SNIPER Bulletin
Searchable Networked Intellectual
Property Electronic Resource
September 2014
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ISSN: 2202-753X
SNIPER No.: 2014/01556
Author: Mendis, Dinusha Kishani
Title: 3D printing enters the fast lane
Source: Intellectual Property Magazine. June 2014, pp. 39-40.
Summary: Additive manufacturing or 3D printing -- ability to 3D print toys, jewellery, food, makeup, phone cases and smaller spare parts, within the comfort of one's home -- opened up new
possibilities -- raising a number of questions including those relating to intellectual property (IP)
laws -- introduction of the low-cost consumer 3D printers into supermarkets -- possible to print fast
moving consumer goods (FMCGs) -- issue is compounded by the emergence of 3D scanners -various issues and implications surrounding 3D printing and 3D scanning as it relates to FCMGs -what it means for IP law, in particular copyright law.
Subject: Three dimensional printing
Subject: Copyright--law and legislation
SNIPER No.: 2014/01691
Author: Burke, Shane Michael
Title: 5 Pointz down: the New York District Court ruling on 'Graffiti Mecca'
Source: Queen Mary Journal of Intellectual Property. Vol. 4 No. 3, July 2014, pp. 226-225.
Summary: New York aerosol artists use of a collection of buildings containing graffiti -- invoked
moral rights provision to prevent destruction of the buildings -- protection to creators of works of
visual art under the Visual Rights Artist Act (VARA) -- 5 Pointz Museum of Street Art -- graffiti and
the law -- Jonathan Cohen et al. v G&M Realty LP et al., Case No 13-CV-5612 (FB) (JMA) (EDNY
2013) -- decision recognised stature -- works duration -- refusal of injunctive relief -- highlights the
issue of how transient art is -- may come to demonstrate whether or not the application of VARA
does provide a practical working deterrent.
Subject: Moral rights--United States
Subject: Artistic works--United States
SNIPER No.: 2014/01331
Author: Freeman, Avi
Title: The 21st century patent attorney
Source: World Intellectual Property Review. Annual, 2014, pp. 14-16.
Summary: Role of the patent attorney -- change of the profession -- understanding the business
and informed from the start -- new inventions -- technical or commercial problem (or both) -- where
to file -- what to file -- registered designs -- risks of third party IP -- non-practicing entities -- conflict
in patents -- help make important commercial decisions with an understanding of the IP risks.
Subject: Patent attorneys
SNIPER No.: 2014/01538
Author: Wallis, Chelsea
SNIPER No.: 2014/01556
Author: Mendis, Dinusha Kishani
Title: 3D printing enters the fast lane
SNIPER Bulletin – September 2014
Page 2 of 76
Source: Intellectual Property Magazine. June 2014, pp. 39-40.
Summary: Additive manufacturing or 3D printing -- ability to 3D print toys, jewellery, food, makeup, phone cases and smaller spare parts, within the comfort of one's home -- opened up new
possibilities -- raising a number of questions including those relating to intellectual property (IP)
laws -- introduction of the low-cost consumer 3D printers into supermarkets -- possible to print fast
moving consumer goods (FMCGs) -- issue is compounded by the emergence of 3D scanners -various issues and implications surrounding 3D printing and 3D scanning as it relates to FCMGs -what it means for IP law, in particular copyright law.
Subject: Three dimensional printing
Subject: Copyright--law and legislation
SNIPER No.: 2014/01691
Author: Burke, Shane Michael
Title: 5 Pointz down: the New York District Court ruling on 'Graffiti Mecca'
Source: Queen Mary Journal of Intellectual Property. Vol. 4 No. 3, July 2014, pp. 226-225.
Summary: New York aerosol artists use of a collection of buildings containing graffiti -- invoked
moral rights provision to prevent destruction of the buildings -- protection to creators of works of
visual art under the Visual Rights Artist Act (VARA) -- 5 Pointz Museum of Street Art -- graffiti and
the law -- Jonathan Cohen et al. v G&M Realty LP et al., Case No 13-CV-5612 (FB) (JMA) (EDNY
2013) -- decision recognised stature -- works duration -- refusal of injunctive relief -- highlights the
issue of how transient art is -- may come to demonstrate whether or not the application of VARA
does provide a practical working deterrent.
Subject: Moral rights--United States
Subject: Artistic works--United States
SNIPER No.: 2014/01331
Author: Freeman, Avi
Title: The 21st century patent attorney
Source: World Intellectual Property Review. Annual, 2014, pp. 14-16.
Summary: Role of the patent attorney -- change of the profession -- understanding the business
and informed from the start -- new inventions -- technical or commercial problem (or both) -- where
to file -- what to file -- registered designs -- risks of third party IP -- non-practicing entities -- conflict
in patents -- help make important commercial decisions with an understanding of the IP risks.
Subject: Patent attorneys
SNIPER No.: 2014/01538
Author: Wallis, Chelsea
Title: Academia & industry: negotiating the cultural divide
Source: Engineers Australia. Vol. 86 No. 7, July 2014, pp. 38-43.
Summary: Commercialisation of ideas -- academic and industry stakeholders are inherently
incentivised toward different goals -- collaboration with higher education institutions is an important
source of knowledge transfer for large firms -- Australian government lagging behind other OECD
countries in incentivising exchange across the divide -- huge shortage of funds in Australia for
commercialisation of ideas -- very few venture capital firms -- closure of Commercialisation
SNIPER Bulletin – September 2014
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Australia -- academics focused on publishing at the expense of collaboration with industry -companies' expectations around exclusivity to intellectual property (IP) can also complicate
academia-industry relationships -- role of IP overemphasised -- lodgement of a provisional patent
with the Patent Cooperation Treaty important -- university partners needs to have a clear strategy.
Subject: Technology transfer--education and training industry--Australia
Subject: Technology transfer--science and research industry--Australia
Subject: Business collaboration--Australia
SNIPER No.: 2014/01596
Author: Waxman, Samuel
Author: Jokic, Michael
Author: Schachner, Brooke
Title: The acquisition of IP assets in bankruptcy
Source: Intellectual Property Magazine. July-August 2014, pp. 49-50.
Summary: Intellectual property (IP) assets are often a distressed company's most valuable items - sale of IP can raise significant cash -- for buyers, acquiring IP through bankruptcy can be
advantageous -- assets are often acquired free and clear of liens and claims -- can often be
purchased at "fire sale" prices -- potential hazards involved in this type of transaction -- careful
diligence and understanding of the law can help assure the maximum value in these transactions -two types of sellers in bankruptcy -- encumbrances -- IP licences and covenants not to sue -issues buyers should be aware of -- foreign IP assets.
Subject: Intellectual property licensing
Subject: Bankruptcy
SNIPER No.: 2014/00785
Author: Clevy, Sébastien
Title: The Adidas three-stripe mark prevails over the Pacific Brands four-stripe shoe design: use of
decorative stripes as trade marks
Source: Australian Intellectual Property Law Bulletin. Vol. 27 No. 3, April 2014, pp. 58-64.
Summary: Pacific Brands was found to have infringed the Adidas stripe mark on several models of
its sport shoes -- facts of the case -- Federal Court of Australia decision -- use as a trade mark -deceptive similarity -- findings and shoe-by-shoe analysis -- injunctive relief and costs
Subject: Trade mark infringement--case law--Australia
Subject: Famous trade marks
Subject: Trade dress
SNIPER No.: 2014/01543
Author: Dine, Jeffrey M.
Title: Aereo's day in Supreme Court
Source: Intellectual Property Magazine. June 2014, p. 16.
Summary: United States Supreme Court heard oral argument in the copyright case American
Broadcasting Companies, Inc v Aereo, Inc -- about the narrow technical interpretation of the term
'performance' in the US Copyright Act of 1976 -- potentially significant impact on US broadcasters'
SNIPER Bulletin – September 2014
Page 4 of 76
business model, but on cloud computing as well -- Aereo's operation -- Aereo in the Supreme
Court -- the oral argument -- serious dilemma for the Supreme Court -- if it rules against the
company, the court’s interpretation of the Transmit Clause risks disrupting the cloud computing
industry -- on the other hand, the justices were concerned that Aereo's model evades fees to the
detriment of broadcasters and content owners.
Subject: Copyright litigation--United States
SNIPER No.: 2014/01606
Author: Way, Chris
Title: All change in New Zealand
Source: Intellectual Property Magazine. July-August 2014, pp. 73-74.
Summary: New Zealand Patents Act 2013 -- substantial changes bringing the current law into line
with that in other jurisdictions -- key changes -- by acting now, applicants can take advantage of
the present, more lax examination requirements and avoid statutory exclusions -- total official fees
payable over the life of a patent will increase -- third party challenges -- case updates -- Tasman
Insulation New Zealand (TINZ) v Knauf Insulation Ltd (Knauf) -- validity -- infringement -- Fair
Trading Act.
Subject: Patents--law and legislation--New Zealand
Subject: Patents--reform--New Zealand
SNIPER No.: 2014/01595
Author: Butler, Marla
Title: Alternative fee arrangements in IP cases
Source: Intellectual Property Magazine. July-August 2014, pp. 47-48.
Summary: Breaking away from the billable hour model -- why move away from the billable hour
model? -- trust -- certainty -- when clients are paying some portion of the fees or expenses they
tend to be more reasonable in deciding on strategy, including settlement strategy -- value -alternative fee arrangement (AFAs) options for intellectual property assessments and cases -contingency -- caps -- fixed/flat fees -- are law firms ready?
Subject: Lawyers--costs
Subject: Business and professional services industry--reform
SNIPER No.: 2014/01482
Author: Liang, Massenet Kang-Chi
Title: Amended Taiwan Patent Examination Guidelines for dual applications over the same
creation
Source: World Intellectual Property Report. Vol. 28 No. 7, July 2014, pp. 36-38.
Summary: Taiwan -- main provisions of the revised Patent Examination Guidelines -- applicable
differences between "election" and "continuation" systems -- declarations -- interpretation of article
32, para 3 -- "same applicant" requirement -- legal effect of election -- standard for determining
how patents relate to "same creation" -- divisional applications -- Taiwan Intellectual Property
Office (TIPO) notice to make election -- TIPO to issue opinions on applicant response to an office
action of "making election on patent rights before the deadline"
Subject: Patent examination--procedure--Taiwan
SNIPER Bulletin – September 2014
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SNIPER No.: 2014/00790
Author: Slizys, Damian
Author: Irvine, Stuart
Title: Amendments to Australia's intellectual property laws
Source: Australian Intellectual Property Law Bulletin. Vol. 27 No. 3, April 2014, pp. 78-79.
Summary: Introduction of the Intellectual Property Laws Amendment Bill 2014 into parliament in
March -- steps towards unification of Australian and New Zealand patent examination regimes -compulsory licensing scheme for pharmaceuticals -- TRIPS Agreement amended in 2005 to
include compulsory license provisions in regard to pharmaceuticals -- Australia and New Zealand
single economic market initiative
Subject: Intellectual property law--Australia
SNIPER No.: 2014/01684
Author: Hunter, Dan, 1966Title: American lessons: implementing fair use in Australia
Source: Australian Intellectual Property Journal. Vol. 24 No. 4, June 2014, pp. 192-201.
Summary: Australian Law Reform Commission report, Copyright and the Digital Economy -proposes a fair use defence to copyright infringement in Australia -- the experience of fair use
cases in the United States -- draws three lessons from the jurisprudential history -- firstly, it
suggests that decisions in fair use can only really be understood within a theoretical framework -unless we import that framework into Australia any fair use defence will not work as expected -secondly, the article argues that the area where fair use jurisprudence appears to be most helpful,
in dealing with "transformative" works, is actually much more limited than outsiders to the US
would expect -- finally, it suggests that any implementation of a factor related to market substitution
should take account of the gaming of the system that has gone on in the US.
Subject: Copyright infringement
Subject: Fair use (Copyright)--Australia
Subject: Fair use (Copyright)--United States
SNIPER No.: 2014/01481
Author: Trimmer, Bonita
Title: Another supermarket lookalike fight: why Aldi has won first round
Source: World Intellectual Property Report. Vol. 28 No. 7, July 2014, pp. 35-36.
Summary: Dispute in the United Kingdom between supermarket chain, Aldi, and MIL, owner of
well-known branded hair care product, Moroccanoil -- Intellectual Property Enterprise Court (IPEC)
found Aldi made conscious decision to make the packaging for its 'Miracle Oil" product reminiscent
of the Moroccanoil get-up -- Aldi defeated the passing off claim by MIL -- reasons why the passingoff claim failed -- unable to prove the misrepresentation element needed for passing off.
Subject: Passing-off--case law--United Kingdom
Subject: Trade dress--case law--United Kingdom
SNIPER No.: 2014/01504
Author: Hurvitz, Aaron D.
SNIPER Bulletin – September 2014
Page 6 of 76
Title: Anti-counterfeiting in China: a game of wits
Source: World Trademark Review. No. 50, August-September 2014, pp. 104-105.
Summary: Yiwu is the centre of the counterfeiting trade in China -- major concern to the global
intellectual property (IP) industry -- implementing an anti-counterfeiting strategy -- identify the
importance of your IP rights -- decide whether a particular right is worth enforcing -- importance in
the Chinese market -- spend resources on the back end to find and investigate the producer(s) of
counterfeit goods -- identify and map out the distribution channels -- take action to stop the illegal
activity at the outset -- more benefit then attacking the immediate sellers -- sending cease and
desist letters -- sellers become more diligent in their undertakings and work harder to cover their
tracks -- warning letters hinder website notarisation and investigation efforts -- investigation
becomes near impossible -- vast majority of notarised evidence is obtained through onsite
investigations -- determine whether future action will be taken -- meeting relevant authorities.
Subject: Counterfeiting--law and legislation--China
Subject: Brand management--China
SNIPER No.: 2014/00784
Author: Baddeley, Richard
Title: Apotex v Servier: revocability is not necessarily the end of the road in patent litigation
Source: Australian Intellectual Property Law Bulletin. Vol. 27 No. 3, April 2014, pp. 54-57.
Summary: Apotex Pty Ltd v Servier Laboratories (Aust) Pty Ltd -- revocation of a patent under s
138(3) of the Patents Act 1990 -- Servier's patent for a new salt of perindopril compound for
treating hypertension -- novelty and inventive step -- fair basis -- best method of performance false
suggestion -- revocation - discretionary considerations -- implications
Subject: Patents--case law
Subject: Patent revocation
Subject: Pharmaceuticals--case law
SNIPER No.: 2014/01794
Author: Atherton, Hilary
Title: Apple retail store layout capable of trade mark protection, says CJEU
Source: World Intellectual Property Report. Vol. 28 No. 8, August 2014, pp. 43-44.
Summary: Court of Justice of the European Union (CJEU) decision in Apple Inc. v. Deutsches
Patent-und Markenamt -- a sign depicting the layout of Apple's flagship stores is capable of
registration as a three dimensional trade mark under the Trade Marks Directive -- background to
the case -- questions referred to the CJEU by the German Patent Court -- analysis of the CJEU
decision -- significance of the decision -- welcomed by retailers which have distinctive layouts
which are not solely functional.
Subject: Trade mark registrability--case law--Europe
Subject: Shape marks--case law--Europe
SNIPER No.: 2014/01306
Author: Jones, Matthew
Title: Application for central amendment of a patent after revocation at first instance does not of
itself render an appeal an abuse of process
SNIPER Bulletin – September 2014
Page 7 of 76
Source: Journal of Intellectual Property Law and Practice. Vol. 9 No. 7, July 2014, pp. 538-540.
Summary: Court of Appeal for England and Wales ruling that an application for central
amendment is not an abuse of process -- Samsung Electronics Co LTD v Apple Retail UK LTD &
Another -- application for limitation -- articles 105a, 105b and 105c of the European Patent
Convention 2000 -- first instance judgment found Samsung patents invalid -- Samsung applied to
amend the patents at the European Patent Office (EPO) -- Apple argued an abuse of process -Patents Act 1977 and parallel proceedings in the UK and the EPO -- decision also referred to the
Supreme Court of the Netherlands -- situation depends on the outcome of the central amendment
application -- importance of a successful decision in another jurisdiction -- Samsung may still find
itself in a difficult situation.
Subject: Patent amendment--case law--United Kingdom
Subject: Patent amendment--case law--Europe
Subject: Legal procedure--Europe
Subject: Patent revocation--United Kingdom
Subject: Litigation--information technology industry
SNIPER No.: 2014/01096
Author: Mannini, Alessandro
Title: Assessing scopes of protection
Source: World Trademark Review. No. 49, June-July 2014, pp. 114-115.
Summary: Deficiency of the Italian trade mark opposition system -- limited bases for opposing
trade mark registrations -- does not provide for cross-class challenges, typically associated with
claims of unfair advantage and/or prejudice to an earlier trade mark's reputation -- bases on which
the Industrial Property Code allows for oppositions -- effectively precludes owners of well-known
marks from using administrative opposition proceedings to claim likelihood of confusion when
challenging subsequent similar marks for goods and services that are not sufficiently similar to
those covered by their initial registration -- reasons for excluding such claims -- likelihood of
confusion -- rights to personal portraits, personal names and well-known signs.
Subject: Confusing similarity--Italy
Subject: Trade mark opposition--Italy
SNIPER No.: 2014/01224
Author: Morgan, Owen, Dr
Title: Assessing the work of the WIPO IGC
Source: European Intellectual Property Review. Vol. 36 No. 5, 2014, pp. 319-326.
Summary: WIPO Intergovernmental Committee on Intellectual Property and Genetic Resources,
Traditional Knowledge and Folklore (IGC) -- issues around the work of the IGC -- international
instrument developed by the IGC -- value to Maori and to other indigenous people -- New Zealand
Government has failed to respond on a domestic level to the Wai 26 report issued by the Waitangi
Tribunal -- number of recommendations made for reform -- indigenous people unlikely to be
satisfied with the work of the IGC.
Subject: WIPO Intergovernmental Committee on Intellectual Property and Genetic Resources,
Traditional Knowledge and Folklore
Subject: Traditional knowledge--New Zealand
Subject: Indigenous issues in intellectual property
SNIPER Bulletin – September 2014
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SNIPER No.: 2014/01758
Author: Webber, David
Title: Australian and United States court decisions to impact on business method patent licensing
Source: Les Nouvelles. Vol. 49 No. 2, June 2014, pp. 135-137.
Summary: Patent eligible subject matter for computer implemented inventions -- awaiting
outcomes of decisions in the USA and Australia -- United States Supreme Court and Alice
Corporation Pty Ltd. v CLS Bank International -- Australia and the Court of Appeals decision in
RPL Central Pty Ltd v Commissioner of Patents, Federal Court -- background to patent eligibility -Australian Federal Courts decision in favour of RPL Central -- practitioners awaiting the appeal
decisions -- hoped the courts will provide some clarity.
Subject: Business methods--case law--United States
Subject: Business methods--case law--Australia
Subject: Computer-related inventions--case law--United States
Subject: Computer-related inventions--case law--Australia
Subject: Patentability--case law--United States
Subject: Patentability--case law--Australia
SNIPER No.: 2014/01788
Author: Francis, Tim
Title: Australian court awards added damages as deterrent against infringement
Source: World Intellectual Property Report. Vol. 28 No. 8, August 2014, pp. 3-4.
Summary: Federal Court of Australia awarded "additional damages" for trade mark infringement in
Halal Certification Authority Pty Limited v Scadilone Pty Limited -- deterrent against further
infringement -- potential to obtain damages even where a claim for actual loss from an infringement
cannot be made out -- facts of the case -- analysis of the decision -- significance
Subject: Certification trade marks--case law--Australia
Subject: Trade mark infringement--case law--Australia
Subject: Damages--Australia
SNIPER No.: 2014/01303
Author: Berger, Tyrone
Title: Australian Federal Court clarifies statutory termination rights in patent licence agreement
Source: Journal of Intellectual Property Law and Practice. Vol. 9 No. 7, July 2014, pp. 534-535.
Summary: The Federal Court of Australia rules that a notice of termination cannot be given until all
patents in a licence agreement are no longer in force -- MPEG LA, LLC v Regency Media Pty Ltd -s 145 of the Patents Act 1990 (Cth) -- multiple patents relating to the MPEG-2 Standard -- MPEG
LA, LLC administered a patent pool -- analysis of decision -- importance of carefully drafting a
patent licence -- decision provides welcome clarity to statutory termination rights involving patent
licence agreements covering multiple patents.
Subject: Patent licensing--case law--Australia
Subject: Patent pools--case law--Australia
Subject: Standards (Technical)--case law--Australia
SNIPER Bulletin – September 2014
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SNIPER No.: 2014/01478
Author: Mierendorff, Tess
Title: Australian Federal Court rules on right to terminate patent licence agreement
Source: World Intellectual Property Report. Vol. 28 No. 7, July 2014, pp. 3-4.
Summary: Federal Court of Australia decision in MPEG LA, LLC v. Regency Media Pty Ltd -provides guidance on the scope of the termination right in s 145 of the Patents Act 1990 (Cth) -held that a licensee of Australian patents will only be able to terminate under s 145 where all the
Australian patents in respect of a "patented invention" have expired -- facts of the case -- issue in
dispute -- parties' commercial agreement -- future impact on licensing
Subject: Patent licensing--case law--Australia
SNIPER No.: 2014/01585
Author: Sheraton, Hiroshi
Author: Jenkins, Thomas
Author: Green, Katrina
Title: Bad medicine
Source: Intellectual Property Magazine. July-August 2014, pp. 22-23.
Summary: Interface between intellectual property (IP) law and competition law has always been
tense -- patents provide a monopoly right to exclude competitors from performing certain activities - developments in competition law and policy have shown an increasing tendency to encroach into
territory formerly considered to be the preserve of patent lawyers -- pharmaceutical industry has
found itself on the front line -- recent indications from competition authorities -- reveal a worrying
divergence of approach and lack of understanding of the IP system -- particular areas under most
scrutiny -- patent settlements and the strategies for obtaining patent (and associated) rights.
Subject: Patent litigation--pharmaceutical industry
Subject: Competition (Economics)
SNIPER No.: 2014/01310
Author: Clark, Birgit
Author: Germany. Bundesgerichtshof
Title: Between a rock and a hard place?: Bundesgerichtshof decides Hard Rock Café trade mark
dispute
Source: Journal of Intellectual Property Law and Practice. Vol. 9 No. 7, July 2014, pp. 544-546.
Summary: Parallel application of trade mark and unfair competition laws in trade mark deception
case -- Hard Rock Café trade marks -- EU Unfair Commercial Practices Directive (2005/29) -complex trade mark dispute between the internationally known Hard Rock Café Group and Hard
Rock Café Heidelberg -- history of dispute -- analysis of decision -- landmark decision -- parallel
application of trade mark laws and unfair competition -- application of acquiescence defence -- use
of acquiescence concept from trade mark law in unfair competition claims -- practical significance.
Subject: Confusing similarity--case law--Germany
Subject: Trade mark infringement--case law--Germany
Subject: Competition (Economics)--case law--Germany
SNIPER Bulletin – September 2014
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SNIPER No.: 2014/01311
Author: Blum, Jeremy
Author: Round, Nicholas
Title: Boop oop a doop: protection for cartoon image of Betty Boop
Source: Journal of Intellectual Property Law and Practice. Vol. 9 No. 7, July 2014, pp. 546-548.
