SNIPER Bulletin
Searchable Networked Intellectual
Property Electronic Resource
May 2015
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ISSN: 2202-753X
SNIPER No.: 2015/00141
Author: Jones, Simon
Title: 3D printing across borders
Source: Intellectual Property Magazine. November 2014, pp. 26-28.
Summary: Implications for intellectual property from 3D printing -- impact of 3D printing on
traditional businesses -- protecting designs from infringement -- CJEU recently ruled that artistic
designs could be protected against infringement -- unauthorised 3D printing will infringe literary
copyright on product design files -- home copying exception did not anticipate the introduction of
3D printing -- sharing designs over the internet -- P2P copying -- comparison of Chinese and
European IP rights -- exploiting the new technology to generate new revenue streams.
Subject: Three dimensional printing
Subject: Copyright infringement
SNIPER No.: 2015/00140
Author: Hornick, John F.
Title: 3D printing 'away from control'
Source: Intellectual Property Magazine. November 2014, pp. 26-28.
Summary: Scale of 3D printing will have an effect on IP -- loss of IP income -- 3D printing may
result in widespread copying -- opposition to IP rights -- use of internet and crowd sourcing to
challenge 3D printing patent applications -- IP system will continue to work effectively for traditional
manufacturing methods -- printing replacement parts -- 3D printed health care products -- IP rights
owners will have some control if a 3D printed product is sold -- inadequate law to deal with 3D
printing -- digital rights management -- transition to non-IP-rights-based businesses.
Subject: Three dimensional printing
Subject: Intellectual property rights
SNIPER No.: 2015/00081
Author: World Intellectual Property Organization. Economics and Statistics Division
Title: 2013 Hague yearly review: international registrations of industrial designs [electronic
resource]
Source: Hague Yearly Review. 2013.
General Note: Fourth report in a series.
Summary: Hague system -- international industrial design applications 2012 -- use of the Hague
system -- international applications and registrations -- international registrations by country of
origin -- multinational registrations -- registrations by class -- registration renewals -- administrative
procedures -- developments in membership -- legal framework -- membership by country -statistical tables.
Subject: Hague Agreement Concerning the International Registration of Industrial Designs (1999
July 2)--statistics
Subject: International industrial design applications--statistics
SNIPER Bulletin – May 2015
Page 1 of 63
SNIPER No.: 2015/00082
Author: World Intellectual Property Organization. Economics and Statistics Division
Title: 2014 Madrid yearly review: international registrations of marks [electronic resource]
Source: Madrid Yearly Review. 2014
General Note: WIPO Publication No. 940E/14
General Note: Ninth report in a series.
Summary: Madrid System use -- international trade mark applications, 2013 key figures -international registrations -- international registrations by origin -- geographic coverage of Madrid
international registrations -- coverage of goods and services -- refusals -- renewals -- international
registrations in force -- administration, revenue and fees -- fee distribution among members -developments in the Madrid System -- Madrid members -- summary of the Madrid system.
Subject: Madrid Agreement Concerning the International Registration of Marks (1891 April 14).
Protocols, etc., 1989 June 27--statistics
Subject: International trade mark applications--statistics
SNIPER No.: 2015/00295
Author: Chan, Johnny
Author: Zhang, Lily
Author: Lee, Jeffrey
Author: Glass, Gregory
Title: The 2015 Asia IP copyright survey: a guide to Asia's copyright laws
Source: Asia IP: Protecting your Intellectual Assets. Vol. 7 No. 1, January 2015, pp. 7-27.
Summary: Copyright laws in Asia -- summary of current practice and changes -- recommended
firms -- Greater China: China, Hong Kong, Macau, Taiwan -- North Asia: Japan, South Korea -Southeast Asia; Brunei, Cambodia, East Timor, Indonesia, Laos, Malaysia, Myanmar, The
Philippines, Singapore, Thailand, Vietnam -- South Asia: Bangladesh, India, Nepal, Pakistan, Sri
Lanka -- Oceania: Australia, New Zealand, Papua New Guinea.
Subject: Copyright--law and legislation--Asia
Subject: Intellectual property industry--Asia
SNIPER No.: 2015/00084
Author: Hiltz, Ralph H.
Author: Köklü, Kaya
Added author: Max-Planck-Institut für Immaterialgüter- und Wettbewerbsrecht
Title: Access and use: open vs. proprietary worlds [electronic resource]
Source: Max Planck Institute for Innovation and Competition Research Paper. No. 14-07, 29 April
2013.
