming and less
expensive -- information sessions held -- comments invited on proposals to ratify the Singapore
treaty -- due 30 June 2007.
Subject: Singapore Treaty on the Law of Trademarks (2006 March 27)
Subject: Trade marks--treaties--Australia
SNIPER: 2014/00334
Author: Atkinson, Sarah
Title: Sir Cliff Richard's victory: an extra 20 years for copyright protection in sound recordings and
performers' rights where a sound recording of the performance is released
Source: European Intellectual Property Review. Vol. 36 No. 2, 2014, pp. 75-79.
Summary: Provisions of Directive 2011/77/EU -- extends the term of copyright protection in sound
recordings and performers' rights -- performers are entitled to receive income for a further 20 years
-- number of additional measures designed to improve performers' revenue -- 20 per cent session
fund -- "use it or lose it" and "clean slate" provisions -- arguments in favour and against the
controversial changes -- protection in the United States.
SNIPER Bulletin – March 2014
Page 58 of 92
Subject: Copyright owners' rights--law and legislation--Europe
Subject: Copyright terms--law and legislation--Europe
Subject: Neighbouring rights--Europe
SNIPER: 2014/00190
Author: Parker, Scott
Author: Hall, Ben
Title: The skinny label
Source: Intellectual Property Magazine. September 2013, pp. 16-18.
Summary: Second medical use patent claims are a means of incentivising the investment needed
to obtain regulatory approval for new indications -- 'skinny labelling' of generic drugs -- few cases
around Europe where the courts have ruled upon infringement of such claims -- uncertainty facing
originators and generics -- risk of 'off-label' infringement -- remedies for off-label infringement.
Subject: Swiss-type claims
Subject: Patent infringement--pharmaceutical industry
SNIPER: 2013/02800
Title: Snapshot: Trustev
Source: Trademarks Brands and the Internet. Vol. 2 No. 3, 2013, p. 42.
Summary: Startup company based in Ireland -- catch online fraudsters -- confirm consumer
identities by checking user behaviour patterns -- interview with Donal Cahalane, chief marketing
officer -- how the model works -- social fingerprinting technology -- protection of customer
information -- company looks at data points users have given to social networking sites -- no actual
information seen -- promotion of Trustev.
Subject: Internet
Subject: User-generated content
SNIPER: 2014/00118
Author: Tumbridge, James R.
Author: Peake, Robert E.
Title: Social media buskers change their tune
Source: Intellectual Property Magazine. December 2013-January 2014, p. 11.
Summary: Facebook has objected to the use of the name 'Facebusks' for a UK-based website
featuring videos of street performers -- Facebook has raised the possibility of an amicable
resolution -- desire of social media platforms to balance enforcement of intellectual property rights
against damaging their positive image with the public -- also concerned about their reputation with
developers -- whether there is a likelihood of confusion between the mark and the 'Facebook' mark
-- whether the mark takes unfair advantage of the repute or distinctive character of the 'Facebook'
trade mark -- Instagram branding guidelines were recently amended to forbid the use of 'insta' and
'gram' in the names of third party apps -- risk of alienating the community of developers -- Zynga's
range of apps 'with friends' -- sued Facebook for trade mark infringement for an app 'Bang with
Friends' -- Facebook's proceedings with the parody website lamebook.com -- UK-focused dating
website shagbook.com.
Subject: Social networking
SNIPER Bulletin – March 2014
Page 59 of 92
Subject: Intellectual property enforcement
SNIPER: 2014/00203
Author: Assim, Gary
Author: Joyce, Jo
Title: Social media scares
Source: Intellectual Property Magazine. September 2013, pp. 45-46.
Summary: Essence of social media -- exchange of user-generated content on the internet by
individuals and companies -- creates legal issues most of which are related to intellectual property
law -- corporate use of social media comes with legal risks and potential pitfalls -- brandjacking -cut and paste infringement -- trademark and copyright infringement on social media -- users are
often unaware of the results of their actions -- essential that employees understand the brand's
rules and policies on engaging with social media -- importance of an internet usage policy and
possibly a separate social media policy -- regular training for employees -- company obligations
under the Data Protection Act -- customer service on social media -- main points for companies to
consider when using social media.
Subject: User-generated content--liability
Subject: Brand management
SNIPER: 2014/00216
Author: Glas, Geert Valerie Beni
Title: Sound decisions?
Source: Intellectual Property Magazine. September 2013, pp. 75-76.
Summary: Amazon.com v Austro-Mechana -- Court of Justice of the European Union (CJEU) -levies for the private use of copyrighted materials subject of debate -- Information Society Directive
allowed member states to set up a system granting an exception for private use -- government
proposal instating a private copying exception for individual, private and non-commercial copies of
lawfully acquired content -- government does not have a private copying levy in mind -- Padawan v
SGAE -- recent case law -- maintaining a fair balance.
Subject: Copyright levies--Europe
Subject: Fair use (Copyright)--case law--Europe
SNIPER: 2014/00332
Author: Ng-Loy, Wee Loon
Title: The story of Singapore's intellectual property journey: 1965-2013
Source: WIPO Journal. Vol. 5 No. 1, 2013, pp. 127-135.
Summary: Historical evolution of the IP laws of Singapore -- three stages of economic
development -- 1965-1989 (towards an industrialised economy) -- 1990-1999 (towards a globalised
economy) -- intensive competition from neighbouring countries -- strategies to promote the service
sector together with manufacturing -- deepen the technology base and create an "external"
economy through globalisation -- policy makers believed a solid IP infrastructure, particularly a
sound patent system was needed to achieve this goal -- Patents Act 1994 modelled on the UK
patents Act 1977 -- 2000 and beyond (towards a knowledge-based economy) -- moving
Singapore's manufacturing sector further up the value chain to become more knowledge- and
research-intensive -- maturing of IP infrastructure in Singapore.
SNIPER Bulletin – March 2014
Page 60 of 92
Subject: Intellectual property systems--history--Singapore
SNIPER: 2014/00134
Author: Jackson, Tim
Title: Streamlining patent applications down under
Source: Intellectual Property Magazine. December 2013-January 2014, p. 42.
Summary: Single application process (SAP) and single examination process (SEP) for New
Zealand and Australian patent applications -- part of the wider Single Economic Market outcomes
framework -- applies to commercial activity conducted in the two countries -- designed to reduce
duplication -- create efficiency -- reduce compliance costs through shared resources and expertise
-- under the SAP, applicants can apply for patent protection simultaneously in Australia and New
Zealand -- under the SEP, a single examiner will examine both applications according to the
respective laws and two separate and independent patents will ultimately be granted -- difficult to
predict whether the benefits expected will be achieved -- impact on costs to applicants -- benefits
to applicants of the SEP during prosecution -- differences in patentability criteria -- differing legal
requirements.
Subject: Patent applications--reform--Australia
Subject: Patent examination--reform--Australia
Subject: Patents--reform--New Zealand
SNIPER: 2013/02461
Author: Batakliev, Dimitar
Title: Supplementary protection certificates in Europe: transitional regime
Source: IIC: International Review of Intellectual Property and Competition Law. Vol. 44 No. 7,
November 2013, pp. 750-764.