Summary: Judge decides that Betty Boop brand deserves protection in trade mark and passing off
case -- Hearst Holdings Inc and others v AVELA Inc and others -- claimant owned trade marks in
relation to the cartoon character Betty Boop -- BETTY BOOP -- device mark for image of Betty
Boop -- AVELA's defence -- analysis of decision -- importance of work that Hearst had done into
developing the brand of Betty Boop and informing the public on the origins of the brand -- judge
saw that Betty Boop's current fame was due to the work of Hearst rather than the characters 1930s
appearance -- Betty Boop licences as a significant brand network -- Betty Boop acted as a sign -lessons from Hearst's success in character merchandising.
Subject: Trade mark infringement--case law--United Kingdom
Subject: Passing-off--case law--United Kingdom
SNIPER No.: 2014/01104
Author: Vinh, Le Quang
Title: A brief history of protection
Source: World Trademark Review. No. 49, June-July 2014, pp. 130-131.
Summary: Origins of well-known trade mark protection in Vietnam -- lack of a protection regime for
well-known marks in the early 1990s -- third parties registered world famous marks in Vietnam -National Office of Intellectual Property of Vietnam (NOIP) still rejected an application for the
McDONALD mark -- not until 2001 was the concept of a 'famous mark' first mentioned -- definition - well-known mark protection under 2005 intellectual property law -- categorising well-known
marks.
Subject: Famous trade marks--law and legislation--Vietnam
Subject: Famous trade marks--case law--Vietnam
SNIPER No.: 2014/01577
Title: Broadcasting the message of global IP protection
Source: Intellectual Property Magazine. July-August 2014, pp. 6-7.
Summary: Interview with Diane Hamer, trade mark lawyer at the BBC -- remit -- size of the team -average day -- jurisdictions covered -- managing international work -- infringement over the logo -countries where it is difficult to enforce the BBC's rights -- steps taken when violations occur -evolution of the intellectual property (IP) department -- challenges for launching new brands -maintaining brand reputation -- concern about the 'trade mark bully' label.
Subject: Hamer, Diane--interviews
Subject: Trade mark enforcement--culture and entertainment industry
SNIPER No.: 2014/01075
Author: Cheah, Yew Kuin
Author: Banerji, Malobika
SNIPER Bulletin – September 2014
Page 11 of 76
Title: Building clarification: Singapore's year in trademark law
Source: World Trademark Review. No. 49, June-July 2014, pp. 42-45.
Summary: Decisions of the Intellectual Property Office of Singapore (IPOS) and the Singapore
courts -- opposition and revocation applications, passing off and infringement actions -- insight on
important aspects of trade mark practice and procedure -- clarify the scope of certain substantive
trade mark principles in Singapore -- practice points for opposition proceedings before IPOS -extent of protection for descriptive marks -- revocation for non-use -- likelihood of confusion.
Subject: Trade marks--case law--Singapore
Subject: Trade marks--law and legislation--Singapore
SNIPER No.: 2014/01307
Author: Barazza, Stefano
Title: Burden of proving infringement in declaratory judgment actions of non-infringement remains
with the patentee
Source: Journal of Intellectual Property Law and Practice. Vol. 9 No. 7, July 2014, pp. 540-542.
Summary: Patent licensor has the burden of proving infringement in the licensees declaratory
judgment suit -- Medtronic Inc v Mirowski Family Ventures LLC -- patents relating to implantable
heart stimulators -- legal context -- Declaratory Judgment Act -- Federal Circuit decision reversed
by US Supreme Court -- jurisdictional issues -- principles from the MedImmune case -- related
decisions in other countries -- practical significance.
Subject: Intellectual property licensing--case law--United States
Subject: Patent infringement--case law--United States
SNIPER No.: 2014/01660
Author: Institute of Chartered Accountants in Australia
Added author: IP Australia
Title: Business briefing series: 20 issues on intellectual property
Source: Business Briefing Series: 20 Issues on Intellectual Property. April 2011.
Summary: Awareness by business leaders of the importance of thinking creatively and
innovatively in today's market place -- vital to understand the best way to protect and manage
intellectual property (IP) assets -- effective management of IP -- wealth building -- growth through
commercialisation opportunities -- development of a strong brand -- business reputation -minimising the risk of copycats -- identifying and managing IP -- commercial issues and IP -financial aspects -- emerging issues: IP and social media.
Subject: Intellectual property management
Subject: Business collaboration--Australia
SNIPER No.: 2014/01551
Author: Hall, Kevin M.
Title: BYOD (bring your own danger)
Source: Intellectual Property Magazine. June 2014, pp. 28-29.
Summary: Bring your own device (BYOD) -- referring to employees who use their own technology
devices for work -- workers can connect themselves to a secure corporate network, and use their
own device for the job, from anywhere -- ability to create, disseminate and store information on an
SNIPER Bulletin – September 2014
Page 12 of 76
immeasurable scale, with ease -- any data can be accessed from anywhere, at any time, using any
type of device -- Google acquired Divide, a technology start-up -- segregation between business
and personal becoming more hazy -- how does business protect itself against data loss? -- Divide's
mobile app is said to securely separate a consumer's personal data and the corporate data
contained in a device -- problems posed for companies -- seamless flicking between personal and
secured work applications -- data can flow through the divide -- lets employers wipe data remotely
in the event that a device is lost -- company's data could be lost without their knowledge or consent
-- what happens if BYOD is not managed properly -- importance of managing security -- risks of
cloud computing -- spotting patterns in an individual's behaviour -- investigating employee wrong
doing -- a preventative approach to investigation -- BYOD on the rise -- best defence -- implement
the right systems and take a preventative approach.
Subject: Trade secrets
Subject: Risk--management
SNIPER No.: 2014/01468
Author: Tridico, Anthony C.
Author: Mouta, Carla
Title: A call of duty or an overreaction?: the 101 guidance to the USPTO Examining Corps
Source: CIPA: the journal, incorporating the 'Transactions', of the Chartered Institute of Patent
Agents. Vol. 43 No. 6, June 2014, pp. 338-342.
Summary: US Patent and Trademark Office (USPTO) responsible to harmonise conflicting
Supreme Court jurisprudence on patent eligibility -- discussion with Drew Hirshfeld, speaking as
Deputy Commissioner for Patent Examination Policy during the Forum held 9 May at the USPTO
to receive public feedback -- scope of Guidelines -- claims rejected under 35 U.S.C. s101 -Guidance for Determining Subject-Matter Eligibility Of Claims Reciting Or Involving Laws of Nature,
Natural Phenomena, & Natural Products -- process for determining subject-matter eligibility under
the guidance -- broadest reasonable interpretation -- judicial exceptions -- first pathway to eligibility
-- at the Forum, it became clear from the public that the USPTO's position is to reject such claims.
Subject: United States. Patent and Trademark Office
Subject: Patenting of life forms--law and legislation--United States
Subject: Gene patents--United States
Subject: Intellectual property systems--procedure--United States
SNIPER No.: 2014/01496
Author: Hagen, Alexander
Title: Capturing the intangible
Source: World Trademark Review. No. 50, August-September 2014, pp. 80-83.
Summary: Intellectual property (IP) is a constant in brand creation -- a product's name, the design
and colour of its packaging and the corporate logo are legal rights which can bring great benefits
and growth -- trade marks are the unsung hero of brand success -- companies can sometimes
forget to consider IP fully when expanding into new markets, product ranges or geographies -difficulty of accurately capturing the value of a trade mark or portfolio of trade marks to a business - challenges of trade mark valuation -- first step towards any trade mark valuation exercise -- focus
on identifying possible weaknesses that may expose a company or undermine its brand value -trade mark rights need to be properly registered and maintained -- assessment of the strength of a
trade mark's value -- understanding the strategic value of intellectual property -- portfolio audits -audit enables companies to identify and address vulnerabilities -- core trade mark rights -- ability to
SNIPER Bulletin – September 2014
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measure and understand the value of IP rights is crucial to the economic success of any modern
business.
Subject: Value of intellectual property
Subject: Brand management
SNIPER No.: 2014/01495
Author: Lam, Horace
Author: Ma, Alicia
Title: Challenges to international brands under China's new legislation
Source: World Trademark Review. No. 50, August-September 2014, pp. 76-78.
Summary: China is one of the most lucrative markets for international brand owners -- high levels
of counterfeiting and trade mark hijacking -- China uses a first-to-file system for trade mark
registration -- Michael Jordan v Qiaodan Sports -- Jeremy Lin v Wuxi Risheng Sports Utility -China Trademark Office (CTMO) under the State Administration for Industry and Commerce
divides each class under the Nice International Classification into sub-classes according to the
local market environment and consumer perceptions -- an eye-catching and memorable Chinese
name should be considered a crucial part of any trade mark strategy in the Chinese market -defensive trade mark filings -- brand owners must actively maintain their trade mark portfolios -brand owners are advised to build a multi-layered portfolio -- new Trademark Law creates new
challenges for brand owners.
Subject: Trade marks--reform--China
Subject: Brand management--China
SNIPER No.: 2014/01605
Author: Wiseman, Andrew
Author: Govey, Chris
Title: Changes to the Australian innovation patent system
Source: Intellectual Property Magazine. July-August 2014, pp. 71-72.
Summary: Australian Government's Advisory Council on Intellectual Property (ACIP) released its
final report following its review of the Australian innovation patent system -- whether the
innovations protected by innovation patents would have occurred without the existence of the
system -- insufficient evidence available to support a recommendation that the system be retained
or abolished -- ACIP recommended that the system be amended to address certain concerns -background to ACIP's review -- key recommendations -- future of innovation patents in Australia.
Subject: Minor patents--reform--Australia
Subject: Patent systems--reform--Australia
SNIPER No.: 2014/01549
Author: Sim, Andrew
Title: China's trademark reforms
Source: Intellectual Property Magazine. June 2014, p. 24.
Summary: People's Republic of China State Council published the Implementing Regulations for
the 2014 Trademark Law to implement the third amendment of the 1982 Trademark Law -attempts to expedite the Trademark Office (TMO)/Trademark Appeal Board's (TRAB) examination
SNIPER Bulletin – September 2014
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of trade mark application, opposition and invalidation processes by imposing certain statutory time
limits -- Implementing Regulations specifically exclude various time periods when calculating the
applicable time limits -- scope of proceedings requiring mandatory identity documents has been
expanded -- Trademark Law introduces the principle of good faith for trade mark registration -multi-class applications are now available -- split application mechanism -- Trademark Law
reintroduces the concept of an examination opinion in the trade mark application process -oppositions on relative grounds can now only be filed by prior rightsholders or materially interested
parties -- Trademark Law retains the non-use cancellation mechanism.
Subject: Trade marks--reform--China
Subject: Trade marks--law and legislation--China
SNIPER No.: 2014/01564
Author: O'Connor, John
Title: Combating commercial fraud in the UAE
Source: Intellectual Property Magazine. June 2014, pp. 56-57.
Summary: United Arab Emirates (UAE) is one of the world's premier trading hubs -- goods range
from the high end luxury products to fast moving consumer goods (FMCG), clothes and
pharmaceuticals -- effective regime guarding against counterfeit products is essential for the UAE
to protect consumers, brand owners' rights and the UAE's reputation -- brand owners are
concerned that local authorities do not have sufficient power to deter those intent on importing and
selling counterfeit products -- new draft bill concerning combating commercial fraud has been
proposed -- the existing regime -- The New Law -- positive steps to address some of the concerns
noted -- falling short in other areas.
Subject: Fraud--law and legislation--United Arab Emirates
Subject: Counterfeiting--United Arab Emirates
SNIPER No.: 2014/01793
Author: Garza Barbosa, Roberto
Title: A comparative look at secondary liability for copyright infringement
Source: World Intellectual Property Report. Vol. 28 No. 8, August 2014, pp. 41-43.
Summary: Enforcement of copyright -- litigation -- common feature shown in comparative study of
copyright cases in several jurisdictions -- copyright holders did not sue those who infringed directly
but sued those providing the means to infringe or those promoting infringement -- examples of
cases of secondary liability litigation -- easier to enforce judgment against an incorporated
enterprise than trying to enforce it against large number of individuals through separate litigations - US perspective -- doctrines of contributory and vicarious infringement derived from case law, not
mentioned in statute -- leading cases are Sony and Grokster -- UK perspective -- secondary liability
established by statute -- Twentieth Century Fox Film Corp v. Newzbin Ltd. -- CBS Songs Ltd v.
Amstrad Consumer electronics -- situation in civil law jurisdictions, France and Germany -Mexican perspective -- Mexican copyright law does not provide for secondary liability -interpretation of the word "authorize" -- assumption that secondary liability is present in any legal
system that includes the word 'authorize" in its copyright legislation or civil code
Subject: Copyright infringement--liability
Subject: Copyright enforcement
SNIPER No.: 2014/01498
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Author: Henshall, Martin
Author: Liakatou, Vlotina
Title: Comparison, overall impression and inconsistencies in design protection
Source: World Trademark Review. No. 50, August-September 2014, pp. 86-89.
Summary: European Union operates a unified regime for designs -- registered Community design
(RCD) -- can be obtained quickly and at relatively low cost -- registered design provides protection
for the appearance of the whole or a part of a product -- broad variety of designs can be protected
as RCDs -- assessing the scope of protection afforded by an RCD can be a difficult task -representations of a design as depicted in the application for registration can have a major impact
on the scope of protection -- issues associated with the scope of protection of designs -- overall
impression created on the informed user -- comparison of designs when assessing their individual
character -- Trunki v Kiddee case.
Subject: Industrial designs--case law--United Kingdom
Subject: Industrial design owners' rights
SNIPER No.: 2014/01689
Author: Di Cataldo, Vincenzo
Title: Competition (or confusion?) of models and coexistence of rules from different sources in the
European patent with unitary effect: is there a reasonable alternative?
Source: Queen Mary Journal of Intellectual Property. Vol. 4 No. 3, July 2014, pp. 195-212.
Summary: Weaknesses of a European patent with unitary effect -- unitary patent (UP) -patchwork comprising rules from different sources -- an alternative in the form of a unitary title of
the European Union -- European Patent Office and the European Patent Convention -comparisons made with the Community Trade Mark, Community designs and Community plant
varieties -- suggests drafting of an EU Regulation on a new EU Patent which absorbs the
European Patent Convention (Munich Convention) -- new EU Patent should be granted by a new
European Patent Office, which should supersede the EPO.
Subject: Patent systems--harmonisation--Europe
Subject: Regional patents--Europe
Subject: Patents--reform--Europe
SNIPER No.: 2014/01361
Author: Kihn, Pierre
Title: A complementary approach
Source: World Intellectual Property Review. Annual, 2014, pp. 106-109.
Summary: Office Freylinger patent and trade mark attorneys -- European single entry point --based in Luxembourg -- IP hub -- cross-border benefits -- services to support companies in
managing their IP rights.
Subject: Intellectual property industry--Luxembourg
SNIPER No.: 2014/01333
Author: Hartwig, Henning
Title: Conflict, overlap or co-existence between design and copyright law?
SNIPER Bulletin – September 2014
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Source: World Intellectual Property Review. Annual, 2014, pp. 20-22.
Summary: Design protection under design and copyright law -- Federal Court of Justice of
Germany decision in the birthday train case -- industrial designs can claim copyright protection -sufficient degree of creativity -- aesthetic impression -- status quo -- EU design and copyright law
harmonisation -- standards for establishing copyright protection after Birthday Train -- constitutional
aspects -- further prospects.
Subject: Copyright owners' rights--Germany
Subject: Copyright systems--Germany
SNIPER No.: 2014/01305
Author: Syekei, John
Author: Opijah, David
Title: Contradictions in time limitation in revocation of a granted patent under Kenya law
Source: Journal of Intellectual Property Law and Practice. Vol. 9 No. 7, July 2014, pp. 537-538.
Summary: Industrial Property Tribunal rules that request for revocation not filed within the required
time period -- Chemserve Cleaning Services Limited v Sanitam Services (East Africa) Limited -- s
103 of Kenya's Industrial Property Act 2001 -- Sanitam granted Africa Regional Intellectual
Property Organisation (ARIPO) patent AP 773 -- foot operated litter or sanitary disposal bins -Chemserve filed request for revocation arguing that the invention was not new and it did not
involve an inventive step -- Chemserve failed to comply with the s 103(2) requirement to request
revocation within nine months of the date of publication of the grant of the patent -- comparison
with other jurisdictions -- extension of time under Industrial Property Tribunal Rules 2002 -- drafting
weaknesses in s 103 of the Act -- decision based mostly on a technical objection.
Subject: Patent revocation--case law--Kenya
Subject: Patent revocation--law and legislation--Kenya
Subject: Patent validity--case law--Kenya
SNIPER No.: 2014/01222
Author: Atwell, Courtenay
Title: Corporate involvement in intellectual property policy-making
Source: European Intellectual Property Review. Vol. 36 No. 5, 2014, pp. 306-311.
Summary: Existence of corporate involvement in the creation and amendment of intellectual
property (IP) policy in the US -- history of US IP legislation -- analysis of three agreements that
fundamentally altered the national IP regime in the US -- General Agreement on Tariffs and Trade
(GATT) -- North American Free Trade Agreement (NAFTA) -- Copyright Term Extension Act -implications of the findings -- identified limitations -- areas of future research envisaged -information drawn from international business literature, government policies and audits used to
create a blueprint of the current IP environment in the US -- analysis focused exclusively on the
traditional scope of IP.
Subject: Intellectual property--policy--United States
Subject: Intellectual property law--United States
SNIPER No.: 2014/01582
Author: Fuller, Stuart
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Title: Counterfeits: a perennial problem
Source: Intellectual Property Magazine. July-August 2014, p. 16.
Summary: International Trademark Association (INTA) was held in Hong Kong -- region with very
high levels of infringement activity -- in Pacific Plaza Mall every major luxury brand has a store -Ladies Market in Kowloon consists of over 100 stalls selling all kinds of products, including
hundreds of different products from every major brand in the world -- today you can find a variety of
copycat items, some which would need an expert using forensic methods to determine whether it is
counterfeit -- brand owners efforts should be directed at the distributors and sellers who produce
and ship counterfeit goods -- brands also have to trace legitimate items being sold in an illegal
manner, the 'grey market' -- brands can determine counterfeit goods through the packaging -criminals source genuine packaging or authentic security measures that they then use for
counterfeit items -- brand owners need a strategy that detects where fake items are being sold, but
also works with online marketplace sites to enforce the removal of infringing products from the
internet.
Subject: Counterfeiting
Subject: Brand management
SNIPER No.: 2014/01228
Author: Smith, Joel
Author: Burke, Sarah
Title: Court of Appeal refuses permission for passing-off survey: Zee Entertainment Enterprises
Ltd v zeebox Ltd
Source: European Intellectual Property Review. Vol. 36 No. 5, 2014, pp. 342-343.
Summary: Zee Entertainment Enterprises Ltd v zeebox Ltd -- Court of Appeal judgment -- trade
mark infringement -- admissibility of survey evidence in a passing-off case -- appeal dismissed on
all five grounds and permission refused to adduce the survey evidence -- flawed survey -disproportionate costs of introducing evidence.
Subject: Evidence--case law--United Kingdom
Subject: Passing-off--case law--United Kingdom
SNIPER No.: 2014/01553
Author: Copperwheat, Phil
Title: Cracks in the chrysalis: protecting IP during business transformation
Source: Intellectual Property Magazine. June 2014, pp. 31-32.
Summary: Intellectual property (IP) is often regarded as the prize asset of a business and as such
is awarded the highest levels of protection -- these assets can be unwittingly exposed to theft or
attack during innovation and digital transformation projects -- business transformation -- risks can
vary enormously with the business and its IP assets exposed during the transition process -openings for a multitude of threats -- insider attacks are on the increase -- variety of data that
needs to be awarded protection is also on the increase -- big data -- data privacy concerns -- steps
to ease the transition and protect valuable data assets -- business process mapping -management of data from cradle to grave.
Subject: Trade secrets
Subject: Risk--management
SNIPER Bulletin – September 2014
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SNIPER No.: 2014/01685
Author: Weatherall, Kimberlee
Title: Culture clash: the Australian Law Reform Commission's discussion of retransmission and the
world of broadcast
Source: Australian Intellectual Property Journal. Vol. 24 No. 4, June 2014, pp. 202-217.
Summary: Difficulties in interaction between copyright law and media policy -- analyses and
contextualises the conclusions of the Australian Law Reform Commission regarding the
retransmission scheme and assorted broadcast exceptions -- queries the trend towards treating
broadcast as "just another copyright subject matter -- illustrates the difficulty in understanding
copyright policy in isolation from media policy considerations -- raises questions about what is next
for the boundary land between copyright and media policy -- argues we should pay more attention
to cultural policies in thinking about copyright reform in this space and generally.
Subject: Copyright--law and legislation--Australia
SNIPER No.: 2014/01552
Author: Salsberry, Chris
Title: Cyber attacks: now a matter of when, not if
Source: Intellectual Property Magazine. June 2014, p. 30.
Summary: Recent cybersecurity attacks -- no one is immune from cybersecurity threats -organisations must take proactive steps to lessen the risk of cyber threats to their intellectual
property -- no one-size-fits-all approach to cybersecurity -- impossible for cybersecurity plans to
address every potential risk -- implement a cybersecurity programme -- review policies -- assess
compliance with those policies -- search for opportunities to make improvements that could
mitigate the damage that might result from a data breach -- ensure that stakeholders support the
cybersecurity programme -- create a comprehensive data map -- consider insider threats -- share
cyber threat intelligence.
Subject: Trade secrets
Subject: Risk--management
SNIPER No.: 2014/01592
Author: Rigby, Barbara
Title: Decisions divided over the stem cell debate
Source: Intellectual Property Magazine. July-August 2014, pp. 38-39.
Summary: Ethics of patenting inventions related to human embryonic stem cells (hESCs) has
been the subject of much debate -- inventions which are contrary to morality are excluded from
patentability under the European Patent Convention -- law explicitly sets out that this exclusion
encompasses uses of human embryos for industrial or commercial purposes -- several high profile
cases have shaped the law in this regard -- scope of this exclusion remains uncertain due to the
decisions raising new questions -- Technical Board of Appeal of the European Patent Office (EPO)
issued decision T2221/10 -- signals that the EPO is adopting a broad interpretation of the exclusion
from patentability on moral grounds -- the practice is likely to continue to develop -- legal
framework -- refusal of European hESC patent application -- impact and outlook.
Subject: Patenting of life forms
Subject: Ethics
SNIPER Bulletin – September 2014
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SNIPER No.: 2014/01500
Author: Perera, Leon
Title: Defining and measuring counterfeit goods
Source: World Trademark Review. No. 50, August-September 2014, pp. 94-96.