SNIPER Bulletin – May 2015
Page 2 of 63
Summary: Obtaining a balance between open and proprietary worlds -- framing laws to achieve
that balance -- Creative Commons licenses -- allowing copyrighted work to be used by others -current IP system does not impede open models -- open source software -- incentives for open
access publications for scientific research results -- user-generated content on freely accessible
online platforms -- contrast between Google and Wikipedia -- open innovation within the patent
system -- legal safeguards to prevent over exclusive rights.
Subject: Computer-related inventions
Subject: Intellectual property--social aspects
Subject: Intellectual property licensing
SNIPER No.: 2014/02136
Author: Pusceddu, Piergiuseppe
Title: Access to medicines and TRIPS: compliance in India and Brazil
Source: European Intellectual Property Review. Vol. 36 No. 12, 2014, pp. 790-801.
Summary: Access to health care in developing countries -- removing barriers to access medicines
-- impact of TRIPS on access to health -- perception that IPR regime for pharmaceuticals was
unjust -- India implemented TRIPS in three stages -- compulsory licenses -- generic
pharmaceuticals -- patent opposition -- Bolar exception -- parallel imports -- national system to
secure access to health in Brazil -- economic pressures of TRIPS on developing countries -ensuring TRIPS compliance -- no national exhaustion scheme in Brazil -- pre and post grant
opposition to patents -- Novartis v Union of India involving evergreening -- Cristália Produtos
Quimicos Farmacêuticos LTDA v INPI judgment on pipeline patents.
Subject: Agreement on Trade-Related Aspects of Intellectual Property Rights (1994 April 15)
Subject: Pharmaceuticals--law and legislation--India
Subject: Pharmaceuticals--law and legislation--Brazil
Subject: Compulsory licensing--pharmaceutical industry
SNIPER No.: 2015/00323
Author: Buhyoff, Gregory F.
Title: Action plan for Asia
Source: Intellectual Property Magazine. October 2014, p. 38.
Summary: Protection of IP rights in China and Vietnam -- use of non disclosure agreements for
trade secrets -- protecting against infringement when outsourcing products -- identifying the scope
of infringements -- operating within the law when trading in other countries.
Subject: Intellectual property rights--China
Subject: Intellectual property rights--Vietnam
SNIPER No.: 2014/02207
Author: Davis, Theodore H.
Author: Brenner, Lauren
Title: Allegations of fraudulent procurement and maintenance of federal registrations since in re
Bose Corp.
Source: Trademark Reporter. Vol. 104 No. 5, September-October 2014, pp. 933-1000.
SNIPER Bulletin – May 2015
Page 3 of 63
Summary: Finding in Bose based on filing a declaration of continued use -- Medinol standard -negligence opposed to fraud -- courts applied a variety of different tests for fraud after Bose
finding -- application oath -- examples of successful and failed fraudulent procurement claims -failure to disclose other users of same or similar marks -- bona fide intent to use -- allegations of
fraud in cancellations actions -- inaccuracies in dates of first use -- submission of inaccurate or
misleading specimens -- fraudulent claims of distinctiveness -- disclosure of historical significance.
Subject: Trade mark registrability--United States
Subject: Fraud--United States
SNIPER No.: 2014/00713
Author: Scassa, Teresa
Title: Antisocial trademarks
Source: Trademark Reporter. Vol. 103 No. 5, 2013, pp. 1172-1213.
Summary: Public order and morality considerations when excluding a trade mark from registration
-- Ordre public principle -- three categories of antisocial trade marks -- antisocial marks under
TRIPS -- provisions only relate to registration of trade marks not a ban on the use of the mark -comparison of case law in Canada, USA and UK -- post-registration challenges -- freedom of
expression -- adoption of a mark used in relation to antisocial goods and services -- plain
packaging of tobacco products -- trade marks associated with harmful goods -- antisocial brand
messages -- registrations for club logos -- criminal organisations benefitting from registered trade
marks.
Subject: Trade mark registrability
Subject: Public interest
SNIPER No.: 2014/01656
Author: Li, Yue
Title: Application of Article 33 of China's Patent Law
Source: China Intellectual Property: comprehensive IP report on China. Vol. 60 No. 3-4, MarchApril 2014, pp. 60-67.
Summary: Amendments to patent application documents -- examination standards -- lack of
flexibility for examiners -- patent amendments not to exceed the scope of written description or
claims under first filing -- case studies -- request for invalidation -- agricultural chemical industry -re-examination applications -- standard of ordinary persons skilled in the art -- first to file principle -Markush claims.