Summary: Transitional provisions of European Council Regulation concerning the creation of a
supplementary protection certificate for medicinal products -- rationale and structure of the
provisions concerning the initial entry into force of the Regulation -- enlargement of the EU and the
conflict with existing national regimes for extended patent protection -- analysis of the Community
legislation in the light of the national law of the Member States and the case law of the European
Court of Justice.
Subject: Patent extension--law and legislation--Europe
SNIPER: 2014/00319
Author: Yu, Peter K.
Title: Taking ATRIP down memory lane
Source: WIPO Journal. Vol. 4, No. 2, 2013, pp. 278-289.
Summary: International Association for the Advancement of Teaching and Research in Intellectual
Property (ATRIP) -- instrumental role in both the formation World Intellectual Property Organization
(WIPO) in the formation of ATRIP -- development of intellectual property as a field of teaching and
research -- documents the historical origins and noted accomplishments of the transnational
professional academic organisation -- participation of Chinese scholars -- conference of law
professors of intellectual property -- attendees at various historical conferences, roundtables,
charter meetings, annual meetings and congresses.
Subject: International Association for the Protection of Intellectual Property
SNIPER Bulletin – March 2014
Page 61 of 92
Subject: Professional bodies (intellectual property)
SNIPER: 2013/02957
Author: Beverley-Smith, Huw
Author: Barrow, Liddy
Title: Talk that tort ... of passing off: Rihanna and the scope of actionable misrepresentation: Fenty
v Arcadia Group Brands Ltd (t/a Topshop)
Source: European Intellectual Property Review. Vol. 36 No. 1, 2014, pp. 57-61.
Summary: Fenty v Arcadia Group Brands Ltd (t/a Topshop) -- unauthorised use of the pop star
Rihanna's image on a T-shirt -- development of the law of passing off in relation to the protection of
personality rights -- misrepresentation -- extent of protection afforded by the English courts -damage to promotional goodwill -- implications of the decision.
Subject: Passing-off--case law--United Kingdom
Subject: Personality rights--United Kingdom
SNIPER: 2014/00294
Author: Ball, Jonathan
Title: Teva's record of previous 'at risk' launches before patent expiry is deemed relevant to
whether an injunction should now be ordered against it: Merck Sharp Dohme Corp and Another v
Teva Pharma BV and Another
Source: Bio-Science Law Review. Vol. 13 No. 4, 2013, pp. 147-150.
Summary: Decision by the High Court in the United Kingdom -- whether to grant an interim
injunction to the prevent the defendant from launching a product prior to the expiry of the
patentee's supplementary protection certificate (SPC) -- generic version of the patented drug
Efavirenez -- Teva was actively considering committing an act of patent infringement -- parties'
position and evidence -- judge's conclusions from the evidence -- 'quia timet' -- analysis of the
decision -- interplay between commercial sensitivities of a generic's launch plans and the need to
keep these confidential -- patent risk it faces when these plans are interpreted to contemplate a
possible at risk pre-patent expiry launch.
Subject: Pharmaceuticals--law and legislation--United Kingdom
Subject: Patent extension--case law--United Kingdom
SNIPER: 2014/00119
Author: Guthrie, Robert
Author: Yang, Hua
Title: Third time's a charm
Source: Intellectual Property Magazine. December 2013-January 2014, p. 12.
Summary: National People's Congress passed the Third Amendment to the People's Republic of
China Trademark Law -- legal framework and infrastructure in China has been improving -provisions in the revised trade mark law will be welcomed by international brand owners -expected to lead to a more favourable enforcement environment in China -- improve the efficiency
of the trade mark application and registration procedures -- concerns about some of the proposed
amendments to opposition procedures -- changes designed to deter infringement do not go far
enough.
SNIPER Bulletin – March 2014
Page 62 of 92
Subject: Trade mark systems--reform--China
Subject: Trade marks--law and legislation--China
SNIPER: 2014/00277
Author: Ghalamkarizadeh, Anthonia
Title: Third-party liability for information claims in trade mark infringement cases
Source: Journal of Intellectual Property Law and Practice. Vol. 9 No. 2, February 2014, pp. 99100.
Summary: German Federal Supreme Court referred question to the Court of Justice of the
European Union (CJEU) on whether the rights of trade mark owners overrule banking secrecy -Davidoff Hot Water, Bundesgerichtshof -- Directive 2004/48 -- legislation specifies that right owners
can enforce information claims against infringers and certain third parties with commercial
connections to the infringement -- Article 19(2)(1) No 3 of the German Trade Mark Act -- fragrance
purchased on eBay -- product counterfeit -- attempt to identify the seller -- information claim
against savings bank -- lower court decisions -- confidentiality obligations in banking -- preliminary
view of the German court is that the trade mark owners' rights prevail -- possible outcome.
Subject: Trade mark infringement--case law--Germany
Subject: Privacy--financial services industry--Germany
SNIPER: 2014/00213
Author: Vogel, Bryan J.
Author: McFarlane, Matthew B.
Title: Timing is everything
Source: Intellectual Property Magazine. September 2013, pp. 68-70.
Summary: Federal Circuit endorsed the potential for different outcomes in the United States
Patent and Trademark Office (USPTO) and in district court patent litigation -- in certain
circumstances, a later outcome obtained at the USPTO can override and void a district court's
adjudication of a lawsuit -- Fresenius USA, Inc v Baxter International, Inc -- highlights how a patent
holder's fortune might change depending on the timing and nature of a decision from a district
court or the USPTO -- the Baxter II case -- Baxter II's forecast -- Baxter II illustrates that parallel
proceedings raise the possibility of inconsistent outcomes and create a race to judgment -- in a
second forum, may destroy patent rights confirmed in a first forum.
Subject: Patent litigation--United States
Subject: Patent validity--case law--United States
SNIPER: 2013/02952
Author: Chen, Ping-Hsun
Title: To submit "confidential" prior art documents or not, that is the question: conflicts of interest in
representing two clients from related industries for patent prosecution
Source: European Intellectual Property Review. Vol. 36 No. 1, 2014, pp. 14-21.
Summary: Conflicts of interest -- what extent a patent attorney can disclose to the USPTO the
prior art documents learned from non-applicant clients -- legal theories related to the existence of
conflicts of interest in representing two clients from related industries -- ethical rules governing the
attorney-client relationship -- violation of the confidentiality duty is established when the prior art
documents are submitted -- grey area of the violation of the duty of confidentiality -- implementing a
SNIPER Bulletin – March 2014
Page 63 of 92
technology-oriented system for collecting prior art documents learned from different clients is
necessary.
Subject: Inventive step--United States
Subject: Trade secrets
SNIPER: 2014/00149
Author: Cox, Paul
Author: Berry, David
Title: Top tips to reduce the cost of IP litigation
Source: Intellectual Property Magazine. December 2013-January 2014, pp. 77-79.
Summary: United Kingdom is an expensive jurisdiction to litigate -- UK government has introduced
changes to make the courts more affordable -- avoiding disputes -- securing comprehensive rights
-- enforcing rights -- shop around -- funding and insurance options -- effective preparation and
developing a strategy -- select forum -- putting forward offers for settlement -- case management -determine the case without a trial.