Summary: Counterfeiting penetration tends to be lower in developed countries, it is not negligible - barriers between developed and developing economies for counterfeit sales are becoming
porous, thanks to
international trade and online sales -- counterfeit production is centralised in several global
locations -- counterfeits are exported worldwide -- quality of counterfeits can be shockingly similar
to that of originals -- counterfeiters using large-scale production techniques -- drawing on the same
suppliers of raw materials and components as original goods producing industries -- vital role in
sustaining the finances of organised crime networks -- key for brand owners is to define the nature
of the counterfeiting threat -- tailor a corporate approach -- enforcement -- channel certification and
audits -- consumer education -- striking a balance between anti-counterfeiting and consumer
confidence -- measuring counterfeit penetration -- turning penetration data into an anticounterfeiting return on investment measure.
Subject: Counterfeiting
Subject: Intellectual property enforcement
SNIPER No.: 2014/01546
Author: Stratton, Barbara
Title: Diplomatic impasse over exceptions
Source: Intellectual Property Magazine. June 2014, pp. 20-21.
Summary: World Intellectual Property Organization (WIPO) Standing Committee on Copyright &
Related Rights -- European Union (EU) led attempts by some industrialised nations to block future
discussion of a binding international instrument to help libraries and archives serve their users in
the digital environment -- removing references to "text-based" work on copyright exceptions from
the meeting's conclusions -- many member states supporting libraries and archives withdrew
support for conclusions reached concerning the proposed Broadcasting Organizations Treaty -International Federation of Library Associations and Institutions (IFLA) -- push for an international
copyright treaty to assist the preservation of cultural heritage, support research and facilitate
access to information by people regardless of location -- international copyright framework isn't
working -- problems faced by library and archive users -- EU does not support harmonisation of
copyright exceptions to advance the digital information society outside of its own borders.
Subject: Fair use (Copyright)--knowledge industry--Europe
Subject: Harmonisation of laws--Europe
SNIPER No.: 2014/01562
Author: Liedtke, Christian
Title: The distinctiveness of the works of Michelangelo and Botticelli
Source: Intellectual Property Magazine. June 2014, pp. 52-53.
Summary: Germany's Federal Patent Court (Bundespatentgericht, BPatG) decision -- case
concerns an application for a figurative trade mark that was rejected by the German Patent and
Trademark Office due to lack of distinctiveness -- mark consists of two same size photographic
images with different backgrounds, arranged next to each other -- headshot of Michelangelo's
David, the other is a more portrait like image of Botticelli's Venus -- facts and procedural history –
SNIPER Bulletin – September 2014
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the ruling -- applicable standards -- the case in context.
Subject: Trade mark distinctiveness--case law--Germany
Subject: Trade mark registration--Germany
SNIPER No.: 2014/01744
Author: Budish, Eric B.
Author: Roin, Benjamin N.
Author: Williams, Heidi L.
Title: Do fixed patent terms distort innovation?: evidence from cancer clinical trials
Source: Chicago Booth Research Paper. No. 13-79, September 2013.
General Note: Published on Social Science Research Network (SSRN).
Summary: Variation in effective patent terms -- inventions that commercialize at the time of
invention receive a full patent term -- inventions that have a long time lag between invention and
commercialization receive reduced effective patent terms -- model formalizing how this variation
may distort research and development (R&D) -- example of cancer R&D -- for drugs targeting latestage cancer patients, clinical trials are shorter and therefore effective patent terms are longer than
for drugs targeting early stage cancer patients or cancer prevention -- several sources of evidence
consistent with fixed patent terms distorting cancer R&D -- large number of life years at stake -three specific policies that could eliminate this distortion -- patent design -- targeted R&D subsidies
-- surrogate (non-mortality) clinical trial endpoints -- empirical evidence that surrogate endpoints
can be effective in practice
Subject: Patent terms
Subject: Patents--pharmaceutical industry
Subject: Innovation (Technological)--pharmaceutical industry
SNIPER No.: 2014/01499
Author: Sullivan, John
Author: Johnson, Antoinette Marie
Title: Do you wanna dance?: why branding agencies and trademark attorneys need each other
Source: World Trademark Review. No. 50, August-September 2014, pp. 90-93.
Summary: Trade mark law is about protecting creativity and preserving the integrity of creative
works -- many trade mark attorneys lose sight of this and overlook the fact that brands represent
creative works -- names and logos constitute a form of artistic expression -- communication
breakdown with trade mark professionals on one side and branding professionals on the other -time has come for the two sides to forge a legitimate relationship based on shared knowledge and
understanding -- review what the branding process looks like and how it evolves -- trade mark
considerations and strategies for effective brand protection and growth can then be woven into the
branding process and better leveraged -- begin the brand development journey by gathering
information about the client and its primary competitors -- conducting market research and
competitive analysis -- refine and define a company's brand positioning -- naming process, along
with the development of logos or slogans -- whether those names would constitute strong or weak
trade marks -- distinctiveness spectrum -- running a search of the US Trademark Office database
to see whether anyone else owns registrations or active applications for confusingly similar trade
marks -- conduct internet searches for the proposed trade marks to see whether any competitors
or other third parties are using the same name -- conduct online availability searches for any
proposed names or slogans.
SNIPER Bulletin – September 2014
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Subject: Trade mark attorneys
Subject: Brand management
SNIPER No.: 2014/01568
Author: Gills, Jeanne M.
Author: Baluch, Andrew
Author: Suh, Kenneth K.
Title: Does Octane neutralise 'troll' legislation?
Source: Intellectual Property Magazine. June 2014, pp. 66-67.
Summary: Supreme Court decision in Octane Fitness v Icon Health & Fitness -- Highmark Inc v
Allcare Health Management System Inc -- Court adopted a lower, more discretionary standard for
determining whether a case is "exceptional"-- district court can determine whether a case is
exceptional on a case-by-case basis given the totality of circumstances -- Octane Fitness -- Court
articulated four reasons for finding that the Federal Circuit's formulation was overly rigid -Highmark -- potentially broad implications for both parties and other IP cases -- implications for
pending patent reform legislation.
Subject: Patents--case law--United States
Subject: Non-practicing entities--United States
SNIPER No.: 2014/01753
Author: UK Intellectual Property Office
Title: Eight great technologies: quantum technologies: a patent overview
Source: Eight Great Technologies: Quantum Technologies: a Patent Overview. 2014.
General Note: Report prepared by the UK Intellectual Property Office Patent Informatics Team.
General Note: Second last report in a series of reports investigating 'eight great technologies plus
a further two', as identified by UK government.
Summary: Analysis of the world wide patent landscape for quantum technologies -- in terms of
patent landscaping, technologies fall into the distinct technology areas of quantum
telecommunications, quantum computation, quantum sensors and quantum timing and atomic
clocks -- analysis of published patent application data -- worldwide patent analysis -- top applicants
-- collaboration -- technology breakdown -- UK landscape -- collaboration -- UK inventor mobility -how active is the UK? -- patent landscape map analysis.
Subject: Data mining--science and research industry--United Kingdom
Subject: Innovation (Technological)--analysis--United Kingdom
SNIPER No.: 2014/01221
Author: Bennett, Thomas D. C.
Title: Emerging privacy torts in Canada and New Zealand: an English perspective
Source: European Intellectual Property Review. Vol. 36 No. 5, 2014, pp. 298-305.
Summary: Privacy torts in Ontario and New Zealand -- recent developments -- new privacy torts
for "intrusion upon seclusion" -- contrast English jurisprudence -- privacy interests protected by
assortment of legal mechanisms -- legal certainty and doctrinal tinkering -- no tort of privacy -uncertainties within the English doctrine -- judicial insistence on pursuing a narrow mode of
incremental common law development -- Jones v Tsige -- C v Holland.
SNIPER Bulletin – September 2014
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Subject: Privacy--law and legislation
Subject: Human rights
Subject: Common law
Subject: Privacy--case law
SNIPER No.: 2014/01590
Author: Lowe, Jeremy
Title: Endless possibilities for 3D medical devices
Source: Intellectual Property Magazine. July-August 2014, p. 35.
Summary: 3D printer technology in the medical device space has finally come of age -- dental and
hearing aid laboratories already boast an installed base of customised devices produced using 3D
printers -- 3D printers rapidly gaining traction in everything -- domestic companies who use 3D
printing to replicate patented medical devices risk violating the patent laws against infringement -infringement claims may not be easy to win -- law surrounding 3D printing is underdeveloped -users of 3D printing technology must carefully navigate Food and Drug Administration (FDA)
regulations that control how medical devices are manufactured -- raises concerns that traditional
manufacturing does not -- ability to customise medical devices to a patient's needs -- customising
devices may vary the product from previously FDA-approved medical devices -- result in
inconsistent production methods -- may affect performance and safety of the devices -- FDA has
established several regulatory channels to guarantee the safety and effectiveness of medical
devices -- Premarket Notification or premarket approval -- determining the manufacturer that the
FDA must regulate also is becoming more difficult.
Subject: Medical procedures and devices
Subject: Three dimensional printing
SNIPER No.: 2014/01353
Author: Marenović, Vladimir
Title: Enforcement of famous trademarks by customs authorities
Source: World Intellectual Property Review. Annual, 2014, pp. 86-89.
Summary: Register of well-known trade marks would assist rights owners in the Balkan region -procedures for seizing suspected counterfeit goods- eight jurisdictions including Albania, Bosnia,
Croatia, Kosovo, Macedonia, Montenegro, Serbia and Slovenia -- simplified procedure -- lack of a
corresponding trade mark -- practical examples -- potential solutions -- international treaties
relating to trade marks which oblige national governments to provide enhanced protection to wellknown marks.
Subject: Trade mark owners' rights--Balkans
Subject: Intellectual property enforcement--Balkans
SNIPER No.: 2014/01227
Author: Fields, Désirée
Title: EU General Court rejects application for "position" mark for attachment of button to ear of
soft toy
Source: European Intellectual Property Review. Vol. 36 No. 5, 2014, pp. 339-342.
SNIPER Bulletin – September 2014
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Summary: Community trade marks to protect the attachment of a button or a label attached by
means of a button -- Steiff GmbH v OHIM -- General Court decision -- attachment lacked distinctive
character -- surface decoration.
Subject: Community trade mark--case law--Europe
Subject: Trade mark distinctiveness--case law--Europe
Subject: Non-traditional marks--Europe
SNIPER No.: 2014/01359
Author: Narula, Ranjan
Title: An evolving landscape
Source: World Intellectual Property Review. Annual, 2014, pp. 102-103.
Summary: Intellectual property landscape in India -- why India is on the Office of the US Trade
Representative (USTR) priority watch list -- weak enforcement regime -- Indian courts facing
pressure from an emotive campaign on patents, pricing and access -- is Indian Patent Law noncompliant with TRIPS -- judicial system and reliable timely decision making -- changing bringing
about clarity helping to develop consistency -- Indian Patent Office aiming to reduce the time taken
to examine patent applications.
Subject: Intellectual property systems--India
SNIPER No.: 2014/01686
Author: Wright, Bob
Title: Fair use will give the digital economy a fair go
Source: Australian Intellectual Property Journal. Vol. 24 No. 4, June 2014, pp. 218-234.
Summary: Australian government should amend the Copyright Act 1968 (Cth) -- introduce United
States-style fair use provisions as an additional open-ended exception to copyright sitting below,
and integrated with, the current fair dealing exceptions -- identifies some of the ways in which
current copyright law is holding back innovation and economic growth -- emerge from the
submissions of some of the key stakeholders to the Australian Law Reform Commission's recent
Inquiry into Copyright and the Digital Economy -- reviews the experience in the US -- how the fair
use provisions have spurred innovation in the American economy -- arguments for and against
introducing fair use into Australian copyright law -- analyses different options for implementing this
reform, including that proposed by the ALRC -- recommends optimal option for reaping the benefits
of the digital economy, involving a "two-step test",
Subject: Fair use (Copyright)--United States
Subject: Fair use (Copyright)--Australia
SNIPER No.: 2014/01509
Author: Jurek, Maria
Author: Piwowar, Jaromir
Title: Fighting the fakes
Source: World Trademark Review. No. 50, August-September 2014, pp. 114-115.
Summary: Intellectual property (IP) rights play a significant role in the EU economy -- importance
of IP protection and effective IP rights enforcement -- IP-intensive industries -- analysis of customs
seizure statistics -- rights holders in Poland can protect their IP through both civil and criminal
SNIPER Bulletin – September 2014
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proceedings -- criminal prosecution -- civil enforcement -- anti-counterfeiting online -- preventive
measures and strategies.
Subject: Intellectual property law--Poland
Subject: Counterfeiting--Poland
SNIPER No.: 2014/01791
Author: Boos, Sabine
Title: The final countdown: strategic options in view of the upcoming new European Patent System
Source: World Intellectual Property Report. Vol. 28 No. 8, August 2014, pp. 35-38.
Summary: Extensive changes coming to European patent system -- reform may become effective
in 2015, but more likely 2016 or 2017 -- pros and cons of the current system -- basic components
of the reform package -- Unified Patent Court -- Unitary Patent -- mixed system in political and
geographical Europe -- possible strategies -- whether to file more national patent applications -whether to wait for the Unitary Patent -- considerations for existing and future European patents -options for European patents -- transitional period -- actions still allowed before national courts -opting out -- sunrise period -- opt-back -- factors driving decision-making process
Subject: Patent systems--Europe
SNIPER No.: 2014/01571
Author: Sanders, Charles H.
Author: Reynolds, Kecia J.
Title: Flash of inspiration
Source: Intellectual Property Magazine. June 2014, pp. 72-73.
Summary: Apple was a pioneer in the digital camera field -- first consumer digital camera, the
QuickTake 100 -- Apple decided to spin off its digital camera business into Flashpoint Technology - Flashpoint was an operating technology company -- Kodak, Hewlett Packard, Pentax and Minolta
incorporated Flashpoint's technology into their products -- technology bubble burst, Flashpoint's
business failed and Flashpoint became the enforcer of a large patent portfolio -- began filing a
series of patent litigations to monetise its portfolio -- lessons for defeating tested patents -uncertainty over infringement at the International Trade Commission (ITC) -- although Flashpoint is
a non-practising entity (NPE), the Commission determined that Flashpoint satisfied the economic
prong of the domestic industry requirement.
Subject: Expert witnesses--United States
Subject: Patent litigation--United States
SNIPER No.: 2014/01501
Author: Biriulin, Vladimir
Title: For the benefit of all
Source: World Trademark Review. No. 50, August-September 2014, p. 97.
Summary: Radical overhaul of Russia's trade mark regime -- changes are due to come into force
on October 1 2014 -- changes under the new regime -- Patent Office will be obliged to publish
information on trade mark applications -- rights holders will have to report to the Patent Office the
fact that a transaction took place and provide the registration number -- no financial conditions
about the contract need be disclosed -- amended law makes the time limits for applicants during
SNIPER Bulletin – September 2014
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examination more transparent -- applicants will benefit from broader opportunities for filing
divisional applications -- further grounds for contesting trade mark registrations -- provisions under
which invalidation of a trade mark may be sought if it has the same priority as another person's
trade mark -- new grounds for refusal of registration -- letters of consent -- transition to the new
law.
Subject: Trade marks--law and legislation--Russia
Subject: Trade marks--reform--Russia
SNIPER No.: 2014/01566
Author: Hansen, Hugh C.
Title: Fordham IP Conference 2014: IP pioneers and leaders
Source: Intellectual Property Magazine. June 2014, pp. 60-62.
Summary: Fordham annual conference on intellectual property (IP) law & policy -- brings together
global IP leaders from the judiciary, government, private sector and academia -- very broad focus - IP leaders – António Campinos -- David Kappos -- Francis Gurry -- IP pioneers -- Judge Pauline
Newman -- Jeremy Phillips -- Wim van der Eijk -- Judge Annabelle Bennett -- John Temple Lang -Judge Denny Chin -- Paul Maier -- general counsel round table -- multilateral/plurilateral/bilateral
agreements -- luncheon speakers.
Subject: Intellectual property industry
SNIPER No.: 2014/01690
Author: Bensamoun, Alexandra
Title: The French out-of-commerce books law in the light of the European Orphan Works Directive
Source: Queen Mary Journal of Intellectual Property. Vol. 4 No. 3, July 2014, pp. 213-225.
Summary: Legislation in Europe and France -- copyright protection for orphan works (works
without an identified or located right holder) -- copyright protection for out of commerce works
(books which are out of print which are still protected by copyright) -- Orphan Works Directive
(2012/28) aims to encourage the reproduction and the making available digitally of these
immobilised works -- French law concerning digital exploitation use by specific institutions such as
libraries, educational establishments, museums or archives -- subject to certain conditions,
particularly the diligent search for right-holders -- French and EU context -- subject matter of the
new system -- registering in the database -- regime proposed -- comparison with treatment of
orphan works -- conciliation between out-of-commerce books and orphan works moral rights.
Subject: Copyright owners' rights--France
Subject: Copyright owners' rights--Europe
Subject: Copyright--reform--France
SNIPER No.: 2014/01567
Author: Loren, Ralph A.
Author: Cotta, David
Title: Friction between PTAB and the Federal Circuit?
Source: Intellectual Property Magazine. June 2014, pp. 63-64.
Summary: US Patent and Trademark Office's (USPTO's) Patent Trial and Appeal Board (PTAB)
issued its first final decision in an America Invents Act (AIA)-post grant proceeding -- decisions
SNIPER Bulletin – September 2014
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favourable to petitioners have vastly outnumbered those favourable to patentees -- PTAB's early
post grant decisions are now beginning to make their way through the appeal process -- whether
the Federal Circuit is likely to reverse many of the PTAB's early decisions invalidating patents, or
otherwise seek to bring post grant challenges into closer alignment with cases brought in federal
court -- depends on how the Federal Circuit handles claim construction and the denial of
amendments.
Subject: Patent litigation--United States
SNIPER No.: 2014/01559
Author: Mehrman, Michael J.
Title: Functional claiming in the crosshairs
Source: Intellectual Property Magazine. June 2014, pp. 45-47.
Summary: Patent assertion and US innovation report released -- announcing legislative
suggestions and executive actions designed to curb abusive patent litigation -- training to help
examiners deal with functional claiming -- administration will need to find a way to provoke
reconsideration of the current judicial policies -- history of the law of functional claiming -"Halliburton Rule" -- change in claim construction policy -- scope of enablement -- allow the district
courts to consider the scope of enablement on a case-by-case basis with reference to a specific
accused product during the infringement phase of a patent trial.
Subject: Patent claims--United States
Subject: Patents--law and legislation--United States
SNIPER No.: 2014/01511
Author: Vinh, Le Quang
Title: Fundamentals of anti-counterfeiting legislation
Source: World Trademark Review. No. 50, August-September 2014, pp. 118-119.
Summary: Development of substantive laws -- how they are enforced in the fight against
counterfeiting and piracy in Vietnam -- 1999 Penal Code, as amended, attempts to distinguish
between formal and substantial counterfeiting -- what does substantial counterfeiting include? -formal counterfeiting is seemingly criminalised by Section 171, which establishes punishments of
up to three years' imprisonment -- anti-piracy legislation -- Vietnam amended and supplemented its
1999 Penal Code in 2009 -- case law.
Subject: Counterfeiting--law and legislation--Vietnam
Subject: Intellectual property law--reform--Vietnam
SNIPER No.: 2014/00789
Author: Logan, Catherine
Title: Fur flying in fashion cases: a roundup of last year's trade mark disputes involving fashion
brands
Source: Australian Intellectual Property Law Bulletin. Vol. 27 No. 3, April 2014, pp. 75-77.
Summary: Louis Vuitton involved in two cases -- application for the mark "Auster Vuitton"
concerning wine -- likely to cause confusion -- 'Louis V' flower logo mark on sunglasses found not
deceptively similar by the Federal Court of Australia -- Stella McCartney opposing registration of
"ST ELLA - NEW YORK" -- Bugatti GmbH opposition to the mark "BUGATCHI UOMO"
Subject: Trade mark infringement--case law--Australia
SNIPER Bulletin – September 2014
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Subject: Famous trade marks
SNIPER No.: 2014/01480
Author: Moscovici, Jason
Title: A generic's guide to claiming real damages in a hypothetical market in Canada
Source: World Intellectual Property Report. Vol. 28 No. 7, July 2014, pp. 31-34.
Summary: Three patent decisions by the Canadian Federal Court of Appeal -- Apotex Inc v.
Sanofi-Aventis --Teva Canada Limited v. Sanofi-Aventis Canada Inc -- Sanofi-Aventis Canada Inc
v. Teva Canada Limited -- related to claims for losses following the dismissal of prohibition
proceedings taken by Sanofi-Aventis, where Teva Canada Limited and Apotex Inc were seeking to
market generic versions of ramipril, using Sanofi's ALTACE brand ramipril drug as a reference -Sanofi filed for applications seeking to prohibit the Minister of Health from granting market
approvals to Teva and Apotex, alleging infringement of patents covering this subject matter that
were listed on Health Canada's patent register -- procedures for marketing a drug in Canada -Notice of Compliance (NOC) proceedings -- overview of Section 8 of the Patented Medicines
(Notice of Compliance) Regulations -- analysis of the decisions -- significance --clarify environment
under which a generic drug manufacturer can claim the profits it would have made if it had not
suffered the delays brought on NOC proceeding taken by the innovator drug company
Subject: Pharmaceuticals--case law--Canada
SNIPER No.: 2014/01313
Author: Gausling, Tina
Title: German Federal Supreme Court expands design protection: 'Birthday Train'
Source: Journal of Intellectual Property Law and Practice. Vol. 9 No. 7, July 2014, pp. 549-550.
Summary: German Federal Supreme Court (BGH) grants copyright protection to applied art works
which meet the same originality level requirement as that of 'purpose free' art -- Independent Toy
Designer v Toy Manufacturer -- how applied art was treated in the past by the BGH -- reform to the
German Design Act in 2004 -- wooden wagons made up of candle holders and numbers -claimant sought additional compensation under Copyright Law -- lower court rejected claim -- BGH
decided on the new requirement and remitted the case to the Court of Appeals to decide whether
the design meets the lower level of originality requirements -- impact of ruling on manufacturing
industry -- use of designs register no longer sufficient as designs may be protected by copyright
law.
Subject: Copyright owners' rights--case law--Germany
Subject: Copyright systems--Germany
Subject: Industrial design systems--Germany
SNIPER No.: 2014/01795
Author: Bhatti, Jabeen
Title: German publishers seek copyright fees from Google using copyright, competition law
Source: World Intellectual Property Report. Vol. 28 No. 8, August 2014, pp. 45-48.
Summary: Long-running battle to force search engines operating in Germany to pay for
aggregated content -- provisions in the copyright law requiring payment for using news snippets is
a first internationally -- goes against the trend worldwide -- implications for copyright protections in
the online world -- how antitrust rules are applied to that market -- "Google Tax Bill" in Germany -VG Media and Google News -- no clear consensus from German publishers – publishers’ forced to
SNIPER Bulletin – September 2014
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agree -- Google disagrees -- precedent applicable -- ancillary copyright law -- Google as a
publisher -- rulings against Google.
Subject: Copyright infringement--culture and entertainment industry--Germany
Subject: Neighbouring rights--Germany
SNIPER No.: 2014/01563
Author: Awdeh, Danny
Author: Westley, Brian R.