Subject: Patent amendment--China
Subject: Patent applications--China
Subject: Patent validity--China
SNIPER No.: 2013/02877
Author: De Beer, Jeremy, 1975Title: Applying best practice principles to international intellectual property lawmaking
Source: IIC : International Review of Intellectual Property and Competition Law. Vol. 44 No. 8,
December 2013, pp. 884-901.
SNIPER Bulletin – May 2015
Page 4 of 63
Summary: International intellectual property treaties -- international lawmaking -- Max Planck
Principles for Intellectual Property Provisions in Bilateral and Regional Agreements -- changing
nature of international IP lawmaking -- applying the Principles -- Anti-Counterfeiting Trade
Agreement (ACTA) -- Trans-Pacific Partnership (TPP) -- Pan-African Intellectual Property
Organization (PAIPO) -- Marrakesh Treaty to Facilitate Access to Published Works for Persons
Who are Blind, Visually Impaired, or Otherwise Print Disabled (VIP Treaty).
Subject: International intellectual property law
Subject: Intellectual property--treaties
SNIPER No.: 2015/00092
Author: Stoll, Thimo
Added author: Max-Planck-Institut für Immaterialgüter- und Wettbewerbsrecht
Title: Are you still in?: the impact of licensing requirements on the composition of standards
setting organizations [electronic resource]
Source: Max Planck Institute for Innovation and Competition Research Paper. No. 14-18, 8
December 2014.
Summary: ICT Specification of licensing requirements is used to reduce the incentive to use
patents for strategic purposes -- European Commission fostering open standards -- standardessential patents must be licensed on a royalty-free basis -- royalty-free (RF) licenses as a
substitute for fair, reasonable and non-discriminatory (FRAND) option -- incentives to join a
standards setting organisation -- OASIS and W3C --interoperability standards in ICT -- tension
between patents and standards -- analysis of the active and influential SSOs in ICT -- effect of
opportunistic behaviour by owners of standard-essential patents on standards implementation.
Subject: Standards (Technical)--Europe
Subject: Patents--Europe
SNIPER No.: 2015/00333
Author: McMaster, Wayne
Author: Kelp, Jonathan
Author: Evetts, Megan
Title: AstraZeneca cholesterol patents held invalid
Source: Intellectual Property Magazine. October 2014, pp. 66-68.
Summary: AstraZeneca AB v Apotex Pty Ltd -- Full Federal Court ruled patents for Rosuvastatin
invalid -- judgment considered novelty, inventive step, entitlement, fair basis, priority date and
indirect infringement -- AstraZeneca to apply for special leave to appeal in respect of the low dose
patent -- sale of generic pharmaceuticals -- test for inventive step depends on filing date of
application -- prior art document can anticipate an invention -- method of treatment claims.
Subject: Patent validity--case law--Australia
Subject: Inventive step--case law--Australia
Subject: Pharmaceuticals--case law--Australia
SNIPER Bulletin – May 2015
Page 5 of 63
SNIPER No.: 2014/00717
Author: Mitchell, Glenn, 1962Title: "Aura" as quality: a sumptuary law for our times?
Source: Trademark Reporter. Vol. 103 No. 5, 2013, pp. 1273-1277.
Summary: Harm caused by sale of inferior quality trade marked goods -- Copad v. Christian Dior
Couture SA decision expanded notion of the quality of merchandise -- goods manufactured by
authorised licensee sold directly to a discount retailer -- "aura of luxury" -- brand positioning -Copad decision restricts who can buy and wear or display goods.
Subject: Brand management--Europe
Subject: Trade mark licensing--Europe
SNIPER No.: 2015/00151
Author: Erciyas, Selin Sinem Yal?ncakl?
Author: Korkmaz, Aysel
Title: Barrier in Turkey
Source: Intellectual Property Magazine. November 2014, pp. 60-61.
Summary: New draft patent law to promote economic growth and harmonise national with
international patent law -- pharmaceutical industry opposition to first draft -- lack of clear provision
for second medical use claims -- patentability of biotechnological inventions -- divisional patent
applications -- restriction of patent infringement claims -- patent examination process changed -- IP
rights should be ruled by a law not a Decree law.
Subject: Patents--law and legislation--Turkey
Subject: Harmonisation of laws--Turkey
SNIPER No.: 2015/00296
Author: Zhang, Lily
Author: Chan, Johnny
Author: Lee, Jeffrey
Title: BIP Asia highlights importance of IP
Source: Asia IP: Protecting your Intellectual Assets. Vol. 7 No. 1, January 2015, pp. 29-34.