Subject: Intellectual property litigation--costs--United Kingdom
SNIPER: 2012/00967
Added author: IP Australia
Title: Toward a stronger and more efficient IP rights system: proposed reforms
Source: Towards a Stronger and More Efficient IP Rights System: Proposed Reforms. November
2009.
General Note: First in a series of two second-round consultation papers. See also: 2012/00968.
Summary: Reforms to Australia's intellectual property system, primarily the patent system -second round of consultation -- first of two papers setting out the detail of proposed changes
discussed in the series of seven consultation papers released by IP Australia between March and
August 2009 -- paper divided into five sections, corresponding with a first-round consultation paper
-- explains how IP Australia intends to progress each of the proposals put forward in the first-round
consultation papers -- gives details of the specific solutions proposed -- summarises issues raised
in submissions to the first-round-papers -- seeks views on the detail of the revised proposals -released with draft drafting instructions for an Intellectual Property Laws Amendment Bill -- led
ultimately to the Intellectual Property Laws Amendment (Raising the Bar) Act 2012.
Subject: Australia. Intellectual Property Laws Amendment (Raising the Bar) Act 2012
Subject: Intellectual property systems--reform--Australia
SNIPER: 2012/00968
Added author: IP Australia
Title: Towards a stronger and more efficient IP rights system: proposed reforms
Source: Towards a Stronger and More Efficient IP Rights System: Proposed Reforms. December
2009.
General Note: Second in a series of two second-round consultation papers. See also: 2012/00967
Summary: Reforms to Australia's intellectual property system -- second-round of consultation -second of two papers setting out the detail of proposed changes discussed in the series of seven
consultation papers released by IP Australia in March, June and August 2009 -- paper divided into
SNIPER Bulletin – March 2014
Page 64 of 92
two sections, corresponding with a first-round consultation paper -- explains how IP Australia
intends to progress each of the proposals put forward in the first-round consultation papers -- gives
details of the specific solutions proposed -- summarises issues raised in submissions to the firstround-papers -- seeks views on the detail of the revised proposals -- released with draft drafting
instructions for an Intellectual Property Laws Amendment Bill -- led ultimately to the Intellectual
Property Laws Amendment (Raising the Bar) Act 2012
Subject: Australia. Intellectual Property Laws Amendment (Raising the Bar) Act 2012
Subject: Intellectual property systems--reform--Australia
Subject: Patent systems--reform--Australia
SNIPER: 2013/02953
Author: Gibbons, Glen, barrister-at-law
Title: Trade mark remedies in the United Kingdom and Ireland: recent developments
Source: European Intellectual Property Review. Vol. 36 No. 1, 2014, pp. 22-28.
Summary: Overview of the IP Enforcement Directive -- impact on UK and Irish law -- article
analyses recent judgments that have assessed the compatibility of existing remedies with the
requirements of the Directive and the ECHRIEU Charter -- other injunctive issues -- use of general
orders in granting final injunctive relief -- use of survey evidence.
Subject: Infringement remedies--Europe
Subject: Intellectual property infringement--law and legislation--Europe
Subject: Injunctions--Europe
SNIPER: 2013/02796
Author: Chen, Tim
Title: Trademark protection with DNS data: taking cues from network security
Source: Trademarks Brands and the Internet. Vol. 2 No. 3, 2013, pp. 32-33.
Summary: Investigation and monitoring of security breaches and cyber-attacks -- brand protection
online -- research to gather evidence for prosecution -- most attacks leave network signatures -domain name system (DNS) and Whois data can help identify those behind the attacks -- ways
DNS data can be useful to brand protection professionals
Subject: Brand management
Subject: Domain names
Subject: Trade mark owners' rights
SNIPER: 2014/00129
Author: Birchall, David
Title: Trademark protection with extra bite
Source: Intellectual Property Magazine. December 2013-January 2014, pp. 32-33.
Summary: Application by Ludwig Schokolade, to have the European Community trade mark
registration granted to Mars, over the shape of its "Bounty" bar cancelled -- lack of distinctive
character -- Société des Produits Nestlé defending similar attacks on its trade mark protection for
the shape of its "Kit Kat" -- Nestlé successfully defended the cancellation action brought by
Cadbury against its European Community registration -- failed to defend a parallel opposition by
SNIPER Bulletin – March 2014
Page 65 of 92
Cadbury against its application to register the same shape as a UK trade mark -- issue was
whether or not Nestlé's mark was merely "functional" -- Lindt & Sprüngli fought to protect the shape
of its ribbon wearing rabbit as a trade mark -- devoid of distinctive character -- Cadbury's colour
purple -- Mattel's UK trade mark registration of a tile from its board game "Scrabble" -- Court of
Appeal's decision in each case hinged on the way in which these marks had been described by
their owners on the official application forms filed at the outset -- one of the UK Appeal judges’
attempted to provide some judicial guidance on the type of wording that might have achieved the
necessary level of precision.
Subject: Non-traditional marks--case law--Europe
Subject: Trade mark distinctiveness
SNIPER: 2014/00138
Author: Healey, Philippe
Title: Trademark shopping in China
Source: Intellectual Property Magazine. December 2013-January 2014, pp. 50-51.
Summary: Bad faith trade mark registrations are a problem European companies encounter in
China -- commonly involves a Chinese company first registering the trade mark of a foreign
company in China with the intention of selling it back to the foreign company at an inflated price -prior registrations can limit the foreign company's freedom to operate by restricting its ability to
enter the China market or to source goods from China -- importance of sound knowledge of
available instruments to protect intellectual property -- key reasons for spending money on
registering trade marks -- legal for the owner of a registered trade mark to sell it -- in China there is
an internet-based platform for selling trade marks -- Trademark Law of China outlines what action
to take concerning the revocation of disputed trade marks -- examples of bad faith registration -steps to take to protect yourself.
Subject: Trade mark ownership--China
Subject: Trade mark cancellation--China
SNIPER: 2014/00353
Author: Mendonça, Sandro
Author: Pereira, Tiago Santos
Author: Godinho, Manuel Mira
Title: Trademarks as an indicator of innovation and industrial change
Source: Research Policy. Vol. 33 No. 9, November 2004, pp. 1385-1404.
Summary: Testing trade marks as an indicator of product innovation activity and as a measure
correlated with structural change -- reasons for using indicators based on trade marks in innovation
studies -- link between innovation and trade marking -- advantages and disadvantages of trade
marks as a product innovation indicator -- sources of trade mark information -- empirical analysis of
data from a study of community trade marks (CTM) -- analysis of more detailed data on trade
marking trends in Portugal -- whether trade mark data can contribute to understanding why some
countries grow faster than others -- further research needed
Subject: Innovation (Technological)--analysis
Subject: Trade marks--trends
SNIPER: 2014/00247
SNIPER Bulletin – March 2014
Page 66 of 92
Author: Rippon, Matthew J.
Title: Traditional foods, territorial boundaries and the TRIPS Agreement: the case of the Melton
Mowbray pork pie
Source: Journal of World Intellectual Property. Vol. 16 No. 5-6, November 2013, pp. 262-301.