Title: Golden oldies: record labels seek Pandora payout
Source: Intellectual Property Magazine. June 2014, pp. 54-55.
Summary: Five major record labels are suing Pandora for copyright infringement -- alleging the
internet radio service has refused to obtain licences to play thousands of songs recorded before
1972 -- seeking an injunction and unspecified damages -- similar lawsuit by the same record labels
is pending against satellite radio provider Sirius XM -- suits were brought in New York and
California state courts because the federal Copyright Act does not protect sounds recordings made
prior to 15 February, 1972 -- record labels must rely on state statutes and/or common law copyright
protection -- US Copyright Office urges that pre-1972 sound recordings be brought under the
federal copyright statute to harmonise the law -- provide greater clarity.
Subject: Copyright infringement--United States
Subject: Copyright litigation--United States
SNIPER No.: 2014/01594
Author: Armitage, Emma
Author: Tregear, Rachel
Title: Google jumps to implement right to be forgotten
Source: Intellectual Property Magazine. July-August 2014, pp. 44-46.
Summary: Court of Justice of the European Union's (CJEU) recent ruling allowing individuals the
right to request the removal of search result links presents a setback for Google and other internet
search engines -- clash between fundamental rights -- right to respect for private life and protection
of personal data -- right to freedom of expression and access to information -- CJEU has ruled
firmly in favour of the right to privacy -- anticipates the right to be forgotten and to erasure included
in the modernisation of the EU's data protection rules under discussion at EU level -- some have
condemned it as undermining the internet as an information resource -- a form of online censorship
-- background to the case -- particularly broad territorial scope of the Directive -- data controller -the right to be forgotten -- Google's implementation of this decision -- search engines in the futureshifting shape of Google.
Subject: Privacy--case law--Europe
Subject: Free speech--case law--Europe
SNIPER No.: 2014/01550
Author: Sandys, Michael
Title: Google 'oblivion' ruling exposes culture clash between US and Europe
Source: Intellectual Property Magazine. June 2014, p. 25.
Summary: Court of Justice of the European Union (CJEU) -- passed down a ruling forcing internet
SNIPER Bulletin – September 2014
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search engine Google to remove historic search results -- likely to follow up with legislation to
ensure people across Europe have the 'right to be forgotten' -- move has exposed a critical
transatlantic culture clash -- an individual can demand that "irrelevant or outdated" information be
deleted from search results -- sparked a flurry of requests that Google do that -- fundamental
difference -- US, where freedom of speech is a paramount concern in law -- Europe, where more
importance is placed on the protection of individual privacy and reputational rights -- Google needs
to do more to protect and manage people's data -- CJEU must ensure that any law it drafts around
this also preserves freedom of speech -- criteria for removal -- preservation of history.
Subject: Free speech
Subject: Privacy
SNIPER No.: 2014/01354
Author: Zachcial, Andreas
Author: Lille, Philipp
Title: A grand unified theory
Source: World Intellectual Property Review. Annual, 2014, pp. 90-93.
Summary: Current state of the Unified Patent Court -- court is essential for the unification of the
European patent system -- as well as the laws of the EU and the European Patent Convention, the
most relevant source of law will be the new UPC Agreement -- court of new judges and diverse
nationalities -- no orientation towards established case law -- training centre for the judges -transitional period -- language of proceedings.
Subject: Unified Patent Court
Subject: Patent systems--reform--Europe
SNIPER No.: 2014/01750
Title: Harmonised Database: putting the classification pieces together across the EU
Source: ETMDN News. No. 3, July 2014, pp. 1-4.
Summary: Harmonised Database -- largest trade mark classification database in the world -available in all 23 EU languages -- contains all terms from the Nice alphabetical database -continuously maintained -- implemented by 25 EU trade mark offices -- interview with Katharina
Mirbt, German Patent and Trade Mark Office -- advantage for trade mark applicants is they can
use the wording of the database to specify the goods and services the trade marks will be
registered for -- eliminates the need to wonder whether the terms are specific and precise enough
and to which class they belong -- future developments of the database.
Subject: Trade mark classification--Europe
SNIPER No.: 2014/01343
Author: Bonan de Aguiar, Rodrigo Sérgio
Title: Highly-renowned marks: new rules at the INPI
Source: World Intellectual Property Review. Annual, 2014, pp. 54-56.
Summary: Trade marks registered in Brazil as "highly renowned" -- special protection in all fields
of activity -- concept introduced by Article 125, May 1996, the Industrial Property Law (IPL) -previously special protection assured under Article 67, 1971, now revoked Industrial Property code
(CPI) -- single administrative procedure filed before the Brazilian National Institute of Industrial
Property -- marks held recognition by the public regardless of market sector -- companies owning
SNIPER Bulletin – September 2014
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registrations in Brazil may finally petition for a declaration of highly-renowned status for their marks
-- death blow to legal principles -- expectation of greater efficiency -- Brazil hosting the FIFA World
Cup in 2014 -- FIFA given an exemption from paying any official fees relating to their marks -unconstitutional because it violates the principle of equality enshrined in Article S of the Federal
Constitution -- when INPI improves its method of analysing and judging autonomous petitions for
the declaration of highly-renowned status, it will be more efficient in meeting the requests of
owners.
Subject: Intellectual property law--tourism and recreation industry--Brazil
SNIPER No.: 2014/01785
Author: Haugen, Hans Morten, 1971Title: How are indigenous and local communities' rights over their traditional knowledge and
genetic resources protected in current free trade negotiations?: Highlighting the draft Trans-Pacific
Partnership Agreement (TTPA)
Source: Journal of World Intellectual Property. Vol. 17 No. 3-4, July 2014, pp. 81-95.
Summary: Traditional knowledge provisions of two chapters of the Trans-Pacific Partnership
Agreement (TTPA) -- on intellectual property (IP) rights and on the environment -- no agreement
where these provisions shall be included -- wide disagreement over the content of the specific
provisions -- some states want to have a widest possible scope of the public domain, and no
provisions for sanctioning the taking of genetic resources and associated traditional IP without the
consent of indigenous peoples and local communities -- whether and in which form indigenous
peoples are given stronger rights over their IP in international legal instruments, compared to nonindigenous traditional communities -- in many legal instruments, there is no difference -- strongest
provisions on traditional knowledge are found in an instrument that applies only to indigenous
peoples, the UN Declaration on the Rights of Indigenous Peoples (UNDRIP) -- whether the rights
of indigenous peoples and local communities are stronger in the realm of traditional knowledge
than in the realm of genetic resources -- this is generally the case -- provisions are analysed from
the perspective of collective decision-making, defensive protection and positive protection.
Subject: Convention on Biological Diversity (1992 June 2). Protocols, etc., 2010 October 29
Subject: Traditional knowledge
Subject: Human rights
Subject: Indigenous issues in intellectual property
SNIPER No.: 2014/01746
Author: Maxwell, Ian A.
Title: How Australia can invent a thriving technology export sector
Source: How Australia can Invent a Thriving Technology Export Sector. 2014.
Summary: Australian economy -- technology solutions -- Australia's historical response to the
absence of an export industry of technology solutions -- role of large companies in the export of
technology solutions -- how do Australia's large companies earn their profits -- Australia's patents -2011 patent activity -- overview of 12 key technology areas -- value of Australia's patents -- role of
Australia's courts in reducing the value of patents -- impact of a 'low ROI' patent system on
Australia's economy -- use of the patent system to entice large companies into the technology
sectors -- increase the value of patents -- introduce the patent box -- expensing of costs for patent
applications.
Subject: Innovation (Technological)--analysis--Australia
Subject: Intellectual property systems--Australia
SNIPER Bulletin – September 2014
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SNIPER No.: 2014/01781
Author: Tsoi, Annie S. T.
Title: How easily (difficult) can the special category of trademark be registered?
Source: Expert Guides. Trade Mark Lawyers, June 2014, pp. 8-9.
Summary: Assessing the distinctiveness of a mark -- trade mark registrations in Hong Kong -appears most of the colour and shape marks accepted for registration in Hong Kong based on
acquired distinctiveness through extensive use -- legal position -- in practice -- recent decisions
made by the Registrar on colour and shape marks -- practical tips -- colour marks -- shape marks.
Subject: Trade marks--Hong Kong
Subject: Trade mark registrability--Hong Kong
SNIPER No.: 2014/00788
Author: Knight, Harry
Author: Knight, Peter
Title: How "exclusive" are the rights granted under the Trade Marks Act to use a registered trade
mark?
Source: Australian Intellectual Property Law Bulletin. Vol. 27 No. 3, April 2014, pp. 73-74.
Summary: Section 230 of the Trade Marks Act 1995 (Cth) -- a registered trade mark is no defence
to a passing off action in respect of the same mark -- CI JI Family Pty Ltd v National Australian
Nappies (NAN) Pty Ltd -- "Nappy Land" business name registration -- passing off -- the registered
trade mark as a shield against damages - but can it be a sword? -- using trade mark warning
notices
Subject: Australia. Trade Marks Act 1995
Subject: Trade mark owners' rights--Australia
Subject: Trade mark use--Australia
Subject: Passing-off--Australia
SNIPER No.: 2014/01312
Author: Stevens, Paul
Title: A hyperlink can be both a permissible and an infringing act at the same time
Source: Journal of Intellectual Property Law and Practice. Vol. 9 No. 7, July 2014, pp. 548-549.
Summary: Court of Justice of the European Union (CJEU) rules on providing hypertext links to
copyright content on the internet legitimately -- Nils Svensson and Others v Retriever Sverige AB -article 3 of Directive 2001/29 -- third party provided links on its website to articles written by
Swedish journalists published on a newspaper website -- Swedish journalists sued for damages -articles freely available on the newspaper site -- Svea Court of Appeal in Sweden referred case to
CJEU -- questions referred to the CJEU -- any clickable link regarded as an 'act of communication'
-- conditions under which copyright infringement would be deemed to occur -- the decision
suggests that under certain conditions where both licensed and unlicensed content is available on
a page both lawful and an infringing act will take place at the same time -- internet service
providers would find this decision worrying.
Subject: Copyright infringement--case law--Europe
Subject: Electronic copyright--case law--Europe
SNIPER Bulletin – September 2014
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SNIPER No.: 2014/01103
Author: Weild, David
Title: The importance of being earnest
Source: World Trademark Review. No. 49, June-July 2014, pp. 128-129.
Summary: Famous trade marks under United States law -- a mark which can be infringed by noncompeting goods or services -- doctrine provides the basis for proscribing certain acts of unfair
competition that fall outside the scope of classic definitions of trade mark infringement, which
require similarity of marks, similarity of goods or similarity of custom -- trade mark defined -definition of famous trade mark -- injunctive relief against dilution by blurring -- few marks achieve
the distinction of being famous -- the term 'well-known' -- US case law.
Subject: Famous trade marks--law and legislation--United States
Subject: Famous trade marks--case law--United States
SNIPER No.: 2014/01340
Author: Chapman, Ann
Author: Wood, Katy
Title: The importance of patent information for the innovation economy
Source: World Intellectual Property Review. Annual, 2014, pp. 44-46.
Summary: Important role of patent information in global and technological development -- software
solutions such as PatBase -- searchable online patent database -- challenges of global patent data
-- volume of data can be daunting -- language barriers -- PatBase and searching in non-Latin
patent collections -- visualisation of trends and analysis -- tracking the status of patent applications.
Subject: Patent databases
SNIPER No.: 2014/01308
Author: Clark, Birgit
Title: Impossible (im)position?: General Court refuses registration of teddy maker Steiff's position
mark
Source: Journal of Intellectual Property Law and Practice. Vol. 9 No. 7, July 2014, pp. 542-543.
Summary: The General Court of the European Union refused an
application for a positional trade mark due to an inherent lack of distinctiveness -- Margarete Steiff
GmbH v Office for Harmonisation in the Internal Market (OHIM) -- position of a button on the ear of
a soft toy -- Article 7(1)(b) and 7(3) of the Community Trade Mark Regulation (CTMR) -- German
toy manufacturer Steiff -- failure to achieve the minimum level of distinctiveness under Article
7(1)(b) CTMR -- Steiff did not argue 'acquired distinctiveness' under Article 7(3) CTMR -- position
of the 'button in ear' mark functions as a trade mark in Germany but consumers in other European
countries would not regard it in this way.
Subject: Community trade mark--Germany
Subject: Trade mark distinctiveness--case law--Europe
Subject: Non-traditional marks--case law--Europe
SNIPER No.: 2014/01339
Author: Sutton, Paul J., 1939SNIPER Bulletin – September 2014
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Title: The increasing impact of 'patent trolls'
Source: World Intellectual Property Review. Annual, 2014, pp. 40-42.
Summary: Patent trolls in the United States -- 'non-practising entities (NPEs)' -- 'patent assertion
entities (PAE)' -- impact of US businesses -- practical and understandable reasons why patent
trolls have taken hold in the US -- suggests the legal system permits attorneys to represent clients
in matters on a contingency fee basis -- trial by jury -- resumption of patent validity -- patent owner
carries the burden of proving infringement based upon a predominance of the evidence -- must
obtain a unanimous verdict of infringement in order to prevail -- costs associated with defending a
lawsuit.
Subject: Non-practicing entities--United States
SNIPER No.: 2014/01584
Author: Nevett, Duncan
Author: Dundas, Gavin
Title: Independence, but at what cost
Source: Intellectual Property Magazine. July-August 2014, pp. 18-20.
Summary: Scottish independence -- very little attention has been paid to the implications of
independence on UK patents and other forms of UK intellectual property -- Scotland boasts a
strong tradition of innovation -- strength of the Scottish science base -- contribution of Scottish
universities to UK research as a whole -- important that this contribution continues to be protected
and supported by a strong system of intellectual property rights -- obtaining patent protection in
Scotland -- patent protection in the event of Scottish independence -- international patent treaties -enforcement of patent rights in Scotland.
Subject: Intellectual property systems--reform--Scotland
Subject: Innovation (Technological)--Scotland
SNIPER No.: 2014/01483
Author: Acharya, Rajeshkumar
Author: Nagarajan, D.
Title: Indian patent law and the evergreening of pharmaceuticals patents
Source: World Intellectual Property Report. Vol. 28 No. 7, July 2014, pp. 39-40.
Summary: Consequences of evergreening -- used by multinational pharmaceutical companies to
restrict or prevent competition from manufacturers of generic equivalents to that drug -- preventive
provisions under Indian patent law -- 2005 Amendment Act provisions aimed at stemming the
practice of evergreening -- amendments to s 2(1)(ja) and s 2(1)(l) of the Patent Act -- definition of
"new invention" -- judgment in the Novartis case -- facts of the case -- discussion of the
Zimmermann patent -- analysis of the Supreme Court decision -- provisions for post-grant
opposition in 2005 Amendment Act may help to prevent evergreening
Subject: Pharmaceuticals--India
Subject: Evergreening--India
Subject: Patents--law and legislation--India
SNIPER No.: 2014/01337
Author: Hadad, Xavier
SNIPER Bulletin – September 2014
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Title: Innovative drugs or generics?
Source: World Intellectual Property Review. Annual, 2014, pp. 34-36.
Summary: Patent linkage system in Mexico -- provisions of Article 25 of the Industrial Property
Law -- exclusion of the formulation and new-use patents -- patent-marketing authorisation issue -ambiguous and subject to interpretation -- Supreme Court of Justice issued a majority decision
supporting broad interpretation -- includes compound patents and patents claiming pharmaceutical
formulations -- obtaining an MA.
Subject: Trade marks--pharmaceutical industry--Mexico
SNIPER No.: 2014/01494
Author: Charles, Lise
Author: Little, Trevor
Title: Inside INTA 2014
Source: World Trademark Review. No. 50, August-September 2014, pp. 70-74.
Summary: International Trademark Association (INTA) annual meeting -- expansion of the generic
top-level domain (gTLD) space -- plain packaging -- social media and China -- online advertising -to rebrand or not to rebrand, handling a reputational crisis.
Subject: International Trademark Association--meetings
SNIPER No.: 2014/01323
Author: Roeyen, Gino van
Author: Verdoold, Denise
Title: Intellectual property: a dedicated follower of fashion?: a Dutch perspective
Source: European Intellectual Property Review. Vol. 36 No. 5, 2014, pp. 352-357.
Summary: Fashion industry -- protect fashion against style pirates -- protectability of fashion under
intellectual property law from a Dutch perspective -- legal frameworks in the Netherlands -- patent
law -- trade mark law -- design law -- copyright law -- law of slavish imitation -- claimant needs to
show that his product has acquired its own place in the market -- product needs to distinguish itself
considerably from other available products -- relevant Dutch case law -- inconsistencies in the
judgments.
Subject: Intellectual property law--Netherlands
Subject: Intellectual property rights--fashion and design industry--Netherlands
SNIPER No.: 2014/01745
Author: Evers, Lisa
Author: Miller, Helen
Author: Spengel, Christophe
Added author: Zentrum für Europäische Wirtschaftsforschung
Title: Intellectual property box regimes: effective tax rates and tax policy considerations
Source: Zentrum für Europäische Wirtschaftsfoschung Discussion paper. No. 13-070, November
2013.
General Note: Published on Social Science Research Network (SSRN).
SNIPER Bulletin – September 2014
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Summary: IP box regimes operating in European countries -- provides substantially reduced rates
of corporate tax for income derived from intellectual property -- policies into forward-looking
measures of the cost of capital, effective marginal tax rates and effective average tax rates -treatment of expenses relating to IP income is particularly important in determining the effective tax
burden -- regimes that allow expenses to be deducted at the ordinary corporate income tax rate, as
opposed to the IP Box tax rate, may result in negative tax rates and can thereby provide a subsidy
to unprofitable projects a key finding -- assess the specific design features of different regimes
against the possible policy aim of improving the incentives to undertake R&D investment in a
country -- some countries have tried to tie the policy to real activities, others have designed a
policy targeted at the income streams associated with intellectual property -- key concern is the
role that IP Boxes may play in increased, and possibly harmful, tax competition between European
countries.
Subject: Taxation--intellectual property industry
SNIPER No.: 2014/01600
Author: Asher, Jeremy
Author: Lane, Giles
Author: Guild, Jennifer
Title: Intellectual property infringement: civil procedure isn't the only option
Source: Intellectual Property Magazine. July-August 2014, pp. 57-58.
Summary: Time is often critical, when dealing with intellectual property (IP) infringement -- recent
changes in both civil and criminal legal practice mean that IP owners need to move outside their
comfort zones and into the realms of criminal law -- key benefits of enforcement via the civil
procedure system -- burden of proof in the civil system is easier to satisfy than the criminal burden
-- reasons IP owners may not have considered using criminal law to enforce their rights -- number
of offences is wide ranging -- criminal prosecutions in IP disputes can have an extremely powerful
effect -- trade mark offences -- copyright -- registered designs -- advantages of the criminal
procedure.
Subject: Intellectual property infringement--United Kingdom
Subject: Criminal law--United Kingdom
SNIPER No.: 2014/01688
Author: Chiarolla, Claudio
Title: Intellectual property rights and benefit sharing from marine genetic resources in areas
beyond national jurisdiction: current discussions and regulatory options
Source: Queen Mary Journal of Intellectual Property. Vol. 4 No. 3, July 2014, pp. 171-194.
Summary: Considers key aspects of the law patents, trade secrets, copyrights and databases as
they relate to the utilisation of marine genetic resources (MGRs) -- global regimes on genetic
resources in the food, agriculture and health sector -- focus on IP management -- benefit sharing -disclosure of the source of MGRs -- georeferencing as good scientific practice -- United Nations
Convention on the Law of the Sea (UNCLOS) -- appropriate management of intellectual property
assets that arise from marine scientific research -- bioprospecting -- balancing needs in the context
of promoting research and innovation -- widest possible dissemination for the advancement of
science as a global public good.
Subject: Bioprospecting
Subject: Benefit sharing
SNIPER Bulletin – September 2014
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Subject: Patenting of life forms
SNIPER No.: 2014/01223
Author: Mongillo, Roberta
Title: Intellectual property rights and distance sales contracts
Source: European Intellectual Property Review. Vol. 36 No. 5, 2014, pp. 312-318.
Summary: Safeguarding of intellectual property -- differences in legislation among Member States
that hinder the distance sales contracts -- obstacle to the free movement of services and products
incorporating intellectual property -- trade marks, territoriality and distance sales contracts -copyright law and harmonisation -- advisability to eliminate those differences of discipline that
hinder the development of the single European market -- distribution to the public -- restriction to
the free movement of goods -- protection of industrial and commercial property -- maximise the
opportunities offered by electronic commerce and by the digital sector.
Subject: Intellectual property rights--Europe
Subject: Electronic commerce--law and legislation--Europe
Subject: Intellectual property systems--Europe
SNIPER No.: 2014/01314
Author: Dyekjaer, Karen
Title: Internet sales into the EU of fake 'replicas'
Source: Journal of Intellectual Property Law and Practice. Vol. 9 No. 7, July 2014, pp. 550-551.
Summary: Court of Justice of the European Union (CJEU) decides that counterfeit goods
purchased over the internet can be seized by Custom Authorities in accordance with Customs
Regulations -- Mr Blomqvist -- internet offer to sell a fake Rolex watch for just EUR 300 -Regulation 1383/2003 now Regulation 608/2013 -- Mr Blomqvist's argument -- Danish Court of
First Instance found for Rolex -- appeal to the Supreme Court of Denmark -- CJEU's reply -- CJEU
rules that right holders can obtain destruction of counterfeit goods and whether the goods are for
private use is not an adequate defence -- IP right holders in the EU would be pleased with the
verdict.
Subject: Intellectual property infringement--case law--Europe
Subject: Counterfeiting--Europe
Subject: Customs--Europe
SNIPER No.: 2014/01190
Author: Körber, Torsten, 1965Title: Internet search engines and competition law
Source: Journal of Intellectual Property Law and Practice. Vol. 9 No. 6, June 2014, pp. 517-520.
Summary: Antitrust investigations against Google -- role of internet search engines -- German
Federal Cartel Office, European Commission and the US Federal Trade Commission
investigations against Google -- deciding on what constitutes the market -- preventing the abuse of
market power through Competition law -- Google while important does not control what can be
found on the internet --alleged lack of search neutrality -- "leveraging" as an attempt to dominate
downstream markets -- the Google Universal Search service -- European Union (EU) proceedings
against Google -- uncertainty whether search regulation is necessary -- importance of trust.
Subject: Carriage service providers--law and legislation
SNIPER Bulletin – September 2014
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Subject: Competition law--Information technology industry
Subject: Internet
SNIPER No.: 2014/01479
Author: Blum, Jeremy
Title: Internet surfers off the hook, where to now for copyright holders?
Source: World Intellectual Property Report. Vol. 28 No. 7, July 2014, pp. 29-31.