General Note: Interviews conducted at the Business of IP Asia Forum held in Hong Kong from 4-5
December 2014
Summary: Role of IP in global value chains -- changes in international trade from things to
services and ideas -- role of innovation in the Chinese economy -- increase in litigation -increasing IP awareness in China -- advances in wearable technology -- increase in university
owned patents in Japan and China -- collaboration between universities and corporations for
technological innovation -- combining fashion and technology.
Subject: Taubman, Antony--interviews
Subject: Shen, Nan--interviews
Subject: Tsin, Alan--interviews
SNIPER Bulletin – May 2015
Page 6 of 63
Subject: Mitomo, Toshimoto--interviews
Subject: Li, Li--interviews
Subject: Value of intellectual property--Asia
Subject: Business collaboration--Asia
SNIPER No.: 2014/02138
Author: Meale, Darren
Author: Kendziur, Daniel F. (Daniel Ferdinand)
Title: Boring booze bottle shape trade mark rejected by the General Court: even though it bore a
registered word mark
Source: European Intellectual Property Review. Vol. 36 No. 12, 2014, pp. 807-809.
Summary: Franz Eilhelm Langguth Erben v OHIM -- registering a bottle shape as a Community
trade mark -- requirement for a distinctive shape -- application for a bottle shape with a separate
trade mark added.
Subject: Shape marks--case law--Europe
Subject: Trade dress--Europe
SNIPER No.: 2015/00383
Author: Nappey, Alexandre
Title: Brand strategies in the new gTLD era
Source: Intellectual Property Magazine. February 2015, pp. 28-29.
Summary: Survey of domain name portfolios and their structure -- most companies unaware of
risks related to TLDs -- monitoring to detect online infringement -- preference for amicable transfer
of TLD's registered fraudulently -- second round of TLDs applications due in 2018 -- increased use
of alternative dispute resolution mechanisms for domain disputes.
Subject: Domain name registration
Subject: Brand management
SNIPER No.: 2014/02180
Author: Michels, James
Title: Branded hashtags: the next big thing?
Source: WIPO Magazine. No. 5, October 2014, p. 33.
Summary: Promotion through branded hashtags -- trade mark applications using the hashtag -use in branding strategies.
Subject: Brand management
Subject: Multimedia works
SNIPER Bulletin – May 2015
Page 7 of 63
SNIPER No.: 2014/02209
Author: Bereskin, Daniel R.
Title: Canada's ill-conceived new "trademark" law: a venture into constitutional quicksand
Source: Trademark Reporter. Vol. 104 No. 5, September-October 2014, pp. 1112-1131.
Summary: Bill introduced to abolish trade mark use as a condition of registration -- increase in
cost and uncertainty in obtaining trade mark registrations -- Canadian trade mark legislation and
amendments from 1868 -- interconnection between trade marks and goodwill -- consumer
confusion -- proposal to allow registration of a mark on basis of actual or proposed use in Canada - community trade marks -- Canada Standard case -- benefits for NPEs -- hypothetical examples of
impact new legislation will have on national matters -- suggested changes to the proposed new
legislation.
Subject: Trade marks--law and legislation--Canada
Subject: Trade mark registrability--law and legislation--Canada
Subject: Trade mark use--law and legislation--Canada
SNIPER No.: 2015/00329
Author: Rose, David
Author: Davies, Sophie
Title: Catwalk confusion
Source: Intellectual Property Magazine. October 2014, pp. 50-52.
Summary: Scope of trade mark specification in the fashion industry -- clarity of specifications -guidelines for drafting specification for fashion brands -- CJEU decision in IP Translator case -similarity of marks -- relationship between clothing and accessories, and perfume.
Subject: Confusing similarity--fashion and design industry--Europe
Subject: Trade mark use--fashion and design industry--Europe
Subject: Fashion and design industry--case law--Europe
Subject: Trade mark registrability--Europe
SNIPER No.: 2015/00135
Author: Wucherer, Hillary J.
Author: Stutz, Heather S.
Title: Changes to trademarks in an obsolete technology
Source: Intellectual Property Magazine. November 2014, pp. 16-17.
Summary: USPTO considering proposal to allow amendments of obsolete technology where the
underlying content has not changed -- LPs, floppy discs examples of acceptable amendments -amendments not allowed if goods are still used in their original manner -- conflict between two
existing registrations -- concerns remain over the new proposal.