Summary: Pork pies from the town of Melton Mowbray -- became a Geographical Indication (GI)
in 2009 -- Melton Mowbray Pork Pie Association (MMPPA), formed to obtain GI status, was
founded as long ago as 1998 -- GI model that operates in the European Union (EU) -- Articles 22,
23 and 24 of the Trade Related Aspects of Intellectual Property Rights (TRIPS) Agreement are
actualised through the national legislation of each World Trade Organization (WTO) member -occurred in the EU at the time of the Melton Mowbray example -- material gleaned from interviews
with the Melton Mowbray producers and Chairman of the MMPPA -- transcripts of the legal conflict
which pitted the MMPPA against a powerful rival manufacturer -- conceptual and legal
infrastructure that is common to all GIs -- constructions of place, boundaries and tradition that are
deployed to generate GIs and legitimise the system -- intricacies and nuances of the GI model can
result in differing interpretations of these notions and thus lead to legal challenges from aggrieved
producers.
Subject: Agreement on Trade-Related Aspects of Intellectual Property Rights (1994 April 15)
Subject: Geographical indicators
SNIPER: 2014/00187
Author: Burst, Elisabeth
Author: Draber, Camille
Title: Translate grate: the future of IP Translator
Source: Intellectual Property Magazine. September 2013, pp. 9-10.
Summary: IP Translator decision (IPT) -- highlighted problems associated with the coexistence of
national trade marks and practices and community trade marks (CTM) and practices -- decision
has shown significant limitations that exist when it comes to harmonising law throughout Europe -IPT decision concerns the definition and contents of the general class headings -- whether or not to
include "isolated products" under a general class heading -- two-tier system -- major consequences
of the IPT decision and of the subsequent communications of the Office for Harmonization in the
Internal Market (OHIM) or the various national offices are best reflected in the oppositions -availability search -- revocation for non-use -- filing -- renewal -- conversion of a CTM into a
national trade mark.
Subject: Trade mark opposition
Subject: Trade mark classification
SNIPER: 2014/00244
Author: Marsoof, Althaf
Title: The TRIPs compatibility of Australia's tobacco plain packaging legislation
Source: Journal of World Intellectual Property. Vol. 16 No. 5-6, November 2013, pp. 197-217.
Summary: Negative health consequence of tobacco use -- tobacco has become part of legitimate
trade -- livelihoods in countries that export tobacco heavily depend on trade in tobacco -- could
governments intervene on health and public policy grounds and regulate the manner in which
tobacco products are marketed and sold? -- Australia's Tobacco Plain Packaging Act 2011 (Cth), is
currently under attack in several fronts -- World Trade Organisation -- question of the legality of
government intervention in totally prohibiting the striking elements of tobacco packaging from a
SNIPER Bulletin – March 2014
Page 67 of 92
purely international trade mark law point of view -- scope of trade mark protection as set out in the
Agreement on the Trade Related Aspects of Intellectual Property Rights (TRIPs) -- Australian plain
packaging law in the context of its own trade mark legislation -- whether Australian plain packaging
legislation complies with the core provisions on trade mark protection enshrined in TRIPs -- a
possible compromise to reconcile the competing interests.
Subject: Agreement on Trade-Related Aspects of Intellectual Property Rights (1994 April 15)
Subject: Trade mark owners' rights--manufacturing and processing industry--Australia
Subject: Trade dress--law and legislation--Australia
SNIPER: 2013/02792
Title: TV streaming: can legislation ever keep pace?
Source: Trademarks Brands and the Internet. Vol. 2 No. 3, 2013, pp. 16-18.
Summary: Changing the way we watch TV -- Aereo case in the United States -- service found not
to infringe copyright of major broadcasters such as Disney and Fox -- broadcasters' rights -- UK
service TVCatchup -- streaming of free-to-air programs -- a global standard? – the future
Subject: Television broadcasts
Subject: Copyright infringement--case law
Subject: Neighbouring rights
SNIPER: 2013/02910
Title: The twentieth annual international review of trademark jurisprudence: Australia
Source: Trademark Reporter. Vol. 103 No. 3, 2013, pp. 572-582.
General Note: See also related articles: 2013/02911-2013/02942
Summary: Trade mark case law 2012 -- Australia -- likelihood of confusion -- similarity of marks -parallel imports -- grey marketing -- descriptive use -- injunction -- non-use
Subject: Trade marks--case law--Australia
SNIPER: 2013/02911
Title: The twentieth annual international review of trademark jurisprudence: Austria
Source: Trademark Reporter. Vol. 103 No. 3, 2013, pp. 582-593.
General Note: See also related articles: 2013/02910-2013/02942
Summary: Trade mark case law 2012 -- Austria -- likelihood of confusion -- inherent
distinctiveness -- bad faith -- slogans -- geographical indications -- appellations of origin -- flags,
coats of arms and other insignia -- passing off -- cybersquatting -- sponsored advertising -keywords -- infringement of unregistered trade marks -- detriment and unfair advantage -- fair use - good faith
Subject: Trade marks--case law--Austria
SNIPER: 2013/02912
Title: The twentieth annual international review of trademark jurisprudence: Brazil
Source: Trademark Reporter. Vol. 103 No. 3, 2013, pp. 593-598.
General Note: See also related articles: 2013/02910-2013/02942
SNIPER Bulletin – March 2014
Page 68 of 92
Summary: Trade mark case law 2012 -- Brazil -- famous and well-known marks -- personal names
-- dilution -- parallel imports and grey marketing -- cancellation
Subject: Trade marks--case law--Brazil
SNIPER: 2013/02913
Title: The twentieth annual international review of trademark jurisprudence: Canada
Source: Trademark Reporter. Vol. 103 No. 3, 2013, pp. 598-623.
General Note: See also related articles: 2013/02910-2013/02942
Summary: Trade mark case law 2012 -- Canada -- merely descriptive -- deceptively misdescriptive
-- distinctiveness -- similarity of marks -- similarity of goods and services -- trade dress and
packaging -- requirements for acceptable filings -- official marks -- non-traditional marks -infringement and other forms of unfair competition -- infringement of right of publicity -- injunction -non-use -- cancellation -- forum conflicts
Subject: Trade marks--case law--Canada
SNIPER: 2013/02914
Title: The twentieth annual international review of trademark jurisprudence: China
Source: Trademark Reporter. Vol. 103 No. 3, 2013, pp. 623-625.
General Note: See also related articles: 2013/02910-2013/02942
Summary: Trade mark case law 2012 -- China -- assignment
Subject: Trade marks--case law--China
SNIPER: 2013/02915
Title: The twentieth annual international review of trademark jurisprudence: Colombia
Source: Trademark Reporter. Vol. 103 No. 3, 2013, pp. 625-626.
General Note: See also related articles: 2013/02910-2013/02942
Summary: Trade mark case law 2012 -- Colombia -- likelihood of confusion – registrability
Subject: Trade marks--case law--Colombia
SNIPER: 2013/02916
Title: The twentieth annual international review of trademark jurisprudence: Community trade mark
Source: Trademark Reporter. Vol. 103 No. 3, 2013, pp. 627-641.