Summary: Court of Justice of the European Union decision in Public Relations Consultants
Association (Meltwater) v. Newspaper Licensing Agency Ltd & Ors -- found that internet user
viewing or browsing a webpage onscreen not liable for copyright infringement because onscreen
browsing fell within an exception to copyright infringement -- facts of the case -- copyright law in
the UK and Europe -- case proceedings in the UK -- analysis of the CJEU decision -- implications -policy to ensure that the internet can function properly and efficiently -- difficult for copyright
holders in fighting piracy -- cannot prevent intentional viewing of infringing content onscreen by
users -- need to focus on the source of the pirated works
Subject: Electronic copyright--case law--Europe
Subject: Copyright infringement--case law--Europe
Subject: Internet
SNIPER No.: 2014/01342
Author: Xiang, Gao
Title: Interpreting China's new trademark law
Source: World Intellectual Property Review. Annual, 2014, pp. 50-53.
Summary: China's Trademark Law -- third amendment to come into effect May 2014 -- summary
of the changes -- expansion of scope of registrable trademarks -- addition of multiclass applications
-- addition of letter of examiners opinion for the applicants explanation -- explanation of timeframes
for examination and review procedures -- allowance of earlier filing of renewals -- addition of
articles on combating bad faith registration -- revised grounds of opposition and simplified
procedures -- added invalidation procedures -- simplified cancellations -- clarified protection for
well-known marks -- added and redefined types of infringement -- strengthened administrative
protection measures -- improved judicial protection measures -- added non-use demurrer.
SNIPER No.: 2014/01782
Author: Sato, Shunji
Title: Introducing non-traditional marks in Japan
Source: Expert Guides. Trade Mark Lawyers, June 2014, pp. 12-13.
Summary: Trademark Act in Japan amended in 2014 to include non-traditional marks -- previously
in Japan only "characters, figures, signs, three-dimensional shapes or combination thereof" had
been protected -- Japan Patent Office (JPO) broadening the scope -- extension of protection now
consistent with other East Asian counties such as South Korea, Taiwan, China -- types of nontraditional marks -- distinctiveness -- identification of the mark -- details of the trade mark
examination guidelines not yet been decided.
Subject: Non-traditional marks--Japan
SNIPER Bulletin – September 2014
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SNIPER No.: 2014/01748
Author: World Intellectual Property Organization
Added author: Japan. Tokkyochō
Title: IP successes in the ASEAN region: case studies
Source: IP Successes in the ASEAN Region. 2014.
Summary: Collection of ten case studies highlighting how IP has been practically and successfully
implemented in ASEAN countries -- how IP can continue to be used for economic, social and
cultural development in the region -- Brunei Darussalam -- Cambodia -- Indonesia -- Lao People's
Democratic Republic -- Malaysia -- Myanmar -- Philippines -- Singapore -- Thailand -- Viet Nam.
Subject: Intellectual property--case studies--Southeast Asia
SNIPER No.: 2014/01602
Author: Keenan, Danny
Author: Ran, Chunbo
Author: Shetty, Anand
Author: Bhattacharya, Suman Kumar
Title: Is a picture really worth a thousand words?
Source: Intellectual Property Magazine. July-August 2014, pp. 61-63.
Summary: Written matter often a requirement of design applications -- role of the non-graphical
parts of the application in relation to the scope of protection of a design in some major jurisdictions
-- to what extent the title, written description or claims limit the scope of a design -- whether the
protection for a design extends beyond the articles specified in the assigned classification.
Subject: Industrial design applications
Subject: Industrial design classification
SNIPER No.: 2014/01749
Author: Shanahan, Jim
Title: Is it time for your country to consider the "patent box"?
Source: Is it Time for Your Country to Consider the "Patent Box"?. 2011.
General Note: "PwC's Global R&D Tax Symposium on Designing a Blueprint for Reducing the
After-Tax Cost of Global R&D" held May 23, 2011 in Dublin, Ireland. -- Cover.
Summary: Defining a patent box -- patent box regimes in four countries -- Belgian patent income
deduction scheme -- Dutch innovation box regime -- Luxembourg patent box regime -- UK's
proposed patent box regime -- comparison of four patent boxes -- designing a patent box regime
for other countries -- checklist of some possible issues in the design of a patent box regime -qualifying IP, IP income in "box", treatment of income in 'box" -- elective or mandatory -coordination with existing R&D incentives -- revenue cost.
Subject: Taxation--intellectual property industry
Subject: Intellectual property management--trends
SNIPER No.: 2014/01573
Author: Froemming, John
SNIPER Bulletin – September 2014
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Author: Bradley, Jessica
Title: It's a wrap
Source: Intellectual Property Magazine. June 2014, pp. 76-77.
Summary: Reynolds Consumer Products sold aluminium foil in essentially the same packaging
since 1958 -- Handi-Foil Corp between 2002 and 2011 offered aluminium roll foil under its own
packaging design but was unsuccessful -- a "dollar" chain store approached Handi-Foil about
replacing Reynolds Wrap in its stores -- Handi-Foil obliged, and subsequently offered roll foil in
imitative packaging -- when Handi-Foil began offering the packaging to other retailers, Reynolds
sued for infringement of its "trade dress" -- Reynolds emphasised Handi-Foil's motivation to imitate
-- evidence of copying the colours and appearance of Reynolds' packaging -- also filed motions in
limine to obtain rulings prior to trial that key documents evidencing Handi-Foil's intent to copy were
admissible -- Handi-Foil argued that Reynolds was just a larger company that feared competition -argued that the lack of any confusion in the marketplace showed confusion was not likely -Reynolds countered with its own survey showing substantial confusion – jury found that Handi-Foil
wilfully infringed Reynolds' federal common law trade dress rights in its packaging design.
Subject: Trade dress--case law--United States
Subject: Expert witnesses--United States
SNIPER No.: 2014/01097
Author: Arámburu Fernandez, Lucrecia
Title: It's all in the evidence
Source: World Trademark Review. No. 49, June-July 2014, pp. 116-117.
Summary: Mexican Trademark Law amended in 2005 to take account of declarations of notorious
and famous trade marks -- applicant must provide evidence that its mark is notorious or famous -Mexican Trademark Office published a schedule of fees that must be paid both on application and
on the issuance of a declaration -- evidence applicants should submit in order to secure an
application -- divided well-known trade marks into two kinds -- famous trade marks -- notorious
trade marks -- vital to identify how much recognition a trade mark enjoys -- evidence that a rights
holder must submit to secure a declaration that its mark is either famous or notorious -- in Spanish
or accompanied by Spanish translations -- declaration is valid for 5 years -- first declaration for a
well-known mark was for the catalogue sale brand 100% Mexican, which offers footwear for sale -Andrea mark was declared notorious in 2008 -- Trademark Office has issued various declarations
for notorious and famous trade marks -- benefits of such declarations.
Subject: Famous trade marks--Mexico
Subject: Evidence--Mexico
SNIPER No.: 2014/01572
Author: Hatchwell, Michael
Title: Karen Millen's wrangle with Dunnes Stores
Source: Intellectual Property Magazine. June 2014, pp. 74-75.
Summary: Karen Millen released a black knit top and a striped shirt sold in blue and brown
versions -- Dunnes Stores put similar items on sale in its own Savida range -- Karen Millen
commenced legal action in the High Court in Ireland against Dunnes -- claiming that Dunnes had
infringed its design rights under Regulation No 6/2002 on unregistered Community designs -Dunnes conceded they had copied the articles -- remaining issue to be litigated was Dunnes' claim
that the articles were not protected under the Regulation due to a lack of individual character -High Court ruled against Dunnes -- ordered delivery up of all the remaining infringing items,
SNIPER Bulletin – September 2014
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restrained ongoing sales of the items and ordered an account of profit -- Dunnes appealed the
High Court's decision to the Supreme Court of Ireland -- Supreme Court dismissed some of the
complaints raised by Dunnes -- referred certain matters to the Court of Justice of the European
Union (CJEU).
Subject: Industrial designs--fashion and design industry--Europe
Subject: Industrial design infringement--case law--Europe
SNIPER No.: 2014/01322
Author: Tan, Corinne Hui Yun
Title: Lawrence Lessig v Liberation Music Pty Ltd: You Tube's hand (or bots) in the over-zealous
enforcement of copyright
Source: European Intellectual Property Review. Vol. 36 No. 5, 2014, pp. 347-351.
General Note: Also published Social Science Research Network (SSRN)
Summary: Lawrence Lessig v Liberation Music Pty Ltd -- clarify the right of users to modify and
disseminate content available on social media sites -- complaint resolved in Lawrence Lessig's
favour -- copyright takedown notices -- Digital Millennium Copyright Act 1998 (DMCA) -- YouTube
play a big role in enforcing the DMCA notice and takedown mechanism -- safe harbour provision -over-zealous enforcement of copyright -- takedown requests will not be issued without human
review and fair use considerations in future.
Subject: Copyright infringement--case law--United States
Subject: Fair use (Copyright)
Subject: Musical works
SNIPER No.: 2014/01544
Author: Leichtman, David
Title: Let's keep this brief
Source: Intellectual Property Magazine. June 2014, p. 17.
Summary: Unexpected turn in the long-running Google Books Project litigation -- Second Circuit
Judge Denny Chin granted Google summary judgment -- finding that the scanning, storing,
distribution and display of millions of books and other copyrighted works constituted a fair use
under copyright law -- Judge Chin previously rejected a settlement of the class action on the
grounds that it gave Google too much without corresponding benefits to copyright owners -Authors Guild promptly appealed -- numerous amicus briefs were filed on behalf of various authors
and copyright groups -- amicus brief of the American Society of Journalists & Authors (ASJA).
Subject: Copyright litigation--United States
Subject: Fair use (Copyright)--United States
SNIPER No.: 2014/01315
Author: Barazza, Stefano
Title: Licensing standard essential patents, part two: the availability of injunctive relief
Source: Journal of Intellectual Property Law and Practice. Vol. 9 No. 7, July 2014, pp. 552-564.
Summary: Review of the issues around the availability of injunctive relief for the enforcement of
standard essential patents (SEPs) and an overview of issues around fair, reasonable and nondiscriminatory (F/RAND) commitments -- use of injunctions for the enforcement of SEPs -- insights
SNIPER Bulletin – September 2014
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into policy considerations in the USA and EU -- how the courts see the situation in the USA -- the
view of European courts -- the future of F/RAND -- aiming to find a coherent and predictable
approach to F/RAND -- role of standard-setting organisations.
Subject: Standards (Technical)--case law--United States
Subject: Standards (Technical)--case law--Europe
Subject: Patent licensing
Subject: Infringement remedies
SNIPER No.: 2014/01555
Author: Taylor, David
Title: 'Magna Carta' search for the internet
Source: Intellectual Property Magazine. June 2014, pp. 36-38.
Summary: NETMundial global multi-stakeholder meeting on 'the future of internet governance' -delegates seeking to chart the future of internet governance (IG) and debate the key principles on
which the internet should evolve -- complexities of IG -- National Telecommunications and
Information Administration (NTIA) announced it would transition the stewardship of the Internet
Assigned Numbers Authority (IANA) functions -- NETMundial's statement -- supports the principles
of a decentralised and multi-stakeholder driven internet ecosystem -- principles of the evolution of
the internet government ecosystem.
Subject: Internet--management
SNIPER No.: 2014/01547
Author: Lainson, Daphne C.
Author: Bolduc, Christian
Title: Major changes to Canadian IP law
Source: Intellectual Property Magazine. June 2014, p. 22.
Summary: Canadian government tabled five intellectual property law treaties in Parliament -harmonise Canada's patent, trade mark and industrial design law with its most important trading
partners around the world -- government agreed in principle to a Comprehensive Trade and
Economic Agreement (CETA) with the European Union (EU) -- a number of changes to Canada's
IP laws are proposed -- most significant likely being for pharmaceutical patentees -- changes to the
Canadian Trademarks Act -- law relating to geographical indications (GIs) will also be significantly
changed -- amendments to the Patent Law Treaty (PLT) are anticipated.
Subject: Intellectual property law--reform--Canada
SNIPER No.: 2014/01751
Author: Collopy, Dennis
Author: Bastian, Vanessa
Author: Drye, Tim
Author: Koempel, Florian
Author: Lewis, David
Author: Jenner, Peter
Added author: UK Intellectual Property Office
SNIPER Bulletin – September 2014
Page 42 of 76
Title: Measuring infringement of intellectual property rights
Source: Measuring Infringement of Intellectual Property Rights. June 2014.
General Note: Research commissioned by the UK Intellectual Property Office.
General Note: "DPS/IP Research-06/14".
Summary: Overview of the existing methods used to measure infringement of intellectual property
rights (IPRs) -- recommendation of suitable methodologies including those capable of being
adopted across different IP rights -- copyright, trade marks, patents and design rights -- includes
recommendations for best practice on statistics and estimating IPR infringement -- blended
approach to the assessment of IP infringement -- application of the framework to IP rights.
Subject: Intellectual property infringement
Subject: Intellectual property rights--statistics
SNIPER No.: 2014/01587
Author: Coulson, Neil
Author: Whitaker, Mark
Title: Medical devices: recent developments in the UK and the US
Source: Intellectual Property Magazine. July-August 2014, pp. 27-28.
Summary: Ability to seek patent protection for as long as possible is a key issue for any medical
technology company -- international nature of the industry has allowed competitors to import and
export their products to new markets -- difficult for rightsholders to control the flow of infringing
products -- recent decision in the UK relating to the applicability of supplementary protection
certificates (SPCs) -- developing jurisdiction of the US International Trade Commission (US ITC),
as it relates to medical devices.
Subject: Medical procedures and devices--case law--United States
Subject: Medical procedures and devices--case law--United Kingdom
SNIPER No.: 2014/01352
Author: Fernández, Gabriela
Title: Mexico's real challenge
Source: World Intellectual Property Review. Annual, 2014, pp. 84-85.
Summary: Effect of the patent system on the biotechnology industry in Mexico -- one of the fastest
growing sciences in Mexico -- absence of suitable regulation around natural resources -- risk of
overexploitation of the rich biodiversity -- the Law on Biosafety of Genetically Modified Organisms
passed -- Monsanto Law --- excluded from scope of application of this law is IP on biotechnological
products and processes -- the moral clause -- Mexico's challenge to develop biotechnology by
means of IP through patent protection -- effect of inventor migration also a problem in Mexico as
few positions available in research centres -- recommends modifying the Mexican Industrial
Property Law -- broadened to include measures for regulating the registration of biotechnological
patent -- in line with legislation of other countries for this technology.
Subject: Biotechnology industry--Mexico
Subject: Intellectual property systems--Mexico
Subject: Indigenous issues in intellectual property--Mexico
SNIPER Bulletin – September 2014
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SNIPER No.: 2014/01586
Author: Abell, Mark
Title: Mind over medicine
Source: Intellectual Property Magazine. July-August 2014, pp. 24-26.
Summary: Private and state-funded healthcare providers in developed markets could better
manage their intellectual property (IP) rights -- could be through the exploitation of a new form of
international open ended peer-to-peer social franchising -- could form part of the answer to their
fiscal problems -- help to create robust healthcare infrastructure -- lack of access to relevant knowhow in developing countries -- poor management of IP in developed countries -- how can
franchising be used in the healthcare sector? -- Peer to Peer Social Franchising (P2P franchising) - generating new income streams -- which providers could generate income streams from abroad?
-- how should healthcare providers begin international franchising? -- how should healthcare
providers prepare to become a franchisor?
Subject: Intellectual property management--health and community services industry
Subject: Franchising--health and community services industry
SNIPER No.: 2014/00786
Author: Yates, David L.
Author: Ward, Jacqui
Title: Movie stars, musicians and misappropriation
Source: Australian Intellectual Property Law Bulletin. Vol. 27 No. 3, April 2014, pp. 65-68.
Summary: Caution when using another person's work as inspiration -- A-listers - not quite role
models -- actor Shia LeBeouf reworking a Daniel Clowes graphic novella into a film without giving
credit -- David LaChapelle and Philip Paulus brought legal proceedings against singer Rihanna for
her replication of their photographs in her music video "S&M" -- Madonna was sued in 2003 for
similar plagiarising photographs by Guy Bourdin in her "Hollywood" music video -- a different form
of work will not protect the infringer -- the "substantial part" test remains -- changing the current
legislation? -- developments in Australia and the United Kingdom – implications.
Subject: Copyright owners' rights
Subject: Moral rights
Subject: Copyright infringement
SNIPER No.: 2014/01467
Author: Cole, Paul, 1946Title: Myriad: an obvious and patent-friendly interpretation
Source: CIPA: the journal, incorporating the 'Transactions', of the Chartered Institute of Patent
Agents. Vol. 43 No. 6, June 2014, pp. 335-337.
Summary: Natural product eligibility guidance issued by the USPTO -- Nautilis v Biosig -- remains
to ascertain whether the plural reason test is consistent with other key opinions on product of
nature eligibility -- discussion surrounding various cases cited in Myriad -- Justice Ginsberg
expressed concern that in rejecting the patentability of isolated genomic sequences US law would
be differing from that in every other industrialised nation -- US would be in a singular position.
Subject: Patenting of life forms--law and legislation--United States
Subject: Gene patents--United States
SNIPER Bulletin – September 2014
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SNIPER No.: 2014/01786
Author: Teil, Genevìève
Title: Nature, the coauthor of its products?: an analysis of the recent controversy over rejected
AOC wines in France
Source: Journal of World Intellectual Property. Vol. 17 No. 3-4, July 2014, pp. 96-113.
Summary: Producers defending terroir have called for and obtained a reform of the AOC (French
GI) regulation which they deem to be incapable of containing "dangerous shifts" in the
interpretation of terroir -- the intellectual property dimension of AOCs is returning to the forefront of
concerns -- "terroir" quality of AOCs is the multifaceted result of a duet between the vintner and his
vineyard, allowing greater creativity -- present reform embraces this change by adding to
regulations specifying the means, an accreditation more receptive to innovation -- runs into
difficulties over the assessment of typicity upon which the AOC quality guarantee has to be based - reasons for these difficulties and suggestions for an assessment better suited to the multifaceted
nature of typicity.
Subject: Geographical indicators--reform—France
Subject: Geographical indicators—agriculture industry
Subject: Intellectual property law--reform--France
SNIPER No.: 2014/01469
Author: Tridico, Anthony C.
Title: Navigating the Supreme Court's 2013-2014 patent docket
Source: CIPA: the journal, incorporating the 'Transactions', of the Chartered Institute of Patent
Agents. Vol. 43 No. 6, June 2014, pp. 346-347.
Summary: Landscape of U.S. patent law -- USPTO continues to learn how to navigate the
America Invents Act -- Supreme Court decisions in 2014 -- Nautilis, Inc v Biosig Instruments, Inc -possibly impact of a lack of definiteness defense during district court litigation -- Medtronic, Inc v
Mirowski family ventures, LLC -- proving infringement in a declaration of non-infringement LLC -Limelight Networks Inc. v Akamai Technologies, Inc -- single entity test re-instated -- Octane
Fitness, LLC v Icon Health & Fitness, Inc -- Highmark, Inc v Allcare Health Management System,
Inc -- cost-shifting -- Alice Corp v CLS Bank International.
Subject: Patents--law and legislation--United States
Subject: Intellectual property systems--United States
SNIPER No.: 2014/01466
Author: Curley, Duncan
Title: New European technology licensing competition rules
Source: CIPA: the journal, incorporating the 'Transactions', of the Chartered Institute of Patent
Agents. Vol. 43 No. 6, June 2014, pp. 331-334.
Summary: European Technology Transfer Block Exemption Regulation (TTBER) into force on 1
May 2014 -- provides a safe harbour to protect technology transfer agreements from the European
Union prohibition of anticompetitive agreements -- block exemptions generally -- market share
thresholds -- hardcore lists of contractual restrictions (blacklists) -- grey lists -- what is new in the
technology licensing block exemption -- stricter approach to grant-back clauses -- strict approach
to termination clauses in non-exclusive licences -- new guidance on technology (patent) pools -new guidance on settlement agreements.
Subject: Technology transfer--reform--Europe
SNIPER Bulletin – September 2014
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SNIPER No.: 2014/01336
Author: Pérez, Álvaro Lluna
Title: Nice classification post IP translator
Source: World Intellectual Property Review. Annual, 2014, pp. 32-33.
Summary: Court of Justice of the European Union 2012 decision in IP Translator case -- judgment
has an impact on the classification practices of all the trademark offices in the EU -- trade mark
offices working on a common understanding on how to interpret the general indicators of the Nice
Classification headings -- requirements of clarity and precision to be applied to their respective
classification practices -- reviewing all general indications of the Nice Class headings.
Subject: Trade mark registration--procedure--Europe
Subject: Trade mark systems--reform--Europe
SNIPER No.: 2014/01569
Author: Blum, Jeremy
Author: Pollard, Briony
Title: Not only Bimbos get confused: the European approach to composite trademarks
Source: Intellectual Property Magazine. June 2014, pp. 68-69.
Summary: Bimbo v Office for Harmonization in the Internal Market (OHIM), Panrico SA -- Court of
Justice of the European Union (CJEU) -- assessing a composite mark is about the concept of
"likelihood of confusion" -- in Bimbo, Panrico opposed Bimbo's application to register BIMBO
DOUGHNUTS as a Community Trade Mark (CTM) -- based on the likelihood of confusion with
Panrico's earlier Spanish word mark DOGHNUTS -- OHIM Opposition Division and OHIM Board of
Appeal both upheld the opposition -- on appeal, the EU General Court also upheld the opposition -Bimbo appealed to the CJEU -- earlier case law -- decision of the CJEU.
Subject: Trade mark opposition--case law--Europe
Subject: Confusing similarity--case law--Europe
SNIPER No.: 2014/01334
Author: Holoubek, Michelle K.
Author: Messinger, Michael V.
Title: Observations on covered business method patent review
Source: World Intellectual Property Review. Annual, 2014, pp. 24-26.
Summary: Challenging and defending patents post America Invents Act (AIA) -- post-grant option
Covered Business Method (CBM) -- challenges and opportunities posed by this unique procedure - USPTO rules and eligibility criteria -- CBM filings for technology companies as opposed to
financial entities -- expedited schedule -- legislative history -- early termination -- multiple CBMs -privy -- appeal -- only one claim needed -- broad financial eligibility -- s102(e).
Subject: Legal procedure--United States
SNIPER No.: 2014/00791
Author: Heindl, Sabiene
Title: Ocker Vegemite not allowed to spread charitably
SNIPER Bulletin – September 2014
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Source: Australian Intellectual Property Law Bulletin. Vol. 27 No. 3, April 2014, pp. 80-81.
Summary: Dick Smith's "OzEmite" mark removed after action by "AussieMite" maker Roger
Ramsay -- OzeMite mark registered in 1999 and the yeast spread was launched in 2012 -- sales
profits from half a million jars went to the Dick Smith Foods charity -- marks registered by Mr Smith
for "DINKY DI-NEMITE" and "YANKEEMITE"
Subject: Trade mark cancellation--Australia
Subject: Trade marks--case law--Australia
SNIPER No.: 2014/01683
Added author: Organisation for Economic Co-operation and Development. Directorate for
Science, Technology and Industry
Title: OECD reviews of innovation policy: France 2014: chapter 1
Source: OECD Reviews of Innovation Policy. France, 2014.
General Note: The full report entitled Examenes de l'OCDE des politiques d'innovation, is
available in French only.