Subject: Innovation (Technological)--United States
SNIPER Bulletin – May 2015
Page 8 of 63
SNIPER No.: 2015/00142
Author: Sim, Andrew
Title: China embraces the technology
Source: Intellectual Property Magazine. November 2014, pp. 32-33.
Summary: Increase use of 3D printing technology in China -- patents to the 3D technology due to
expire soon -- 3D printing poses new challenges for IP law -- sharing digital design files online -uncertainty over how the courts will handle cases involving 3D printing -- recent cases have
resulted in differing judgments -- copyright -- fair use defence -- protection under invention or
design patents -- 3D trade mark registration.
Subject: Three dimensional printing--China
Subject: Intellectual property rights
SNIPER No.: 2014/02139
Author: Davidson, Justin
Title: China: new rules on well-known trade marks become effective
Source: European Intellectual Property Review. Vol. 36 No. 12, 2014, pp.809-810.
Summary: Simpler definition of "well-known trade mark" -- use of "well-known trade mark"
prohibited on goods -- passive protection for well-known marks -- clarification of responsibilities of
PRC authorities -- evidence of use or registration -- anti-corruption provisions.
Subject: Famous trade marks--China
SNIPER No.: 2014/01280
Author: Liu, Binqiang
Title: China Utility Model Patent: trash or treasure: a data-based analysis
Source: IDEA: the Intellectual Property Law Review. Vol. 54 No. 2, 2014, pp. 225-254.
Summary: Value of the Chinese Utility Model Patent (CUMP) -- PCT international stage citations -foreign examiner citations -- foreign application citations – sharp growth in foreign examiner
citations since 2007 -- patent litigation trends -- Chint v. Schneider high damages award -- Yibin
Grace Group enforcing patent rights case -- Izumi infringement case -- financial role of patents -patent licensing -- patent pledging.
Subject: Minor patents--China
SNIPER No.: 2014/02181
Author: Zhang, Mao
Title: China's new trademark law
Source: WIPO Magazine. No. 5, October 2014, pp. 34-36.
Summary: Amendments to trade mark law to bring it in line with international standards -streamlining trademark registration procedure -- strengthen protection of trade marks -- role of IP in
socioeconomic development -- encouraging innovation -- effective brand management.
Subject: Trade marks--law and legislation--China
SNIPER Bulletin – May 2015
Page 9 of 63
SNIPER No.: 2014/02141
Author: Mirza, José Tizón
Title: CJEU expands trade mark law to include the design of a store layout: Apple Inc v Deutsches
Patent- und Markenamt (German Patent and Trade Mark Office)
Source: European Intellectual Property Review. Vol. 36 No. 12, 2014, pp. 813-817.
Summary: CJEU ruled that the design of a store had the potential to be trade marked -- design
registered in US in 2010 -- use of Madrid Protocol -- DPMA rejected application -- definition of a
trade mark -- unique qualities of Apple stores -- Apple business model copied in China -- protection
granted for a store layout in France -- clarification of the law from the CJEU.
Subject: Trade dress--Europe
Subject: Shape marks--Europe
Subject: Trade mark registrability--Europe
SNIPER No.: 2015/00132
Author: Robinson, Alexander
Title: CJEU involvement with the UPC
Source: Intellectual Property Magazine. November 2014, p. 12.
Summary: Uncertainty regarding CJEU involvement in the UP and UPC -- CJEU involvement in
patent litigation -- concerns that the system would be unworkable -- IP Translator case -supplementary protection certificates -- biotechnology patent cases -- lack of clarity in CJEU
decisions -- UK government position.
Subject: Patents--law and legislation--Europe
SNIPER No.: 2014/02142
Author: Sobol, Agata
Title: Claims limitation in Italy: Alban Giacomo SpA v Bonaiti Serrature SpA and Giovanni Aschieri
Source: European Intellectual Property Review. Vol. 36 No. 12, 2014, pp. 817-820.
Summary: Litigation over a magnetic movement lock -- application of new Article 79.3 of the Italian
Code of Intellectual Property (CIP) -- claims limitation during a court case.
Subject: Patent litigation--Italy
SNIPER No.: 2015/00331
Author: Mammen, Christian E.
Title: The coming lame duck status of Form 18 for patent infringement suits
Source: Intellectual Property Magazine. October 2014, pp. 59-60.
Summary: Increase in licensing demand letters from patent trolls -- legislative reform stalled in US
Senate -- abolition of Federal Rules of Civil Procedure in December 2015 -- complaints must
contain some factual allegation to move beyond pleading stage -- Bell Atlantic v Twombly and
Ashcroft v Iqbal -- minimal pleading requirements in Form 18.