General Note: See also related articles: 2013/02910-2013/02942
Summary: Trade mark case law 2012 -- Community trade mark -- descriptiveness -- personal
names -- two- and three-dimensional marks -- primarily or aesthetically functional -- passing off -detriment and unfair advantage -- good faith -- absence of wilful intent -- prior use -- declaration of
invalidity -- evidence
Subject: Trade marks--case law--Europe
SNIPER: 2013/02917
Title: The twentieth annual international review of trademark jurisprudence: Costa Rica
SNIPER Bulletin – March 2014
Page 69 of 92
Source: Trademark Reporter. Vol. 103 No. 3, 2013, pp. 641-644.
General Note: See also related articles: 2013/02910-2013/02942
Summary: Trade mark case law 2012 -- Costa Rica -- merely descriptive -- famous and wellknown marks -- geographical indications and appellations of origin
Subject: Trade marks--case law--Costa Rica
SNIPER: 2013/02918
Title: The twentieth annual international review of trademark jurisprudence: Court of Justice of the
European Union (CJEU)
Source: Trademark Reporter. Vol. 103 No. 3, 2013, pp. 644-657.
General Note: See also related articles: 2013/02910-2013/02942
Summary: Trade mark case law 2012 -- CJEU -- trade mark use -- distinctiveness -- inherent
distinctiveness -- acquired distinctiveness -- requirements for acceptable filings -- identification of
goods or services -- dilution -- declaration of invalidity -- jurisdiction and authority
Subject: Trade marks--case law--Europe
SNIPER: 2013/02919
Title: The twentieth annual international review of trademark jurisprudence: Czech Republic
Source: Trademark Reporter. Vol. 103 No. 3, 2013, pp. 657-660.
General Note: See also related articles: 2013/02910-2013/02942
Summary: Trade mark case law 2012 -- Czech Republic -- licensing -- domain names -jurisdiction and authority
Subject: Trade marks--case law--Czech Republic
SNIPER: 2013/02920
Title: The twentieth annual international review of trademark jurisprudence: France
Source: Trademark Reporter. Vol. 103 No. 3, 2013, pp. 660-665.
General Note: See also related articles: 2013/02910-2013/02942
Summary: Trade mark case law 2012 -- France -- generic use -- acquisition of trade mark rights -enforcement -- infringement and other forms of unfair competition -- non-use
Subject: Trade marks--case law--France
SNIPER: 2013/02921
Title: The twentieth annual international review of trademark jurisprudence: Hungary
Source: Trademark Reporter. Vol. 103 No. 3, 2013, pp. 665-666.
General Note: See also related articles: 2013/02910-2013/02942
Summary: Trade mark case law 2012 -- Hungary -- unfair, unauthorized, or improper use of a
trade mark
Subject: Trade marks--case law--Hungary
SNIPER Bulletin – March 2014
Page 70 of 92
SNIPER: 2013/02922
Title: The twentieth annual international review of trademark jurisprudence: India
Source: Trademark Reporter. Vol. 103 No. 3, 2013, pp. 667-669.
General Note: See also related articles: 2013/02910-2013/02942
Summary: Trade mark case law 2012 -- India -- generic use -- exhaustion of trade mark rights
Subject: Trade marks--case law--India
SNIPER: 2013/02923
Title: The twentieth annual international review of trademark jurisprudence: Indonesia
Source: Trademark Reporter. Vol. 103 No. 3, 2013, pp. 669-670.
General Note: See also related articles: 2013/02910-2013/02942
Summary: Trade mark case law 2012 -- Indonesia -- similarity of marks
Subject: Trade marks--case law--Indonesia
SNIPER: 2013/02924
Title: The twentieth annual international review of trademark jurisprudence: Iran
Source: Trademark Reporter. Vol. 103 No. 3, 2013, pp. 670-671.
General Note: See also related articles: 2013/02910-2013/02942
Summary: Trade mark case law 2012 -- Iran -- distinctiveness of mark
Subject: Trade marks--case law--Iran
SNIPER: 2013/02925
Title: The twentieth annual international review of trademark jurisprudence: Ireland
Source: Trademark Reporter. Vol. 103 No. 3, 2013, pp. 671-672.
General Note: See also related articles: 2013/02910-2013/02942
Summary: Trade mark case law 2012 -- Ireland -- passing off
Subject: Trade marks--case law--Ireland
SNIPER: 2013/02926
Title: The twentieth annual international review of trademark jurisprudence: Israel
Source: Trademark Reporter. Vol. 103 No. 3, 2013, pp. 673-679.
General Note: See also related articles: 2013/02910-2013/02942
Summary: Trade mark case law 2012 -- Israel -- likelihood of confusion -- similarity of marks -two- and three-dimensional marks -- sponsored advertising and keywords -- damages
Subject: Trade marks--case law--Israel
SNIPER: 2013/02927
Title: The twentieth annual international review of trademark jurisprudence: Italy
SNIPER Bulletin – March 2014
Page 71 of 92
Source: Trademark Reporter. Vol. 103 No. 3, 2013, pp. 679-683.
General Note: See also related articles: 2013/02910-2013/02942
Summary: Trade mark case law 2012 -- Italy -- bad faith -- infringement and other forms of unfair
competition -- counterfeiting -- disclaimer
Subject: Trade marks--case law--Italy
SNIPER: 2013/02928
Title: The twentieth annual international review of trademark jurisprudence: Jordan
Source: Trademark Reporter. Vol. 103 No. 3, 2013, pp. 683-685.
General Note: See also related articles: 2013/02910-2013/02942
Summary: Trade mark case law 2012 -- Jordan -- personal names -- corporate and trade names
Subject: Trade marks--case law--Jordan
SNIPER: 2013/02929
Title: The twentieth annual international review of trademark jurisprudence: Mexico
Source: Trademark Reporter. Vol. 103 No. 3, 2013, pp. 685-686.
General Note: See also related articles: 2013/02910-2013/02942
Summary: Trade mark case law 2012 -- Mexico -- letters of consent
Subject: Trade marks--case law--Mexico
SNIPER: 2013/02930
Title: The twentieth annual international review of trademark jurisprudence: New Zealand
Source: Trademark Reporter. Vol. 103 No. 3, 2013, pp. 686-692.
General Note: See also related articles: 2013/02910-2013/02942
Summary: Trade mark case law 2012 -- New Zealand -- distinctiveness -- similarity of marks -sponsored advertising and keywords -- whether confusion matters if the infringing mark is identical
to a registered mark -- breach of undertaking -- international issues -- tobacco plain packaging laws
Subject: Trade marks--case law--New Zealand
SNIPER: 2013/02931
Title: The twentieth annual international review of trademark jurisprudence: Peru
Source: Trademark Reporter. Vol. 103 No. 3, 2013, pp. 693-694.
General Note: See also related articles: 2013/02910-2013/02942
Summary: Trade mark case law 2012 -- Peru -- domain names
Subject: Trade marks--case law--Peru
SNIPER: 2013/02932
Title: The twentieth annual international review of trademark jurisprudence: Philippines
Source: Trademark Reporter. Vol. 103 No. 3, 2013, pp. 694-695.