Summary: Strategic challenges facing the French research and innovation system (SFRI) -- role of
the State in large research organisations -- effectiveness of this kind of model in the current global
and national economic context -- findings of the review in regards to human resources for
innovation -- investments for the future program, ten-year plan launches in 2010 to develop and
transform the French research and innovation system -- performance of the SFRI.
Subject: Innovation (Technological)--policy--France
Subject: Innovation (Technological)--trends--France
Subject: Intellectual property--policy--France
Subject: Intellectual property--trends--France
SNIPER No.: 2014/01558
Title: The OHIM tool kit
Source: Intellectual Property Magazine. June 2014, pp. 43-44.
Summary: EU Observatory on Infringements of Intellectual Property Rights, a department within
the Office for Harmonization in the Internal Market (OHIM) -- provides evidence-based studies and
data to help policymakers shape effective intellectual property (IP) enforcement policies -- provides
tools and data to support the fight against IP infringement -- supports knowledge and learning
programmes about IP for enforcement authorities and other interested parties -- works to raise
awareness of the value and the importance of IP in EU society as a whole -- background and tools
-- the Enforcement Database -- EU Delegation Network -- survey by the Observatory -- aims to
build up a picture of the reality of IPR enforcement and protection in countries outside the EU.
Subject: Office for Harmonization in the Internal Market (Trade Marks and Designs)
Subject: Intellectual property enforcement
SNIPER No.: 2014/01497
Author: Ruess, Peter
Author: Rinken, Marina
Title: Olfactory marks revisited
SNIPER Bulletin – September 2014
Page 47 of 76
Source: World Trademark Review. No. 50, August-September 2014, pp. 84-85.
Summary: Scents increasingly being used as marketing devices for (at least at first glance)
unrelated products -- current challenges in registering olfactory marks in Europe -- smell marks are
protectable under trade mark law -- according to the EU Community Trademark Regulation, a sign
must be graphically representable and capable of distinguishing the goods or services of one
undertaking from those of others -- issue with olfactory trade marks is graphical representation -initially, a verbal description of the smell was found sufficient to fulfil the criterion of graphical
representation -- European Court of Justice (ECJ) found in Sieckmann that a verbal description of
a scent is insufficient to fulfil the criterion of graphical representation -- ECJ required that a
graphical representation be clear, precise, self-contained, easily accessible, intelligible, durable
and objective -- sample of the smell, a chemical formula, a verbal description or a combination of
these would not fulfil these criteria -- no new olfactory trade marks are being registered at all -different approaches have been taken to try to find a way to represent an olfactory trade mark
graphically -- all have so far been denied -- other protection possibilities -- France has extensive
case law for copyright protection for scents.
Subject: Scent marks--registrability--Europe
Subject: Trade marks--law and legislation--Europe
SNIPER No.: 2014/01575
Author: Phillips, Tom
Title: One SEP forwards...
Source: Intellectual Property Magazine. June 2014, pp. 82-83.
Summary: European Commission adopted two decisions -- set out a framework for the
circumstances when patent owners seeking to enforce standard essential patents (SEPs) may
violate the EU antitrust rules -- Commission's framework seeks to create a safe harbour for
implementers of standards from injunctions based on SEPs, where such parties can demonstrate
that they are a willing licensee -- decisions also push the SEP holder and potential licensee
towards a dispute resolution procedure to adjudicate on fair, reasonable and non-discriminatory
(FRAND) terms where agreement cannot be reached -- decisions subject to rulings by the Court of
Justice of the European Union (CJEU) -- intended to provide Europe-wide guidance to SEP
holders and potential licensees -- Samsung decision -- Motorola decision -- willing licensee -impact on court proceedings and litigation.
Subject: Competition (Economics)--case law--Europe
Subject: Dispute resolution
SNIPER No.: 2014/01100
Author: Vilau, Dragos M.
Author: Lupsa, Ionut
Title: Overcoming inconsistencies
Source: World Trademark Review. No. 49, June-July 2014, pp. 122-123.
Summary: Well-known trade marks are protected in Romania pursuant to the Paris Convention for
the Protection of Industrial Property -- Agreement on Trade-Related Aspects of Intellectual
Property (TRIPs) brought additional protection for well-known trade marks -- well-known marks
defined -- Trademark Law specifically provides that neither registration nor use in Romania need to
be proved when a rights holder claims that its mark is well-known -- case law -- inconsistency in
case law -- how should rights holders prove their marks are well-known?
Subject: Famous trade marks--law and legislation--Romania
SNIPER Bulletin – September 2014
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Subject: Famous trade marks--case law--Romania
SNIPER No.: 2014/01579
Author: Ohta, Tom
Title: The parody problem: what does the future hold?
Source: Intellectual Property Magazine. July-August 2014, pp. 11-12.
Summary: Parodies are found across all genres of creative works -- simultaneously a copy and a
creation -- imitates and draws on key elements of an earlier work -- raises intriguing intellectual
property issues, with regards to copyright and trade marks -- parody has the potential to infringe
the original author's copyright unless, what has been taken is not 'substantial', or it falls within one
of the copyright exceptions -- issues considered in the recent Deckmyn case before the Court of
Justice of the European Union -- scope and effect of the caricature, pastiche and parody exception
provided for under the Information Society Directive (2001/29/EC) -- raises pertinent considerations
when the UK government is scrutinising the long-awaited copyright exception for 'parody,
caricature and pastiche' -- The adventures of Spike and Suzy (Suske and Wiske) was the subject
of legal proceedings in Belgium -- member of the Flemish national political party (Johan Deckmyn)
spoofed the cover of the Spike and Suzy story of 'The Wild Benefactor' (De Wilde Weldoener) -Advocate General's (AG) opinion -- what does the future hold for parody?
Subject: Fair use (Copyright)--case law--Belgium
Subject: Humour in intellectual property
SNIPER No.: 2014/01225
Author: Chen, Yi Fu
Title: Patent law and traditional Chinese medicine: problems in the identification of inventions and
the remedies
Source: European Intellectual Property Review. Vol. 36 No. 5, 2014, pp. 327-334.
Summary: Pharmaceutical inventions -- patent law mainly focused on Western pharmaceuticals -incompatibilities between the patent law and traditional Chinese medicine (TCM) -- issue of
compatibility in terms of the definition of TCM inventions within the patent application process -three primary methods currently used for the identification of TCM inventions -- efficacy of
compounds, their physical properties and the product-by-process claim -- how these methods are
used in both Western and Eastern countries patenting practices -- to what extent such methods are
suitable for TCM invention -- unique features of TCM -- problems inherent in the identification issue
-- remedies to the incompatibility problems.
Subject: Traditional knowledge--pharmaceutical industry--China
Subject: Indigenous issues in patents
SNIPER No.: 2014/01304
Author: Santo, Gian Paolo di
Title: Pfizer's misuse of patent/SPC rights results in an abuse of dominant position
Source: Journal of Intellectual Property Law and Practice. Vol. 9 No. 7, July 2014, pp. 535-537.
Summary: Highest Italian administrative tribunal (Consiglio di Stato) has fully upheld the appeal
filed by the Italian Competition Authority (ICA) and Assogenerici against Pfizer -- Pfizer punished
for anticompetitive practice -- aim to prevent or delay entry by rivals into the market for the
treatment of glaucoma in Italy -- Xalatan, an eye treatment -- active agent latanoprost -- history of
SNIPER Bulletin – September 2014
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protection on latanoprost -- extension granted -- supplementary protection certificates (SPCs) -request for divisional patent seen as improper -- generic drugs' manufactures' trade association
Assogenerici -- ICA administrative fine of more than EUR 10 million imposed on Pfizer -- ability of
competition law to restrict unfair practices -- practical significance.
Subject: Patent extension--case law--Italy
Subject: Patent litigation--pharmaceutical industry--Italy
Subject: Competition (Economics)--Italy
Subject: Competition law--Italy
SNIPER No.: 2014/01548
Author: Sheraton, Hiroshi
Title: Pharma's IP overdose is driving new business models
Source: Intellectual Property Magazine. June 2014, p. 23.
Summary: Pharmaceutical industry was characterised by the 'blockbuster' product -- single
proprietary active pharmaceutical ingredient (API) -- treated a widespread ailment -- addressed a
relatively price insensitive western market for drugs -- patent protected API could represent a multibillion dollar franchise -- provide funding for the next generation of products in the research and
development (R&D) pipeline -- today the industry has experienced the 'patent cliff' and is following
fundamentally different business and R&D models -- facing challenges from competition authorities
on intellectual property (IP) issues -- increased pressure on drug prices -- factors that have
contributed to the failure to replace old drugs with new technologies -- changes in IP law -European Supplementary Protection Certificate (SPC) -- 'patent thickets' -- 'royalty stacking' -other trends in the pharmaceutical sector.
Subject: Intellectual property--pharmaceutical industry
Subject: Pharmaceutical industry--trends
SNIPER No.: 2014/01102
Author: Andreottola, Paolo
Title: Playing the fame game
Source: World Trademark Review. No. 49, June-July 2014, pp. 126-127.
Summary: Becoming a famous brand is normally a lengthy process -- trade mark legislation in the
United Kingdom affords a unique and substantial degree of protection to well-known and famous
marks -- proprietor of an earlier well-known trade mark can oppose a later identical or substantially
similar trade mark in relation to identical or similar goods or services -- concept of 'well-known'
requires a rights holder to show a substantial degree of recognition of its mark among the public in
a substantial part of the United Kingdom -- enhanced protection to well-known trade marks and
trade marks with a reputation -- passing-off action -- distinction between goodwill and reputation -evidence.
Subject: Famous trade marks--law and legislation--United Kingdom
Subject: Famous trade marks--case law--United Kingdom
SNIPER No.: 2014/01581
Author: Kelly, Timothy J.
Title: Playoff or touchdown?
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Source: Intellectual Property Magazine. July-August 2014, p. 15.
Summary: US Trademark Trial and Appeal Board recently ordered the cancellation of six
registrations for the mark 'Redskins' -- the term is disparaging in nature -- Board's decision in
Blackhorse, et al v Pro-Football, Inc, is perceived by some as a blow to the respondent ProFootball -- what happened? -- is a registration for Redskins that important? – next step.
Subject: Trade mark cancellation--case law--United States
Subject: Trade mark registrability--case law--United States
SNIPER No.: 2014/01332
Author: Butler, Scott
Title: Policing the pirates
Source: World Intellectual Property Review. Annual, 2014, pp. 18-19.
Summary: Arabian Anti-Piracy Alliance (AAA) -- focused on the protection of intellectual property
rights in the Gulf Cooperation Council (GCC) countries -- United Arab Emirates (UAE), Saudi
Arabia, Qatar, Bahrain, Oman and Kuwait -- case management -- representing rights holders from
a wide selection of diversified industries and sectors -- one of the main service providers in IP
enforcement -- lobbying -- training and public relations -- works closely with international trade
organisations.
Subject: Intellectual property industry--Middle East
SNIPER No.: 2014/01325
Author: Sugden, Paul
Title: The power of one!: the failure of criminal copyright laws (piracy) to blend into the greater
cultural consciousness!
Source: European Intellectual Property Review. Vol. 36 No. 5, 2014, pp. 363-375.
Summary: Effectiveness of the intended outcomes of copyright laws when benchmarked against
subsets of deterrence theory -- override sociological theories -- copyright criminal offences
benchmarked with broad deterrence justifications -- deterrence theory -- normative framework -copyright piracy is not a priority in cultural consciousness -- egoism in the music industry
demonstrates normative behaviours -- failures of deterrence as a justification -- new norms of
copyright acceptance -- enforcement in Australia.
Subject: Infringement remedies
Subject: Criminal law
Subject: Copyright--law and legislation--Australia
Subject: Copyright--law and legislation--United States
SNIPER No.: 2014/01094
Author: Baker, Brandy
Title: A powerful, but difficult-to-obtain-tool
Source: World Trademark Review. No. 49, June-July 2014, pp. 110-111.
Summary: China's trade mark regulations are often unclear and confusing to foreign right holders
-- China has a first-to-file system -- it is not uncommon for them to discover that someone has
already registered their trade mark -- trade mark squatting a widespread problem -- there are a
number of tools available to help rights holders regain control of their trade marks -- trade mark
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oppositions, trade mark cancellations and well-known trade mark status -- well-known status is a
powerful tool, it is difficult to obtain -- when is a trade mark considered well known? -- who
determines whether a trade mark should be granted well-known status? -- what to do if you cannot
obtain well-known status.
Subject: Famous trade marks--China
Subject: Trade marks--law and legislation--China
SNIPER No.: 2014/01789
Author: Tan, Loke Khoon, 1962Title: A pragmatic review of the third revision of China's Trademark Law
Source: World Intellectual Property Report. Vol. 28 No. 8, August 2014, pp. 27-29.
Summary: Third revision of China's Trademark Law came into effect on 1 May 2014 -- improve
efficiency in trade mark administration -- bring domestic practice in line with international standards
-- significant changes -- sound marks included -- multi-class applications allowed -- expanded
scope of identity documents required for trade mark applications -- shortened timeframe for
examination and appeals -- electronic applications allowed --- formal communication with
examiners permitted -- removal of trade mark opposition appeal -- prior use defence to trade mark
infringement -- good faith requirement in using and applying for a trade mark --prohibited use of
the Chinese term meaning "well-known trademark" on goods' packaging and advertisements -trade mark agencies' responsibilities -- increased statutory damages.
Subject: Trade marks--law and legislation--China
SNIPER No.: 2014/01083
Author: Lue, Henry
Author: Punniyamoorthy, Sangeetha
Title: Preparing for the future
Source: World Trademark Review. No. 49, June-July 2014, pp. 72-73.
Summary: Significant trade mark activity in Canada -- a number of decisions -- practice changes -government has also proposed long-awaited statutory amendments -- key changes in the last year
-- confusion analysis to be carried out as a whole, in conjunction with other factors -- be aware of
limited remedies when proceeding via an application -- official marks are a unique feature of
Canadian trade mark law -- use and registration abroad basis requires use abroad prior to filing -amendments to the Trademarks Act.
Subject: Trade marks--reform--Canada
Subject: Trade marks--law and legislation--Canada
SNIPER No.: 2014/01578
Author: O'Malley, Maura
Title: Pressing ahead with change
Source: Intellectual Property Magazine. July-August 2014, pp. 8-10.
Summary: Interview with Will Bowes, company secretary and general counsel at Cambridge
University Press (CUP) -- CUP has closed its printing house and shut its warehouses -- business
model based around manufacturing printed product in Cambridge was increasingly unsustainable - increasing demand for digital product -- hard copy book distribution is influenced by digital
technologies -- change and rapid growth for the legal team -- Bowes early career -- the open
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access debate -- copyright law -- court battles -- Supap Kirtsaeng v John Wiley & Sons -- first- sale
doctrine -- are Cambridge University Press et al v Becker et al -- enforcement around contractual
breaches.
Subject: Bowes, Will--interviews
Subject: Copyright--reform--United Kingdom
SNIPER No.: 2013/02819
Author: Bhering, Philippe
Title: Progress at last: Brazilian IP reform
Source: World Intellectual Property Review. September-October 2013, pp. 84-87.
Summary: INPI, the Brazilian Patent and Trademark Office has been implementing measures to
reduce the work backlog -- 74 percent of trade mark applications were filed online in 2012 -recruitment drive -- remoulded trademark search introduced on the website -- now prepared for
possible accession to Madrid Protocol -- new guidelines for application examination -- right to prior
use -- action to tackle backlog of patent applications -- Dispute Mediation Centre established in
partnership with WIPO
Subject: Trade mark applications--Brazil
Subject: Trade mark examination--Brazil
Subject: Patent applications--Brazil
SNIPER No.: 2014/01510
Author: Scungio, Maria A.
Author: Tenney, H. Straat
Title: Protecting your brand from counterfeiters
Source: World Trademark Review. No. 50, August-September 2014, pp. 116-117.
Summary: China-based web giant Alibaba Group Holding expansion into the United States and
other world internet markets -- Alibaba owns Taobao, one of the world's largest online
marketplaces -- most products are genuine -- Office of the US Trade Representative (USTR) listed
Taobao on its Notorious Markets List -- identifies online and physical marketplaces that engage in
and facilitate counterfeiting -- USTR this year removed Taobao from the list -- website is mammoth
and thus remains unavoidably infected with counterfeit items -- what is counterfeit? -- three steps
of protection -- what can companies do? -- educating law enforcement and customs -- takedown
notices -- recording trade marks with Customs -- notify the criminal authorities -- monitoring and
enforcement policies -- sue counterfeiters in federal court.
Subject: Counterfeiting--United States
Subject: Intellectual property enforcement--United States
SNIPER No.: 2014/01787
Author: Lertdhamtewe, Pawarit
Title: The protection of geographical indications in Thailand
Source: Journal of World Intellectual Property. Vol. 17 No. 3-4, July 2014, pp. 114-128.
Summary: Adoption of the Agreement on Trade-Related Aspects of Intellectual Property Rights
(TRIPS Agreement) poses significant implications for a developing country such as Thailand -agriculture is a large share of its domestic and export markets -- notable facet of TRIPS is its focus
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on the protection of geographical indications (GIs) -- implementation of TRIPS in Thailand with
respect to GI protection -- Protection of Geographical Indications Act B.E.2546 (AD2003) of
Thailand -- relevant to an examination of TRIPS implementation in developing countries -Thailand's position with reference to the protection of GIs, and the benefits, which may be accrued
as a consequence of implementing the TRIPS Agreement.
Subject: Agreement on Trade-Related Aspects of Intellectual Property Rights (1994 April 15)-Thailand
Subject: Geographical indicators--Thailand
Subject: Traditional knowledge--Thailand
SNIPER No.: 2014/01349
Author: Fütman, Özlem
Author: Duyan, Damla
Title: Proving bad faith when opposing a mark
Source: World Intellectual Property Review. Annual, 2014, pp. 76-78.
Summary: Turkish Patent Institute (TPI) -- burden of proof of bad faith lies with the opposer -contesting a trade mark application in Turkey -- trade mark examination guidelines -- case study of
Kashmir and K stylised letter mark -- distinctiveness, originality, and well known nature of the trade
mark provide a strong argument to prove bad faith of the applicant.
Subject: Patent infringement--Turkey
Subject: Trade mark opposition--Turkey
SNIPER No.: 2014/01350
Author: Hammer, Michael, 1948Title: Proximity and perspective: a year of direct USPTO filing and prosecution from Israel
Source: World Intellectual Property Review. Annual, 2014, pp. 80-81.
Summary: IP clients in Israel utilising an Israel based firm to represent them before the United
States Patent and Trademark Office -- electronic filing and telephone interviews -- obtaining a US
patent or registered trade mark will influence entry into the US market -- ability to obtain investment
needed to continue the business -- influence the interests of potential buyers.
Subject: Lawyers--Israel
Subject: Intellectual property management--Israel
SNIPER No.: 2014/01784
Author: French, Robert Shenton, 1947Title: A public law perspective on intellectual property
Source: Journal of World Intellectual Property. Vol. 17 No. 3-4, July 2014, pp. 61-80.
Summary: Annual Francis Gurry Lecture at Melbourne University in 2012 -- intellectual property
(IP) law as a species of public law serving public purposes -- purposes reflecting the interests of
creators, owners and users of IP rights are in tension -- tension affects the normative clarity of IP
law and its effective enforcement -- may inform the construction of IP statutes and the application
of evaluative criteria of validity under those statutes -- in Australia, IP statutes are made under
constitutional authority with respect to specified categories of IP, the specific content of which may
vary with technological change -- official decisions effecting the creation or discontinuance in IP
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rights are statutory -- subject to constitutionally based judicial review in addition to particular appeal
rights conferred by statute -- at the heart of the public law aspect of IP rights is a tension between
their characterisation as proprietary or instrumental.
Subject: Constitutional law
Subject: Intellectual property law
SNIPER No.: 2014/01302
Author: Königer, Karsten
Title: The published patent application: a basis for injunctive relief?
Source: Journal of Intellectual Property Law and Practice. Vol. 9 No. 7, July 2014, p. 533.
Summary: Rights conferred by a European patent application -- European Agreement on a Unified
Patent Court (UPCA) -- European Patent Convention (EPC) -- published European patent
application could have the same rights as the national patent granted in a contracting state -- under
Article 67(2) EPC contracting states may allow protection which is less than that of a national
patent but not less than that given a published unexamined national application -- need for full
harmonisation of rights conferred by a European patent application including compensation -- utility
model harmonisation -- utility model law and published European patent application rights should
be harmonised.
Subject: Patent owners' rights--Europe
Subject: Patent systems--harmonisation--Europe
Subject: Minor patents--harmonisation--Europe
Subject: Injunctions--Europe
SNIPER No.: 2014/01570
Author: Chan, Brigitte
Title: Québec Superior Court ruling on English trademarks on storefront signs
Source: Intellectual Property Magazine. June 2014, pp. 70-71.
Summary: Québec Superior Court confirmed that English-only trade marks on public signs do not
need to be accompanied by a French descriptor of the nature of the business -- Charter of the
French Language and its regulations provided an exception for recognised trade marks -recognised trade marks within the meaning of the Trade-marks Act can appear in a language other
than French, unless a French version of the mark is registered -- businesses have relied upon this
exception to display English-only trade marks on signage without any additional descriptive term in
French -- Office québécois de la langue française (OQLF) had changed its interpretation of the
Charter and the Regulation by drawing a distinction between trade marks and trade names on
public signs -- the ruling.
Subject: Commercial names--case law--Canada
Subject: Trade mark registration--case law--Canada
SNIPER No.: 2014/01098
Author: Osseiran, Nina
Title: A question of territoriality
Source: World Trademark Review. No. 49, June-July 2014, pp. 118-119.
Summary: United Arab Emirates can trace its recognition of well-known trade marks back to 1973
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-- McDonald's mark -- fame provisions in trade mark law -- nationally well-known marks.
Subject: Famous trade marks--law and legislation--United Arab Emirates
Subject: Intellectual property law--interpretation--United Arab Emirates
SNIPER No.: 2014/01580
Author: Seror, Matthew L.
Title: 'Raging' blow for laches defence
Source: Intellectual Property Magazine. July-August 2014, pp. 13-14.
Summary: Petrella v Metro-Goldwyn-Mayer, Inc -- Supreme Court of the US severely limited the
application of laches in copyright infringement actions -- dispute centred around the motion picture,
Raging Bull -- pitted the equitable doctrine of laches against a congressionally prescribed statute
of limitations -- the court reversed a lower court's dismissal of the petitioner's copyright
infringement claims based on the doctrine of laches -- holding could have far reaching effects on
the availability and application of equitable defences in a wide range of cases.
Subject: Copyright--case law--United States
Subject: Legal defences--United States
SNIPER No.: 2014/01601
Author: Armon, Orion
Author: Zambarda, Mark A.
Title: Reforming patent litigation strategies
Source: Intellectual Property Magazine. July-August 2014, pp. 59-60.