SNIPER Bulletin – March 2014
Page 72 of 92
General Note: See also related articles: 2013/02910-2013/02942
Summary: Trade mark case law 2012 -- Philippines -- likelihood of confusion
Subject: Trade marks--case law--Philippines
SNIPER: 2013/02933
Title: The twentieth annual international review of trademark jurisprudence: Poland
Source: Trademark Reporter. Vol. 103 No. 3, 2013, pp. 695-701.
General Note: See also related articles: 2013/02910-2013/02942
Summary: Trade mark case law 2012 -- Poland -- similarity of marks -- bad faith -- geographical
names -- letters of consent -- evidence
Subject: Trade marks--case law--Poland
SNIPER: 2013/02934
Title: The twentieth annual international review of trademark jurisprudence: Russia
Source: Trademark Reporter. Vol. 103 No. 3, 2013, pp. 702-703.
General Note: See also related articles: 2013/02910-2013/02942
Summary: Trade mark case law 2012 -- Russia -- detriment and unfair advantage
Subject: Trade marks--case law--Russia
SNIPER: 2013/02935
Title: The twentieth annual international review of trademark jurisprudence: Singapore
Source: Trademark Reporter. Vol. 103 No. 3, 2013, pp. 703-706.
General Note: See also related articles: 2013/02910-2013/02942
Summary: Trade mark case law 2012 -- Singapore -- likelihood of confusion -- similarity of marks - passing off
Subject: Trade marks--case law--Singapore
SNIPER: 2013/02936
Title: The twentieth annual international review of trademark jurisprudence: Republic of South
Africa
Source: Trademark Reporter. Vol. 103 No. 3, 2013, pp. 706-708.
General Note: See also related articles: 2013/02910-2013/02942
Summary: Trade mark case law 2012 -- South Africa -- cancellation for non-use
Subject: Trade marks--case law--South Africa
SNIPER: 2013/02937
Title: The twentieth annual international review of trademark jurisprudence: South Korea
Source: Trademark Reporter. Vol. 103 No. 3, 2013, pp. 708-710.
General Note: See also related articles: 2013/02910-2013/02942
SNIPER Bulletin – March 2014
Page 73 of 92
Summary: Trade mark case law 2012 -- South Korea -- post-sale confusion
Subject: Trade marks--case law--Korea
SNIPER: 2013/02938
Title: The twentieth annual international review of trademark jurisprudence: Switzerland
Source: Trademark Reporter. Vol. 103 No. 3, 2013, pp. 710-712.
General Note: See also related articles: 2013/02910-2013/02942
Summary: Trade mark case law 2012 -- Switzerland -- geographically primarily descriptive -deceptively misdescriptive -- deceptive
Subject: Trade marks--case law--Switzerland
SNIPER: 2013/02939
Title: The twentieth annual international review of trademark jurisprudence: Turkey
Source: Trademark Reporter. Vol. 103 No. 3, 2013, pp. 712-713.
General Note: See also related articles: 2013/02910-2013/02942
Summary: Trade mark case law 2012 -- Turkey -- non-use
Subject: Trade marks--case law--Turkey
SNIPER: 2013/02940
Title: The twentieth annual international review of trademark jurisprudence: United Kingdom
Source: Trademark Reporter. Vol. 103 No. 3, 2013, pp. 713-717.
General Note: See also related articles: 2013/02910-2013/02942
Summary: Trade mark case law 2012 -- United Kingdom -- infringement and other forms of unfair
competition -- defences to infringement
Subject: Trade marks--case law--United Kingdom
SNIPER: 2013/02941
Title: The twentieth annual international review of trademark jurisprudence: Uruguay
Source: Trademark Reporter. Vol. 103 No. 3, 2013, pp. 717-718.
General Note: See also related articles: 2013/02910-2013/02942
Summary: Trade mark case law 2012 -- Uruguay -- cybersquatting
Subject: Trade marks--case law--Uruguay
SNIPER: 2013/02942
Title: The twentieth annual international review of trademark jurisprudence: Zambia
Source: Trademark Reporter. Vol. 103 No. 3, 2013, pp. 7178-720.
General Note: See also related articles: 2013/02910-2013/02941
Summary: Trade mark case law 2012 -- Zambia -- examination and opposition
Subject: Trade marks--case law--Zambia
SNIPER Bulletin – March 2014
Page 74 of 92
SNIPER: 2014/00302
Author: Kerr, William R.
Added author: World Intellectual Property Organization
Title: U.S. high-skilled immigration, innovation and entrepreneurship: empirical approaches and
evidence
Source: WIPO Economic Research Working Paper. No. 16, January 2014.
General Note: Also published as NBER working paper no. 19377
Summary: High-skilled immigrants are an important component of United States innovation and
entrepreneurship -- immigrant contributions to US innovation and entrepreneurship: quantity -immigrant contributions to US innovation and entrepreneurship: quality -- impact for U.S.
employment, wages and innovation -- traditional approaches to defining labour markets -- new
frontiers on the labour market definitions -- role of the firm -- importance of place -- connections to
home countries -- return migration -- global migration of Science, Technology, Engineering, and
Mathematics (STEM) fields and occupations talent.
Subject: Inventors--analysis
Subject: Innovation (Technological)
SNIPER: 2014/00089
Author: Cole, Paul, 1946Title: The unacknowledged role of 35 USC 112 in the Myriad decisions
Source: CIPA: the journal, incorporating the 'Transactions', of the Chartered Institute of Patent
Agents. Vol. 42 No. 12, December 2013, pp. 708-712.
Summary: Supreme Court decision -- Myriad patent considered -- proceedings covered isolated
DNA coding for the wild-type BRCA1 gene -- disclosed only a partial sequence of the gene and did
not disclose its isolation as a free standing molecule -- genes are not patent eligible simply
because they have been isolated -- appears open to development in future cases and its relevance
is questioned -- what was disclosed and what was claimed -- full-length sequence patent eligibility
-- short segments -- infringement issues.
Subject: Patenting of life forms--case law--United States
Subject: Genes--patentability--United States
SNIPER: 2014/00093
Author: McAnulty, Timothy P.
Author: Tridico, Anthony C.
Title: Update on patent trials at the US Patent Trial and Appeal Board
Source: CIPA: the journal, incorporating the 'Transactions', of the Chartered Institute of Patent
Agents. Vol. 42 No. 12, December 2013, pp. 723-726.
Summary: New patent trials before the United States Patent and Trademark Office (USPTO)
contesting the validity of issued patents -- becoming a popular and useful tool in the US patent
strategy landscape -- Estoppel how much will there be -- settlements -- trends and statistics
building momentum -- SAP v Versata claims directed to a patent ineligible abstract idea -- Board's
first written decisions favourable to petitioners -- Garmin v Cuozzo -- claims obvious in view of two
multi-reference combinations.
SNIPER Bulletin – March 2014
Page 75 of 92
Subject: Experimental use (Patents)--United States
Subject: Patent systems--United States
SNIPER: 2014/00092
Author: Burns, Robert L.
Author: Menzie, Shaton C.
Author: Stroud, Jonathan R. K.
Title: US patent litigation system is undergoing major changes
Source: CIPA: the journal, incorporating the 'Transactions', of the Chartered Institute of Patent
Agents. Vol. 42 No. 12, December 2013, pp. 708-712.
Summary: Addressing the patent troll problem -- Innovation Act in the United States -- should this
bill become law the changes will address some of the most pressing problems that plague the
American patent systems -- fee shifting for the prevailing party - transparency of patent ownership - heightened pleading standards -- customer stays -- changes to challenging issued patents at the
USPTO -- codifying double patenting and terminal disclaimers.
Subject: Patent systems--reform--United States
Subject: Patent trolls--United States
SNIPER: 2014/00297
Author: Abud, María José
Author: Fink, Carsten
Author: Hall, Bronwyn H.
Author: Helmers, Christian
Added author: World Intellectual Property Organization
Title: The use of intellectual property in Chile
Source: WIPO Economic Research Working Paper. No. 11, July 2013.
Summary: Intellectual property system in Chile -- patterns and trends of intellectual property use in
Chile -- draws on data from a new database containing all patent, trade mark, utility model and
design filings received at the Chilean IP Office over the period 1991-2010 -insights into the drivers of filing growth, origins of filings, distribution of applicants, importance of
different applicant types -- share of filings by different economic sectors, relevance of IP bundles,
patenting behaviour of Chilean applicants overseas.
Subject: Patent filing--statistics--Chile
Subject: Intellectual property systems--Chile
Subject: Intellectual property management--statistics--Chile
SNIPER: 2013/02890
Author: Rares, Steven David, 1953Title: Using the "hot tub": how concurrent expert evidence aids understanding issues
Source: Intellectual Property Forum. No. 95, December 2013, pp. 28-36.
SNIPER Bulletin – March 2014
Page 76 of 92
Summary: Australian courts have the most experience with the "hot tub" method -- expert
witnesses give evidence concurrently -- explanation of the history of expert evidence, purpose and
technique and the technique's virtues -- cross examination is the traditional method of testing
expert evidence -- a short historical excursion -- concurrent evidence in practice -- some examples
of concurrent evidence -- criticisms of concurrent evidence -- overall experience of concurrent
evidence -- conclusion that concurrent evidence reduces the court's hearing time and works to
identify critical issues
Subject: Expert witnesses--Australia
Subject: Legal procedure--Australia
Subject: Evidence
SNIPER: 2013/02794
Title: Welcome to the Copyright Hub
Source: Trademarks Brands and the Internet. Vol. 2 No. 3, 2013, pp. 24-27.
Summary: UK government scheme seeking to simplify licensing of copyright online -- launch
group chairman Richard Hooper and colleague Ros Lynch report "Copyright works: streamlining
copyright licensing for the digital age" -- how it works -- recent Ofcom report "Online copyright
infringement tracker" found if internet users better understood what is legal and what is not, they
would cease infringing -- licensing -- difficulties -- future
Subject: Copyright--United Kingdom
Subject: Copyright licensing
Subject: Internet
SNIPER: 2014/00047
Author: Kirova, Binka
Title: Welcome to the museum....
Source: Journal of Intellectual Property Law and Practice. Vol. 8 No. 12, December 2013, pp. 946951.
Summary: Copying the images of famous paintings and the subsequent protection of that image
by obtaining a trade mark -- supplementary code 22.05.03 (famous paintings) and 22.05.01 (for
pictures) -- Vienna Classification of the Figurative Elements of Marks -- cultural heritage difficult
subject for international legal protection -- example of applicant /owner Kvibergs Marknad AB and
the finding of 130 results for images of world-famous pictures registered as trade marks -- different
examination practices by European states for the acceptance of painting image trade marks -suggestion that the International Council of Museums (ICOM) would be a suitable authority for
establishing methods of control for this area of intellectual property.
Subject: Artistic works--registrability--Europe
Subject: Trade mark registrability
Subject: Trade marks--harmonisation
SNIPER: 2014/00214
Author: O'Kelly, Eamon
Author: Matelski, Wayne H.
Author: Carlan, Janine A.
SNIPER Bulletin – March 2014
Page 77 of 92
Title: What future for Hatch-Waxman suits?
Source: Intellectual Property Magazine. September 2013, pp. 71-72.
Summary: Federal Trade Commission v Activis, Inc -- United States Supreme Court -- HatchWaxman Act -- a manufacturer of a brand-name prescription drug must list in the Food and Drug
Administration (FDA) 'Orange Book' patents that claim the drug -- primary purpose of HatchWaxman was to make it easier to bring generic drugs to market -- challenges to 'reverse payment'
settlements -- Actavis case -- analysis of the case.
Subject: Competition (Economics)--United States
Subject: Patent litigation--pharmaceutical industry--United States
SNIPER: 2014/00327
Author: Gómez-Arostegui, H. Tomás
Title: What history teaches us about US copyright land and statutory damages
Source: WIPO Journal. Vol. 5 No. 1, 2013, pp. 76-86.
Summary: Origin and history of intellectual property law -- doctrinal relevance -- statutory
damages in historical perspective -- placing "penalty" in the proper context -- historical principles -meaning of "penalty" -- Bill of Rights -- The 1909 Act -- The Supreme Court -- English copyright law
remains relevant as it continues to play a supporting role in modern doctrinal and normative
arguments over the nature and proper scope of US copyright law.
Subject: Copyright--law and legislation--United States
SNIPER: 2014/00130
Author: Stobbs, Julius
Author: Bains, Savan
Title: What now for UK colour trademark law?
Source: Intellectual Property Magazine. December 2013-January 2014, pp. 34-35.
Summary: The ability to protect colour in trade mark law in the UK has been brought into question
-- decision at the Court of Appeal in Société Des Produits Nestlé SA v Cadbury UK Limited -Cadbury lost its registration for its colour purple -- refusal related to the description defining the
colour mark -- exact visual presentation of the mark was uncertain -- gave Cadbury a competitive
advantage -- Cadbury's competitors put at a disadvantage -- new applications for colour marks -existing registrations for colour.
Subject: Trade marks--law and legislation--United Kingdom
Subject: Non-traditional marks--United Kingdom
SNIPER: 2014/00354
Author: Kur, Annette
Added author: Max-Planck-Institut für Immaterialgüter- und Wettbewerbsrecht
Title: What to protect, and how?: unfair competition, intellectual property, or protection sui generis
Source: Max Planck Institute for Intellectual Property and Competition Law Research Paper. No.
13-12, 14 May 2013.
Summary: Unfair competition and slavish imitation -- abuse of reputation -- place of unfair
competition in the legal system -- interface between intellectual property and unfair competition --
SNIPER Bulletin – March 2014
Page 78 of 92
unfair competition as an incubator for new IP rights -- coping with overlaps -- quest for a common
legal framework -- potential issues with a common framework.
Subject: Competition (Economics)--Europe
Subject: Intellectual property--Germany
Subject: Competition law—Europe
SNIPER: 2014/00061
Author: Rice, Troy
Title: What you need to know before transferring technology to China
Source: Managing Intellectual Property. No. 235, December 2013-January 2014, pp. 64-67.