Summary: Inter partes review (IPR) has transformed patent litigation strategy -- burden of proof for
proving invalidity is lower than in district court -- IPRs are faster and less expensive than litigating
invalidity in the district court -- offer defendants an opportunity to create a written record that
objectively defines claim scope and points of novelty -- Patent Trial and Appeal Board's (PTAB)
final written decision can have a powerful impact on how damages are calculated and whether an
injunction is granted -- IPRs generally -- statistics -- IPR tactics -- impact on legal remedies -calculating a reasonable royalty following an IPR -- royalty value base calculation -- limit 'patented
feature' for EMV -- smallest salable patent-practising unit (SSPPU) -- royalty rate calculation -Georgia Pacific factor 13 and 9 -- IPRs may eliminate or reduce lost profits claims -- noninfringement alternatives -- IPRs' impact on equitable remedies -- 'substantial likelihood of success'
-- limit 'patented feature' for nexus requirements.
Subject: Patent validity
Subject: Damages
SNIPER No.: 2014/00787
Author: Russell, Elizabeth T.
Title: Registering copyrights in the United States: considerations for Australian attorneys
Source: Australian Intellectual Property Law Bulletin. Vol. 27 No. 3, April 2014, pp. 69-71.
Summary: Copyright registration in the US explained in conversational format -- copyrightable
works created in Australia receive protection in United States -- distinction between published and
unpublished works -- Berne Convention for the Protection of Literary and Artistic Works -Australian published works can be considered "United Stated works" if first published in the US or
SNIPER Bulletin – September 2014
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if simultaneously published in the United States and Australia or another treaty party
Subject: Copyright registration--United States
Subject: Copyright owners' rights--United States
Subject: Copyright owners' rights--Australia
SNIPER No.: 2014/01659
Author: Siddiqui, Ahmer Iqbal
Added author: IP Australia
Title: Report on patent backlogs, inventories and pendency
Source: IP Australia Economic Research Paper. No. 01, 2014.
General Note: Report commissioned by IP Australia. Written with guidance from Benjamin MitraKahn (Chief Economist, IP Australia), Daniel Beck (Senior Examiner of Patents, IP Australia),
Risman Cornelius (Business Manager, PAPR, IP Australia) and Jared Dent (Office of the Chief
Economist, IP Australia).
Summary: IP Australia and the patent process -- patent application inventories -- application and
examiners at IP Australia -- pendency analysis -- effects of direction -- directed vs. voluntary
examination requests -- stockpiles by International Patent Classification (IPC) -- report identified
that while the inventory of patents doubled between 2000 and 2009, it has fallen steadily since the
peak in 2009 -- time to grant a patent gradually increased over the last decade -- reduced by an
average six months since 2010 -- adopts the USPTO-UK-IPO framework for comparing patent
inventories -- comparisons made with UK Intellectual Property Office and United States Patent
and Trademark Office -- recommendations.
Subject: IP Australia--procedure
Subject: Patent examination--research--Australia
Subject: Patent applications--Australia
Subject: Patent systems--Australia
SNIPER No.: 2014/01589
Author: Morgan, Gareth
Author: Drew, Catherine
Author: Hopper, Charles
Title: The revocation location: biotech patents fail the High Court test
Source: Intellectual Property Magazine. July-August 2014, pp. 31-34.
Summary: High Court in London -- key battleground where the validity of business critical patents
is tested in the most thorough examination of a patent's validity anywhere in European civil
litigation -- generic pharmaceutical companies have considered London to be the favoured
jurisdiction in which to initiate pan-European revocation strategies -- speed of the High Court
process relative to other jurisdictions -- quality of the judgements -- three patent cases concerning
the infringement and/or validity of biotechnology-related inventions -- whether the reputation of the
patents court for scrutinising patents to the highest degree possible in Europe, can be said to
increase the chances of revoking a biotechnology-related patent in this jurisdiction -- Medimmune v
Novartis -- Monsanto Technology LLC v Cargill International SA & Anor -- Hospira v Genentech.
Subject: Patent revocation--case law--United Kingdom
Subject: Biotechnology--United Kingdom
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SNIPER No.: 2014/01539
Author: Bell, John
Author: Frater, Robert (Robert Henry)
Author: Butterfield, Leslie
Author: Cunningham, Stuart
Author: Dodgson, Mark, 1957Author: Fox, Kevin
Author: Spurling, Tom
Author: Webster, Elizabeth, 1957Added author: Australian Academy of the Humanities
Added author: Australian Academy of Science
Added author: Academy of the Social Sciences in Australia
Added author: Australian Academy of Technological Sciences and Engineering
Title: The role of science, research and technology in lifting Australian productivity: final report
Source: Role of Science, Research and Technology in Lifting Australian Productivity: Final Report.
2014.
General Note: Report for the Australian Council of learned Academies, by Securing Australia's
Future project 4 comprised of the Australian Academy of the Humanities, Australian Academy of
Science, Academy of the Social Sciences in Australia and Australian Academy of Technological
Sciences and Engineering.
Summary: Project aimed to identify opportunities for applying knowledge and skills in science and
research -- range of industries and sectors including private and public enterprises -- examines
how to enhance innovation, creativity and productivity in the Australian workforce -- business
practices that will drive Australia’s prosperity -- building Australia's future manufacturing industries - effective collaboration to improve Australian innovation and research impact -- innovative
workforce to meet Australia's future needs -- contribution of innovation to productivity and
economic growth -- identifies need for strong intellectual property positions on the part of Australian
firms -- careful positioning in global value chains.
Subject: Technology transfer--science and research industry--Australia
Subject: Business collaboration--Australia
SNIPER No.: 2014/01351
Author: Vasilescu, Raluca
Title: The safety of unregistered marks
Source: World Intellectual Property Review. Annual, 2014, pp. 82-83.
Summary: Unregistered trade marks in Romania -- recognised as a distinct kind of prior right -Board of Appeal of the Romanian State Office for Inventions and Trademarks (OSIM) -- "Gorj" TV - domain name registration -- famous marks -- board accepted that Gorj TV had acquired earlier
rights through an unregistered mark by continuous use in a territory -- importance of the case in
both context and the ruling -- raises the problem of assessing the use of a national trademark that
involves a new technology -- use of a mark on the internet is difficult to qualify -- definition of a
national territory -- rights arising from unregistered trademarks acquired through use in a territory
needs further exploration.
Subject: Unregistered trade marks--culture and entertainment industry--Romania
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SNIPER No.: 2014/01554
Author: Bunis, Michael
Author: Riley, Lauren
Title: Searching for "reasonable particularity"
Source: Intellectual Property Magazine. June 2014, pp. 33-35.
Summary: Trade secret cases distinct form other intellectual property disputes -- trade secrets are
almost never described in advance of litigation -- recent cases suggest many jurisdictions are now
requiring plaintiffs to identify their trade secret with 'reasonable particularity' before obtaining trade
secret discovery -- courts have articulated four policy considerations behind the reasonable
particularity requirement -- developing case law requiring heightened specificity -- practical advice
for plaintiffs -- tips for defendants.
Subject: Trade secrets--case law--United States
Subject: Trade secrets--law and legislation--United States
SNIPER No.: 2014/01345
Author: Khuraijam, Shukadev
Title: Section 8: an inconvenient truth?
Source: World Intellectual Property Review. Annual, 2014, pp. 62-65.
Summary: Section 8 provision in the Indian patent statute -- applicant's 'duty of disclosure' to
provide information on details of applications pursued in other countries -- provision has been an
important focal point in India's developing patent jurisprudence -- as non-compliance with Section
8's requirements is a ground for refusing an application or revoking a patent -- infamous Delhi High
Court case Chemtura Corporation -- Roche v Cipla infringement, Tarceva -- Intellectual Property
Appellate Board (lPAB)
Subject: Patent applications--procedure--India
Subject: Patents--law and legislation--India
Subject: Patent revocation--case law--India
SNIPER No.: 2014/01355
Author: Bharath, M. S.
Title: Show me the money!: using IP assets as security
Source: World Intellectual Property Review. Annual, 2014, pp. 94-95.
Summary: Use of IP assets -- benefits and disadvantages of including IP rights as a part of a loan
agreement -- due diligence -- valuation of the IP -- nation of loan, security agreement -- special
purpose vehicle -- entity specially created to take over all IP assets on which the security is to be
created -- post-transactional mandates: recording of security interests -- repayment and defaults -multi-jurisdictional considerations.
Subject: Value of intellectual property--India
SNIPER No.: 2014/01338
Author: Sullivan, Roxana
Title: Sinking the counterfeit ship: the response of brand owners and online retailers
Source: World Intellectual Property Review. Annual, 2014, pp. 38-39.
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Summary: Fight against online pirates -- internet service providers, payment enablers and law
enforcement -- brand owners -- involvement of individual websites that sell multiple brands taken
steps to combat the sale of counterfeit goods -- Notorious Markets List, compile by the Office of the
US Trade Representative (USTR) -- identifying particularly famous markets -- websites takedown
procedures streamlined -- eradicating counterfeit goods from online marketplaces a continual
battle.
Subject: Counterfeiting
Subject: Intellectual property enforcement
SNIPER No.: 2014/01309
Author: Williams, Mark
Title: Snorkel decision breathes life into quasi design protection
Source: Journal of Intellectual Property Law and Practice. Vol. 9 No. 7, July 2014, pp. 543-544.
Summary: Decision by Australian Trade Marks Office that certain composite trade marks are
capable of distinguishing even if the shape has a functional purpose -- Ironman 4X4 Pty Ltd v
Australian Performance Development Pty Ltd (APD) -- shape of air intake snorkel combined with
the word SAFARI -- Ironman 4X4 Pty Ltd argued that registration of mark would be unfair in that
APD would be able to achieve a monopoly on a shape which other traders may want to use -SAFARI SNORKEL logo -- analysis of arguments -- Hearing Officer verdict -- registration of a
composite mark can provide a type of design protection -- practical significance.
Subject: Trade mark distinctiveness--case law--Australia
Subject: Non-traditional marks--case law--Australia
Subject: Shape marks--case law--Australia
SNIPER No.: 2014/01191
Author: Durantaye, Katharina de la, 1975Author: Golla, Sebastian J.
Author: Kuschel, Linda
Title: "Space Oddities": copyright law and conflict of laws in outer space
Source: Journal of Intellectual Property Law and Practice. Vol. 9 No. 6, June 2014, pp. 521-530.
Summary: Creation and use of works in outer space and copyright law -- Canadian astronaut's
performance in the first music video recorded in outer space -- "Space Oddity" -- performances
planned on governmental and non-governmental spaceflights in the future -- tension between
copyright law and space law -- copyright as a territorial property right -- outer space is treated like
the high seas and the Antarctic in that it belongs to everybody -- Outer Space Treaty of 27 January
1967 and four supplementary Agreements are the chief source of international law with respect to
outer space -- rights and obligations of an astronaut -- jurisdiction of individual countries in outer
space -- Earthly copyright laws apply to outer space -- conflict of law rules in outer space -copyright usage and infringement -- works created in outer space -- need for a special copyright
system for outer space.
Subject: Copyright--law and legislation
Subject: International intellectual property law
Subject: Copyright systems--reform
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SNIPER No.: 2014/01591
Author: Sharples, Andrew
Title: SPCs for medical devices: continuing disharmony
Source: Intellectual Property Magazine. July-August 2014, pp. 36-37.
Summary: United Kingdom Intellectual Property Office (UKIPO) has refused to grant a
supplementary protection certificate (SPC) for a medical device -- SPCs and medical device
regulations -- decisions from the Netherlands and Germany -- the UK position and the decision in
BL O/141/14 -- European divergence and new regulation -- medical devices under directive
2001/83/EC -- what to do now?
Subject: Medical procedures and devices--Europe
Subject: Patent extension--Europe
SNIPER No.: 2014/01561
Author: Smith, Nathan
Title: Stand your ground
Source: Intellectual Property Magazine. June 2014, pp. 50-51.
Summary: United Kingdom's Law Commission published a report suggesting how the law on
groundless threats should be reformed -- current law -- what is a threat? -- what remedies can be
awarded? -- exempt 'primary' infringement -- patents reform -- problems with the current law -- the
consultation -- insufficient support for the 'radical' proposal -- 'evolutionary' approach the preferred
option -- recommendations set out in the Commission's report.
Subject: Intellectual property abuse--law and legislation--United Kingdom
Subject: Intellectual property law--reform--United Kingdom
SNIPER No.: 2014/01095
Author: Narula, Ranjan
Title: Standing up for well-known marks in India
Source: World Trademark Review. No. 49, June-July 2014, pp. 112-113.
Summary: No specific provision in India's old Trademark Act for the protection of well-known
marks -- Courts applied the concepts of both consumer confusion and dilution when it came to
protecting well known marks -- Kamal Trading Co v Gillette UK Limited -- new Trademarks Act of
2003 included a definition of 'well-known marks' -- laid down criteria for their protection -- expressly
extends statutory protection to well-known trade marks, even in relation to dissimilar goods -recent developments at the registry -- use of well-known marks as trade names -- Bloomberg and
Microsoft cases.
Subject: Famous trade marks--case law--India
Subject: Trade marks--law and legislation--India
SNIPER No.: 2014/01503
Author: Bobker, Adam
Title: Stepping up at the border
Source: World Trademark Review. No. 50, August-September 2014, pp. 102-103.
Summary: Canada facing increasing pressure to take firmer action against those who traffic in
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counterfeit goods -- Canada's reputation as a weak enforcer in cases of blatant infringement of
copyright and trade mark rights -- 2009 Office of the US Trade Representative (USTR) placed
Canada on its priority watch list of countries with particularly poor intellectual property (IP) rights
enforcement -- Combating Counterfeit Products Act -- provisions aimed at broadening the abilities
of the Canada Border Services Agency (CBSA) -- current legislative framework -- counterfeiting
and the courts -- Combating Counterfeit Products Act (Bill C-8) -- concerns.
Subject: Counterfeiting--law and legislation--Canada
Subject: Counterfeiting--case law--Canada
SNIPER No.: 2014/01341
Author: Xue, Nikita
Author: Zhang, Xu
Title: Stopping infringing goods at the border: a double-edged sword?
Source: World Intellectual Property Review. Annual, 2014, pp. 48-49.
Summary: Chinese customs authority and efforts to seize infringing goods -- breach of trade mark
rights accounted for the vast majority of seizures at the border -- should such protection extend
solely to manufactured good made in China for export -- current Chinese trade mark law -- Julida
case -- Crocodile Garment case -- differing judgment and regulations -- original equipment
manufacturer (OEM) not considered trade mark use -- legislative change -- working to provide
more precise and consistent guidance in the judicial interpretation of the new China Trademark
Law.
Subject: Customs--China
Subject: Intellectual property enforcement--China
SNIPER No.: 2014/01356
Author: Chan, Vivien
Title: A streamlined service
Source: World Intellectual Property Review. Annual, 2014, pp. 96-97.
Summary: IP software enabling a growing IP firm to manage it's IP assets -- Patrix IP
management software -- enterprise wide solution -- secure access to case data and automatic
tracking of IP lifecycles -- laws/regulations, standard forms, time and cost registration, invoicing,
customisable reports, document creation, document management and powerful batch processing
functionality.
Subject: Intellectual property management
SNIPER No.: 2014/01358
Author: Chowhury, Mahua Roy
Author: Ramakrishnan, Gopalakrishnan
Title: Streamlining patent-related procedures
Source: World Intellectual Property Review. Annual, 2014, pp. 100-101.
Summary: Progress at the Indian Patent Office (IPO) --- interview with Chitanya Prasad, Controller
General of Patents, Patents and Trademarks -- IPO streamlined processes for efficient filing and
prosecution through to grant -- E-filing -- increased transparency of processes -- Dynamic Patent
Utilities facility available on the IPO website -- load ratio per patent examiner addressed by
inducting more technically qualified examiners.
SNIPER Bulletin – September 2014
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Subject: India. Patent Office
Subject: Intellectual property systems--India
SNIPER No.: 2014/01099
Author: Kryska, Aleksandra
Title: Striving for definition
Source: World Trademark Review. No. 49, June-July 2014, pp. 120-121.
Summary: Protection of well-known and famous marks in Poland is guaranteed by the Industrial
Property Law and Unfair Competition Law -- Polish law does not set out regulations for famous
trade marks -- defined as trade marks that have a reputation and are well known -- considered to
be more widely recognised and more attractive to the public than marks that merely have a
reputation -- notion of reputation is not defined in Polish law -- established opinion among
customers about the characteristics of the goods -- determining whether a trade mark has obtained
a reputation -- must be known to a significant part of the relevant public -- no definition of 'a
significant part' in case law -- no definition of a well-known trade mark -- main criteria for evaluating
whether a trade mark is well known -- enjoy broader protection in Poland than ordinary marks -protection against parasitic use and dilution of the mark is afforded beyond the similarity of goods.
Subject: Famous trade marks--Poland
Subject: Trade marks--law and legislation--Poland
SNIPER No.: 2014/01082
Author: Rochford, Richard D.
Title: The Supreme Court turns its attention to trademarks
Source: World Trademark Review. No. 49, June-July 2014, pp. 68-71.
Summary: False advertising at the U.S. Supreme Court -- Static Control Components, Inc v
Lexmark Intl, Inc -- Pom Wonderful LLC v Coca- Cola Co -- Nike's broad covenant not to sue
moots competitor's invalidity counterclaim -- Already, LLC dba YUMS v Nike, Inc -- no deference
given to Trial and Appeal Board (TTAB) -- proper test to apply to preliminary injunction requests in
trade mark infringement cases -- no irreparable harm, no injunction -- long term co-existence can
turn into conflict when one of the parties expands its use of a mark into areas that are too close for
comfort -- Kraft Foods Group Brands, LLC v Cracker Barrel Old Country Store, Inc -- longsimmering controversy about the use of Native American team names and imagery in US sports -Washington Redskins mark.
Subject: Trade marks--case law--United States
Subject: Marketing--case law--United States
SNIPER No.: 2014/01574
Author: Kurz, Raymond A.
Author: Leggett, Corey T.
Title: Supreme Court wades into the indefiniteness standard
Source: Intellectual Property Magazine. June 2014, pp. 78-79.
Summary: Supreme Court heard oral arguments in Nautilus Inc v Biosig Instruments Inc -- Federal
Circuit's "insolubly ambiguous" standard was placed under magnified scrutiny -- Biosig owns a
patent covering a heart rate monitoring system that is mounted onto exercise equipment -- in 2004
Biosig sued Nautilus for infringement -- Nautilus turned to the United States Patent and Trademark
SNIPER Bulletin – September 2014
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Office (USPTO) to try to invalidate Biosig's patent over prior art -- certain claims of the patent
survived a pair of reexaminations -- Nautilus asserted that claim 1 of the patent was invalid as
indefinite -- district court granted Nautilus's motion to dismiss for indefiniteness -- on appeal, the
Federal Circuit reversed, holding that the patent was not "insolubly ambiguous" -- The Supreme
Court handed down a decision in favour of Nautilus -- ruling that definiteness is to be evaluated
from the perspective of someone skilled in the relevant art, at the time that the patent was filed -claims are to be read in light of the patent's prosecution history and specification -- Court
unanimously vacated the Federal Circuit's standard for proving that a patent is indefinite.
Subject: Patent litigation--United States
Subject: Patents--case law--United States
SNIPER No.: 2014/01506
Author: Colombo, Nicoletta
Author: Verducci-Galletti, Simone
Title: Sustainable alternatives to civil protection
Source: World Trademark Review. No. 50, August-September 2014, pp. 108-109.
Summary: Customs surveillance is a preventive anti-counterfeiting tool which has proved
reasonably effective for rights holders -- criminal offences are set out in the Criminal Code -- recent
case law -- cases show how useful criminal prosecution and border measures can be in combating
counterfeiting.
Subject: Counterfeiting--Italy
Subject: Intellectual property enforcement--Italy
SNIPER No.: 2014/01335
Author: Sugimura, Kenji
Author: Chen, Rebecca
Title: A swift and affordable alternative to litigation
Source: World Intellectual Property Review. Annual, 2014, pp. 28-30.
Summary: Current trends in the import of counterfeit goods -- delineates the procedures for rights
holders to protect their IP rights at Japan's borders -- customs measures -- statistics from Japan -small shipments sent by post -- initiating enforcement proceedings ex officio action -- application
for suspension -- identification procedures -- first line of defence against counterfeiters -- reduce
the need for more costly legal action -- final determination -- effective use of customs measures.
Subject: Intellectual property enforcement--Japan
Subject: Customs--Japan
SNIPER No.: 2014/01101
Author: Dereligil, Ersin
Title: The system for well-known marks in Turkey
Source: World Trademark Review. No. 49, June-July 2014, pp. 124-125.
Summary: Turkish trade mark law does not define or even distinguish between famous and wellknown marks -- a trade mark can be officially granted well-known status either by a verdict in a
lawsuit or by the Turkish Patent Institute (TPI), via a successful application -- TPI practice -registering a well-known mark -- defending and enforcing well-known marks -- trade mark and
SNIPER Bulletin – September 2014
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design prosecution before TPI.
Subject: Famous trade marks--law and legislation--Turkey
Subject: Trade mark registration--Turkey
SNIPER No.: 2014/01505
Author: Narula, Ranjan
Title: Taking issue with counterfeits in India
Source: World Trademark Review. No. 50, August-September 2014, pp. 106-107.
Summary: Online counterfeit goods -- domain names similar or identical to popular brands -shopping search engines -- online marketplace and auction websites -- issue of takedown notices - has become a full-time job to block access to counterfeit goods in this way -- scepticism over
whether takedown notices have any impact on infringing activities -- difficult to collect information
about an infringer and assess the quantity of counterfeits -- liability of intermediaries -- different
kinds of markets and counterfeit goods are sold across all of them -- shopping malls are of greatest
concern to rights holders -- availability of counterfeit goods has a direct impact on a rights holder's
reputation -- no specific legislation to address counterfeiting and piracy -- statutory remedies can
be found in various statutes -- challenges of working with the police -- Customs is the first line of
defence against counterfeit goods entering India from overseas -- rights holder has the option to
register its rights with Customs.
Subject: Counterfeiting--law and legislation--India
Subject: Intellectual property enforcement--India
SNIPER No.: 2014/01599
Author: Belisle, Stephen
Author: Pickens, Robert
Title: Taking the sweat out of combating trade secret theft
Source: Intellectual Property Magazine. July-August 2014, pp. 55-56.
Summary: Trade secret theft against US corporations is a major concern -- massive and rapidly
growing problem -- Office of the National Counterintelligence Executive indicates that the greatest
risk may be in China -- companies need an arena to remedy trade secret misappropriation in a
quick and meaningful manner -- US International Trade Commission (ITC or Commission) -- ITC
as an emerging venue -- protecting your trade secrets at the ITC -- establishing a domestic
industry and injury.
Subject: Trade secrets
Subject: Crime
SNIPER No.: 2014/01360
Author: Pavlidou, Ermioni
Title: A tale of two patents
Source: World Intellectual Property Review. Annual, 2014, pp. 104-105.