Summary: Many companies want to transfer technology to China -- importance of understanding
the complex rules for doing so -- weigh up the pros and cons to their business -- companies have
different priorities when it comes to transferring technology -- some want to retain ownership of any
improvements made to the technology -- others want to maximise royalty income and minimise tax
liabilities -- technology owners can structure their technology transfer deals in different ways so as
to meet their objectives -- domestic technology contracts or cross-border arrangements -- different
laws and regulations apply to different deal structures -- vital that technology owners understand
the legal and commercial implications of their arrangements.
Subject: Technology transfer--law and legislation--China
Subject: International trade--China
SNIPER: 2014/00136
Author: Fox, Nicholas
Author: Thomas, Benjamin
Title: What's in a game?
Source: Intellectual Property Magazine. December 2013-January 2014, pp. 44-46.
Summary: Huge growth in the global video game market -- production and development of games
has become big business and increasingly complex -- complex works of authorship -- contain
multiple individual elements -- each element may be protected by copyright -- software may also be
patentable -- large teams of professionals have become involved in game development -- some of
whom may be considered as the author or inventor of the relevant work -- video games as unique
works -- different approaches to classification of video games in different jurisdictions -approaches to protection -- ensuring appropriate protection -- limitations of copyright -opportunities for patent protection -- benefits of design registrations.
Subject: Intellectual property rights--information technology industry
Subject: Multimedia works
SNIPER: 2014/00195
Author: Black, Ray
Author: England, Mark
Title: Which comes first: the design or the brand?
Source: Intellectual Property Magazine. September 2013, pp. 30-31.
SNIPER Bulletin – March 2014
Page 79 of 92
Summary: Intellectual property (IP) rights of most importance in terms of protecting the image and
brand of the fashion leaders of today -- consider which IP rights will deliver most value -- registered
IP rights provide a better result in terms of developing and building reputation and image and
deterring copycat designs -- litigation over lookalikes has been relatively rare for a number of
reasons -- developing brand value -- collaboration -- registered trade marks -- own names as trade
marks -- trade marks for logos -- shape of goods as a trade mark -- copyright protection -- design
protection -- Registered Community Design (RCD) -- RCD protection can be obtained relatively
easily and cheaply -- validity may be precarious when it comes to enforcement -- investing in the
brand through registered trade mark protection is likely to deliver the most value long term.
Subject: Intellectual property rights--fashion and design industry
Subject: Trade mark registration--fashion and design industry
SNIPER: 2014/00054
Author: Yu, George
Author: Harp, Jason
Title: Why biosimilars are being held back in the US
Source: Managing Intellectual Property. No. 235, December 2013-January 2014, pp. 26-29.
Summary: Biologics Price Competition and Innovation Act (BPCIA) -- introduced to help biosimilar
medicines come to market in the United States -- no producer has yet used it -- reasons include
the limitations of the BPCIA -- the higher cost of developing biosimilars -- means greater certainty
is required about the expiry of related patents -- first case to consider the BPCIA, launched by
Sandoz against Amgen, was recently decided -- court ruling against a declaration of noninfringement -- narrow interpretation of the BPCIA's provisions could drastically reduce biosimilar
producers' ability to launch litigation early.
Subject: Pharmaceuticals--United States
Subject: Patents--case law--United States
SNIPER: 2014/00057
Author: Brehm, Allison
Author: Diaz, Damaris
Title: Why CUTSA cuts out other trade secret claims
Source: Managing Intellectual Property. No. 235, December 2013-January 2014, pp. 50-52.
Summary: Plaintiffs alleging trade secret misappropriation in California can seek remedies under
California's Uniform Trade Secrets Act (CUTSA) -- places high burdens regarding staying
discovery -- plaintiffs therefore often include companion claims -- courts had to grapple with the
extent to which CUTSA supersedes such other claims -- a trend for non-CUTSA claims to be
dismissed -- courts have crafted tests to determine whether CUTSA supersedes non-contractual
civil claims -- different types of claims can be superseded -- even claims concerning information
that is confidential or proprietary, but not a trade secret, can be affected -- broad interpretation of
trade secret supersession is a strong tool for defendants -- requires plaintiffs to review their
litigation strategies.
Subject: Trade secrets--case law--United States
Subject: Trade secrets--law and legislation--United States
SNIPER: 2014/00308
SNIPER Bulletin – March 2014
Page 80 of 92
Author: Adewopo, Adebambo
Title: WIPO's new treaty and "new" copyright for audio-visual performers?: a pan-African
perspective
Source: WIPO Journal. Vol. 4, No. 2, 2013, pp. 206-219.
Summary: Beijing Treaty on Audiovisual Performances -- consequential extension of protection for
the first time of audiovisual performances in international copyright law -- Nollywood and Nigeria's
video film industry -- Nollywood's prominent position and rapid growth in the African and global film
markets -- reviews the Treaty with the extend Nigerian copyright law -- making of the treaty a
historical context -- doctrinal divergences of copyright systems -- the Copyright Act in context.
Subject: Beijing Treaty on Audiovisual Performances (2012 June 24)
Subject: Cinematographic works--treaties--Nigeria
Subject: Neighbouring rights--treaties--Nigeria
SNIPER: 2013/02793
Title: With bated breath: are brand owners ready for the new internet?
Source: Trademarks Brands and the Internet. Vol. 2 No. 3, 2013, pp. 20-23.
Summary: First sunrise period set to begin in October 2013 for new generic top level domain
names -- online infringement rise expected -- dealing with squatters -- Uniform Domain-Name
Dispute-Resolution Policy Dispute (UDRP) -- Uniform Rapid Suspension System (URS) -cybersquatting
Subject: Domain names
Subject: Brand management
Subject: Domain name registration
SNIPER: 2014/00117
Author: White, Catherine
Title: The year in review
Source: Intellectual Property Magazine. December 2013-January 2014, pp. 6-9.
Summary: Most significant cases of 2013 -- developments over the next twelve months -- patents
-- Schütz (UK) Ltd v Werit (UK) Ltd -- Association for Molecular Pathology v Myriad Genetics -Virgin Atlantic Airways Ltd v Zodiac Seats (UK) Ltd -- Merck & Co Inc and Merck Canada Inc v
Apotex Inc et al -- Sanofi-Aventis v Pfizer Inc -- trade marks -- Already LLC v Nike, Inc -Specsavers International Healthcare & Ors v Asda Stores Ltd -- Robyn Rihanna Fenty and Ors v
Arcadia Group Brands Ltd (t/a topshop) -- copyright -- SAS Institute Inc v World Programming Ltd - Kirtsaeng v John Wiley & Sons, Inc -- The Football Association Premier League Ltd v British Sky
Broadcasting Ltd & Ors -- The Authors Guild and Ors v Google Inc -- trade deals -- trade secrets -plain packaging -- gTLDs -- 3D printing -- UK IP Crime Unit -- EU licensing model -- patent troll
debate -- Unified Patent Court -- interplay between the US Patent and Trademark Office (USPTO)
and the courts -- rise in cross border disputes.
Subject: Intellectual property--case law
Subject: Intellectual property industry--trends
SNIPER Bulletin – March 2014
Page 81 of 92
© Commonwealth of Australia 2014
Published by: IP Australia
Discovery House, 47 Bowes Street, Phillip, ACT 2606
1300 65 10 10
www.ipaustralia.gov.au