Summary: Unitary patent -- agreement by the European Union member states establishing the
single UPC and the Unitary Patent -- single EU right allows for uniform protection throughout the
EU members -- Unitary Patent system initiated at the earliest during 2015 -- serve as a
complement to the existing European patent system -- application and examination procedures –
SNIPER Bulletin – September 2014
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high costs of invalidation process -- patent owners will enjoy the benefits of the UPC and the single
infringement action the single EU right offers -- new system to help towards the promotion of
innovation.
Subject: Patent systems--harmonisation--Europe
Subject: Patents--reform--Europe
Subject: Regional patents--Europe
SNIPER No.: 2014/01545
Author: Singer, Randi W.
Author: Greer, Olivia J.
Title: Tarantino's leaked script prompts lawsuit
Source: Intellectual Property Magazine. June 2014, pp. 18-19.
Summary: The script for Quentin Tarantino's new movie had been leaked on the internet -- he first
asked that it be taken down -- when that did not work he went to court -- filed a complaint in
California district court against the media outlet Gawker and 10 John Doe defendants -- alleging
that the unknown defendants had engaged in direct copyright infringement by reproducing,
distributing and publicly displaying his script -- Gawker had engaged in contributory copyright
infringement by posting links to the leaked script in an article reporting on the leak -- Gawker
argued, its actions amounted to fair use of the script -- Tarantino was forced to concede that he
had not identified any direct infringement to support his contributory infringement argument -California district court granted Gawker's motion to dismiss -- Tarantino filed a First Amended
Complaint against Gawker -- in addition to engaging in contributory copyright infringement, Gawker
itself had in fact engaged in direct copyright infringement -- six days later, the lawsuit was gone -Tarantino filed a voluntary dismissal of the action.
Subject: Copyright infringement--liability--United States
Subject: Copyright infringement--case law--United States
SNIPER No.: 2013/02821
Author: Flagg, Christopher
Title: There's a fly in my soup: hand-crafted research in the age of analytics
Source: World Intellectual Property Review. September-October 2013, pp. 90-91.
Summary: Patent analytics is only a tool, not a replacement for expert guided research -automated correlation is not research -- eliminating the flies -- expert-driven research gives the
benefit an extra pair of eyes -- use expert-driven research in tandem with analytics tools to give the
best of both worlds -- the cost of caution
Subject: Science and research industry
Subject: Patents--analysis
SNIPER No.: 2014/01540
Author: White, Catherine
Title: To Asia, and beyond: INTA's rallying call
Source: Intellectual Property Magazine. June 2014, pp. 8-10.
Summary: International Trademark Association (INTA) annual meeting landed in Hong Kong -focusing on Asia -- INTA made a concerted effort to distance itself from criticism that it was too USSNIPER Bulletin – September 2014
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centric -- event dedicated eight key sessions discussing Asia's role in intellectual property (IP) -region has a "solid foundation for it to develop as an IP trading hub, and in particular, as the
leading IP trade centre of China" -- Asia has many competing states detailing a road map on what
they want to achieve on the IPR agenda -- Myanmar government has started an ambitious
programme to implement its first draft IP law for trademarks, copyright, patents and designs and
set up IP offices -- public perception of IP -- Chinese government is making a concerted effort to
clamp down on fakes -- international expansion is a key part of the association's 2014-2017
strategic plan.
Subject: International Trademark Association--meetings
Subject: Professional bodies (Intellectual property)
SNIPER No.: 2014/01790
Author: Radcliffe, Jonathan
Title: Top 10 significant English patent cases of 2013 (part 2)
Source: World Intellectual Property Report. Vol. 28 No. 8, August 2014, pp. 30-34.
General Note: Second article in a series of two. See also: 2014/01003
Summary: Significant decisions delivered by the English patent courts in 2013 -- key relevant
tactical and strategic issues from the cases -- facts of the cases -- discussion of the decisions -interim injunction pending appeal on patents already held invalid -- Novartis v. Hospira UK -entitlement to priority -- Novartis v. Hospira UK -- obviousness for lack of technical contribution -Generics UK v. Yeda Research and Development -- when a patent licence is no defence to
infringement -- HTC v. Nokia -- key procedural developments -- identifying independently valid
claims -- Samsung Electronics v. Apple Retail UK -- orders directing payment of legal costs -Omnipharm v. Merial -- orders for payment of interest on payments of legal costs.
Subject: Patents--case law--United Kingdom
SNIPER No.: 2014/01344
Author: Perraki, Marina
Title: Trademark dilution in the EU
Source: World Intellectual Property Review. Annual, 2014, pp. 58-61.
Summary: Trade mark dilution -- provision in European framework of protection against trade
mark dilution -- protection against the use of an identical or similar sign in relation to dissimilar
goods where the prior mark has a reputation -- dilution categories -- proof requirements -implications for national frameworks -- establishing dilution -- objective goodwill of the trademark
and the subjective state of mind of the consumer.
Subject: Trade mark dilution--Europe
SNIPER No.: 2014/01783
Author: Ern, Jern
Author: Keng, Lim Pui
Title: Trademark protection in Asia
Source: Expert Guides. Trade Mark Lawyers, June 2014, pp. 15-16.
Summary: Trade mark law in Malaysia -- Trade Marks Act (1976) -- Trade Marks Amendment Act
(2000) -- registrable marks -- marks in colours -- series of marks, certification marks and defensive
marks -- marks in sounds, scent and moving marks -- prosecution procedures -- expedited
SNIPER Bulletin – September 2014
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examination procedure -- period of registration -- border measure provisions preventing the
importation of counterfeit trade marked goods introduced in the 2000 Amendment.
Subject: Trade marks--reform--Malaysia
Subject: Intellectual property enforcement--Malaysia
SNIPER No.: 2014/01557
Author: Brenner, Rand
Title: The transforming world of licensing
Source: Intellectual Property Magazine. June 2014, pp. 41-42.
Summary: Realisation of intellectual property (IP) as the most valuable company asset -- market
for IP is huge and growing -- dramatic shift in the way investors value companies -- IP is an income
producing asset -- monetising the value of IP through licensing is a low-cost, high return model -emergence of Public Intellectual Property Companies (PIPCOs) -- PIPCO business models -companies are emerging into hybrids -- use their IP to produce and sell products -- license out their
IP -- many ways IP can be monetised -- strategies -- competitive advantage -- financing options for
IP owners -- key issues and challenges relating to IP.
Subject: Intellectual property licensing
Subject: Intellectual property management
SNIPER No.: 2014/01347
Author: Liu, Julia
Author: Lin, T.K.
Title: Tribulations of rubber duck
Source: World Intellectual Property Review. Annual, 2014, pp. 70-71.
Summary: Taiwan's IP rights protection -- debate surrounding floating works of art -- 18 metre
high yellow rubber ducks by Dutch artist Florentijn Hofman -- design patents -- rubber duck may
meet design patent criteria for being ornamental and repeatable, would not pass the test of being
new and novel -- copyright -- Taiwan's Copyright Act (2014) -- greater chance of copyright
protection for the rubber duck -- replicate ducks in other cities -- trade marks -- Taiwan Trademark
Act (2011) -- whether copyright was infringed during rubber ducks tour of Taiwan is a topic of
heated debate.
Subject: Artistic works--Taiwan
Subject: Copyright--Taiwan
SNIPER No.: 2014/01598
Author: Cohen, Adam
Author: Zatyko, Ken
Title: Trust no one: fighting the hackers abroad and at home
Source: Intellectual Property Magazine. July-August 2014, pp. 53-54.
Summary: Charges against five Chinese military hackers for cyber espionage -- new era of
prosecutions by the US Department of Justice for theft of intellectual property (IP) data -- first time
US criminal charges were filed against known state actors for hacking -- allegations involve
computer intrusion and exfiltration of information about the design of nuclear power plants -- stolen
sensitive internal communications -- spear-phishing emails and hop points with command and
SNIPER Bulletin – September 2014
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control servers to implant malware -- companies attempt to educate their employees about
cybercrime -- warnings about insider threats are less common -- an illustrative insider-threat case - highlights the need for an incident response plan that includes the deployment of experienced,
expert cybersecurity practitioners, including certified forensic examiners -- minimising risk -- good
operating policies, physical security, personnel actions and data security -- what should one look
for when designing an incident response program with cyber forensics expertise?
Subject: Crime--China
Subject: Computing
SNIPER No.: 2014/01583
Author: Mehrman, Michael J.
Title: Two Supreme Court rulings make patents harder to enforce
Source: Intellectual Property Magazine. July-August 2014, p. 17.
Summary: United States Supreme Court handed down two patent decisions -- Limelight Network,
Inc v Akamai Technologies, Inc et al -- Nautilus, Inc v Biosig Instruments, Inc -- both cases make
patent more difficult to enforce -- Limelight addresses the issue of "divided infringement" -- why the
Limelight decision is important -- will be felt heavily in the pharma industry -- in Nautilus Supreme
Court hit the "reset button" on the legal standard for claim clarity jettisoning the prior Federal Circuit
test of "insolubly ambiguous" in favour of the higher standard of "reasonable certainty" -- will not
know the impact of this case until it shakes out in future litigation -- near zero invalidation rate for
patents under the "insolubly ambiguous" standard.
Subject: Patent litigation--United States
Subject: Patents--case law--United States
SNIPER No.: 2014/01541
Author: Polikarpov, Anton
Title: Ukraine/Russia dispute: what happens to IP when one country annexes another?
Source: Intellectual Property Magazine. June 2014, pp. 11-12.
Summary: Crimea, a region of sovereign Ukraine, was annexed by the Russian Federation -- four
key problems connected with the intellectual property in Crimea -- widely known trade marks are
used for labelling the goods produced in Crimea -- are under protection in the Russian Federation - lots of small businesses operate exclusively within the territory of Crimea without any designs to
work in the Russian market -- have not obtained the relevant protection in the Russian Federation - IPR to the trade marks mentioned are not protected either in Russia and in Crimea -- territoriality
principle -- IPR objects are under protection in those states where the protection is granted -- no
exceptions and interpretations for territories that are split off from one country then joined to
another -- IPR problems lie in wait for those Crimean companies who want to develop their
business on the territory of Crimea as a part of the Russian Federation, but do not have IPR
protection there -- possible ways of resolving the problem regarding the future of trade marks and
patents (for inventions, utility models and industrial designs) of Crimea in Russia.
Subject: Intellectual property rights--Crimea (Ukraine)
Subject: Intellectual property rights--Russia
SNIPER No.: 2014/01597
Author: White, Catherine
Title: The 'unique animal' at the heart of the copyright debate
SNIPER Bulletin – September 2014
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Source: Intellectual Property Magazine. July-August 2014, pp. 51-52.
Summary: United States Copyright Clearance Center (CCC) is a global rights broker -- CCC has
direct agreements with authors and publishers mostly and indirect agreements with millions more -only non-UK/non-EU organisation involved in the UK's Copyright Hub -- constantly evolving
technology and consumers seeking on demand media -- copyright is currently in a state of flux -American Broadcasting Cos, Inc, et al v Aereo, Inc -- potential broader effect of the ruling on cloud
services and other new technologies remains to be seen -- CCC's Roy Kaufman talks about
licensing, open access, the need for an IP czar and why aspects of the US Copyright Act need
updating.
Subject: Kaufman, Roy--interviews
Subject: Copyright licensing societies--United States
Subject: Copyright--reform--United States
SNIPER No.: 2014/01792
Author: Whitfield, Tim
Author: Gamsa, Adam
Title: US Supreme Court decision in Alice v. CLS and exclusions from patentability
Source: World Intellectual Property Report. Vol. 28 No. 8, August 2014, pp. 39-41.
Summary: US Supreme Court decision in Alice Corp v. CLS Bank International -- Court did not lay
down a general rule regarding the validity of software patents -- delivered narrower ruling based on
existing exclusions from patentability -- background to the case -- differing approaches suggest
some of the options that might have been available to the US Supreme Court in Alice -- industry
concerns regarding a wholesale change in the attitude to software implemented inventions appear
to have been mollified -- reflected in new guidance issued to USPTO examiners following the
decision-- situation in Europe regarding exclusions from patentability -- the future for European
software patents and the Unified Patent Court (UPC) -- concern that software patents may be
prime targets for non-practicing entities.
Subject: Computer-related inventions--case law--United States
Subject: Patentability--case law--United States
Subject: Computer-related inventions--patentability—Europe
SNIPER No.: 2014/01226
Author: Minero Alejandre, Gemma
Title: Videogames, consoles and technological measures: the Nintendo v PC Box and 9Net case
Source: European Intellectual Property Review. Vol. 36 No. 5, 2014, pp. 335-339.
Summary: Nintendo v PC Box and 9Net -- Court of Justice of the European Union (CJEU)
judgment -- scope of protection of technological measures as defined by art.6 of Directive 2001/29
-- underlying problem -- importance of real or effective use of devices, products or components
capable of circumventing -- aim of the CJEU -- preliminary ruling -- copyright holders are not
protected by IP law against acts of Circumvention of disproportionate technological measures.
Subject: Circumvention--case law--Europe
Subject: Circumvention--law and legislation--Europe
Subject: Copyright owners' rights--culture and entertainment industry--Europe
SNIPER Bulletin – September 2014
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SNIPER No.: 2014/01348
Author: Swaminathan, J. M.
Title: The way forward for GIs in Sri Lanka
Source: World Intellectual Property Review. Annual, 2014, pp. 72-75.
Summary: Geographical indications (GIs) in Sri Lanka -- indications of source and appellations of
origin -- GIs can be protected as certification marks or collective marks -- new developments in Sri
Lanka -- drafting of necessary legislation to give better protection of GIs in Sri Lanka -- obligations
under the TRIPs Agreement for other countries to extend reciprocal protection -- help Sri Lankan
exporter to register and protect the products of Sri Lanka in countries abroad.
Subject: Geographical indicators--Sri Lanka
Subject: Certification trade marks--Sri Lanka
SNIPER No.: 2014/01593
Author: Bennett, Claire
Title: Wearable healthcare technology
Source: Intellectual Property Magazine. July-August 2014, pp. 40-42.
Summary: Growth of the global wearable technology market -- highest revenue generating
products -- fitness/activity monitors and continuous glucose monitors -- wearable healthcare
technology -- medical devices regulation -- data protection and privacy -- the role of patents and
other intellectual property (IP) rights -- infringement, injunctions and compulsory licensing -standardisation and interoperability.
Subject: Mobile computing--health and community services industry
Subject: Medical procedures and devices
SNIPER No.: 2014/01588
Author: Smyth, Darren
Title: What a lawyer needs to know about the Nagoya Protocol
Source: Intellectual Property Magazine. July-August 2014, pp. 29-30.
Summary: European Union ratified the "Nagoya Protocol on access to genetic resources and the
fair and equitable sharing of benefits arising from their utilisation" -- protocol will enter into force for
the European Union -- most onerous provisions come into effect a year later -- Chartered Institute
of Patent Attorneys (CIPA) -- fundamental objectives of the Convention on Biological Diversity
(CBD) increase access to genetic resources and develop their uses -- Nagoya will frustrate these -origins of the Nagoya Protocol -- requirements of the protocol -- requirements of the Regulation -proposals that were rejected -- unintended consequences and failed objectives -- what do lawyers
need to do?
Subject: Convention on Biological Diversity (1992 June 2). Protocols, etc., 2010 October 29
Subject: Research on life forms
SNIPER No.: 2014/01692
Author: Johnson, Phillip
Author: Halpern, Sheldon W.
Title: When is a performance not a performance (but a copyright work)?
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Source: Queen Mary Journal of Intellectual Property. Vol. 4 No. 3, July 2014, pp. 236-243.
Summary: Garcia v Google, 743 F 3d 1258 (9th Cir 2014) -- recent split decision of the US Ninth
Circuit Court of Appeals -- plaintiff role in an adventure film, the film never materialised but the
scene was used in an anti-Islamic film, uploaded to YouTube and the performance dubbed over -Google refused to take the film down from YouTube -- in posting Google were infringing the
copyright in her performance -- balance of the equities and the public interest favoured plaintiff's
position -- decision a shift in US Copyright Law by making an actors performance a copyright work
independent of the material being performed -- in so doing, court now requires to give serious
consideration to matters of international copyright harmonisation.
Subject: Neighbouring rights--case law--United States
Subject: Copyright--culture and entertainment industry--United States
SNIPER No.: 2014/01093
Author: MacKendrick, Scott
Author: Singh, Amrita V.
Title: Where does Canada stand on Fame?
Source: World Trademark Review. No. 49, June-July 2014, pp. 108-109.
Summary: Canadian Trademarks Act does not define what constitutes a 'famous mark' -- the act
is silent with respect to fame -- Canadian courts have been left to address famous marks through
broad language in the act's confusion provision and in its depreciation of goodwill provision -Supreme Court of Canada (SCC) specifically addressed famous marks in two landmark decisions
in 2006 -- changed the landscape of famous mark protection in Canada -- Mattel Inc v 3894207
Canada Inc -- Veuve Clicquot Ponsardin v Boutiques Clicquot -- Supreme Court's pronouncements
on famous marks -- act provides that a mark may be made known in Canada -- what has
happened since the Supreme Court Canada decisions -- famous trade marks and counterfeit
products.
Subject: Famous trade marks--Canada
Subject: Trade marks--law and legislation--Canada
SNIPER No.: 2014/01502
Title: Where your advertising spend is going
Source: World Trademark Review. No. 50, August-September 2014, p. 99.
Summary: Digital Citizens Alliance (DCA) published research undertaken by MediaLink -quantified the profits generated by sites offering pirated content -- websites it researched make
millions in annual online advertising revenue -- nearly one-third of those sites carried
advertisements for blue-chip premium brands -- 40% carried legitimate secondary ads -advertising funds are being directed towards or diverted by, sites that are engaging in infringement
-- crucial to ensure that advertising dollars are not helping to fund online crime and IP theft -ensure company advertising policy clearly specifies the types of site on which advertising is
permissible -- clearly communicated to marketers and external partners -- monitor ad placement -site operators can mask their true location -- online ads are often placed by third-party ad
placement networks -- UK Police IP Crime Unit infringing website list -- best practice guidelines for
those who supply ads -- need for coordination between intellectual property counsel and marketing
personnel.
Subject: Piracy
Subject: Marketing
SNIPER Bulletin – September 2014
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SNIPER No.: 2013/02820
Author: Yen, Oon Yen
Author: Lim, Eng Leong
Title: Where's the money? innovation in Malaysia
Source: World Intellectual Property Review. September-October 2013, pp. 88-89.
Summary: Catch 22 scenario ' innovation generates wealth but wealth is needed to generate
innovation' -- Malaysia becoming a knowledge-based economy -- funds made available throughout
the length of the innovation chain -- Ministry of Science, Technology & Innovation (MOSTI) funds
pre-commercial technology -- Malaysian Technology Development Corporation (MTDC) turns new
commercial innovation into income generators -- fund
recipients nurtured for up to 5 years -- the legal picture -- amendments to IP laws -- monetisation
and securitisation of IP -- Industrial Designs (Amendment) Act 2013 -- IP valuation
Subject: Innovation (Technological)
Subject: Inventions
Subject: Intellectual property--Malaysia
SNIPER No.: 2014/01346
Author: Hernández, Carlos
Title: Who's first?: prior use rights in Mexico
Source: World Intellectual Property Review. Annual, 2014, pp. 66-67.
Summary: Mexican IP law -- prior use of a trade mark in Mexico -- defendant in prior use
cancellation -- evidence of prior use -- Mexican Institute of Industrial Property (IMPI)'s procedures - benefit of moving to a single action -- parties involved would have certainty as to which of them
had prior use of the trade mark -- second litigation action.
Subject: Prior use (Trade Marks)--law and legislation--Mexico
SNIPER No.: 2014/01324
Author: Qu, Guifang
Author: Sun, Fangtao
Title: Why does the Apple v Samsung patent war not occur in China?
Source: European Intellectual Property Review. Vol. 36 No. 5, 2014, pp. 358-362.
Summary: Apple v Samsung patent war -- China left out among the world's five largest intellectual
property offices -- unfavourable factors for both parties if a patent war breaks out in China -- factors
unfavourable for Apple -- factors unfavourable for Samsung.
Subject: Patent litigation--China
SNIPER No.: 2014/01560
Author: Tofalides, Margaret
Author: Franklin, Amy
Title: Will #privacy ever trend?
Source: Intellectual Property Magazine. June 2014, pp. 48-49.
SNIPER Bulletin – September 2014
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Summary: Explosive growth of social media -- important tool to inform and influence target
markets -- consumers are contributors to the information provided by online service providers -dynamic new market place raises significant legal questions -- whether privacy can truly exist in
this age of social media -- protection of personal data and privacy has evolved to produce a mix
bag framework -- contractual agreements between consumer and company -- technical features
enforced by social media outlets -- industry standards and legal regulation -- privacy laws predate
social networking -- concerns about the extent to which individuals are unwittingly putting their
personal data at risk of exposure -- vulnerabilities in social network's systems -- providers are
making adjustments to their terms of use in order to reassure their users -- noticeable change in
the United States to reconcile the attitude to privacy with that of the EU -- EU making attempts to
better operate in today's fluid environment of both changing technology and changing privacy
expectations -- UK Information Commissioner's Office (ICO) published general guidance on online
safety for users of social media -- tracking and collation of information about internet usage by
Google.
Subject: Social networking
Subject: Privacy--law and legislation
SNIPER No.: 2014/01565
Author: Aktekin, Uǧur
Author: Arikan, Pinar
Title: WIPO's international registration system: what now, what next?
Source: Intellectual Property Magazine. June 2014, pp. 58-59.
Summary: Growing demand for the institution of a trade mark registration system ensuring
protection on a global scale by registration of an international trade mark with the World Intellectual
Property Organization (WIPO) -- Madrid System allows for trade mark filing in multiple worldwide
jurisdictions simultaneously -- Turkey became a member on 1 January 1999, adopting the Madrid
System in the process -- benefits of the system -- those making applications via the Madrid System
need to be wary -- significant issues in key areas -- issues in Turkey
Subject: Madrid Agreement Concerning the International Registration of Marks (1891 April 14).
Protocols, etc., 1989 June 27
Subject: Trade mark registration--Turkey
SNIPER No.: 2014/01493
Author: Little, Trevor
Title: World Trademark Review's 50 market shapers
Source: World Trademark Review. No. 50, August-September 2014, pp. 13-25.
Summary: World Trademark Review identifies 50 of the people, companies, cases and big picture
issues that have defined and shaped the market for the last eight years.
Subject: Intellectual property industry--statistics
SNIPER No.: 2014/01357
Author: Okuyama, Shoichi
Title: The year in review
Source: World Intellectual Property Review. Annual, 2014, pp. 98-99.
SNIPER Bulletin – September 2014
Page 74 of 76
Summary: Review of the Japanese intellectual property landscape -- backlog reduced -- goals set
at the Japan Patent Office (JPO) -- by 2023 fiscal year average time between filing of a request for
examination and the issue of a final action would be reduced from 29.6 months to 14 months -Patent, Utility, Design and Trademark Laws to be amended -- amicus briefs in Japan -- changes to
the employee invention scheme -- balance of payments for IP rights.
Subject: Japan. Tokkyochō
Subject: Intellectual property systems--Japan
SNIPER Bulletin – September 2014
Page 75 of 76
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