Subject: Patent litigation--United States
Subject: Non-practicing entities--United States
SNIPER Bulletin – May 2015
Page 10 of 63
SNIPER No.: 2015/00376
Author: Steenberg, Charles T.
Title: Commil v Cisco
Source: Intellectual Property Magazine. February 2015, pp. 13-14.
Summary: Issue of whether a belief that a patent is invalid constitutes a defence to inducement -good-faith defence -- inducement requires more than encouraging a third party to act in a way that
constitutes infringement -- DSU Medical Corp v JMS Co, jury decision required evidence of
culpable conduct -- admissible evidence -- Solicitor General's view that a defendant's belief that a
patent is invalid is not a defence if there is a charge of inducing infringement -- SCOTUS decision
awaited.
Subject: Patent validity--United States
Subject: Patent infringement--United States
SNIPER No.: 2015/00138
Author: Alexander, Charles
Title: Competition policy and intellectual property
Source: Intellectual Property Magazine. November 2014, p. 22.
Summary: Australia's draft competition policy review identified 8 priority areas -- digital revolution - current patent system can impede competition -- balance between protecting rights and
promoting competition -- recommended independent review by an independent body -recommendation that s. 51(3) of the Competition and Consumer Act be repealed -- removal of
parallel import restrictions -- best interests of Australia should be considered when negotiating free
trade agreements -- suggested that extension of copyright protection to 70 years under the USFTA
had anti-competitive effect.
Subject: Competition policy--reviews--Australia
Subject: Intellectual property systems--Australia
SNIPER No.: 2015/00134
Author: Carver, Tom
Title: Comptroller of Patents gains new powers
Source: Intellectual Property Magazine. November 2014, p. 15.
Summary: Extension of Patent Opinions Service by the UKIPO -- non-binding opinions -- if patent
deemed invalid because of lack of novelty or inventive step, Comptroller can now initiate process
to revoke it -- stay of proceedings in infringement actions -- interaction with European Patent
Office.
Subject: Patent systems--United Kingdom
SNIPER No.: 2015/00201
Author: Dent, Chris
Title: Confusion in a legal regime built on deception: the case of trade marks
SNIPER Bulletin – May 2015
Page 11 of 63
Source: Queen Mary Journal of Intellectual Property. Vol. 5 No. 1, January 2015, pp. 2-27.
Summary: Use of the term 'confusion' in refusal of registration and infringement cases -- adoption
of confusion into trade mark jurisprudence -- use of the term 'deception' in passing off decisions -confusion between the two terms -- trade mark practices in the eighteenth and nineteenth centuries
-- utilitarian concept of an individual -- introduction of a registration system for trade marks.
Subject: Confusing similarity--history--Australia
Subject: Trade marks--case law--Australia
Subject: Passing-off--Australia
SNIPER No.: 2015/00262
Author: Duescher, Matthew
Title: Controlling the patent trolls: a proposed approach for curbing abusive Section 337 claims in
the ITC
Source: Journal of the Patent and Trademark Office Society. Vol. 96 No. 4, 2014, pp. 614-634.
Summary: International Trade Commission (ITC) an alternative to infringement litigation over
imported products -- ITC initially intended to protect universities and SMEs -- ITC now increasingly
used by non-practicing entities for abusive litigation -- patent licensing -- differences between
litigation in the ITC and Federal Court -- ITC cannot award monetary damages -- standards to
obtain injunctive relief -- a number of approaches considered to deal with patent trolls -- fasttracking pilot program -- eBay v. MercExchange standard -- establishing domestic industry -negative side to proposed approaches -- Federal Circuit approach in Motiva v. ITC.
Subject: Non-practicing entities--United States
Subject: Infringement remedies--United States
SNIPER No.: 2015/00311
Author: Harris, Paul
Title: Copyright laws and the digital world: in sync or badly dubbed?
Source: Intellectual Property Magazine. October 2014, pp. 13-14.
Summary: Make-up artist Michelle Phan sued for use of copyright music in YouTube video -streaming of films and music -- consideration of "fair use" in copyright infringement cases with
emerging technologies -- applying copyright laws not designed for the new technologies -requirement to apply for a license to use copyrighted music on YouTube -- SAS Institute Inc v
World Programming Ltd software infringement case -- gaining financial benefit from copyright
infringement.
Subject: Copyright infringement--culture and entertainment industry
Subject: Neighbouring rights--culture and entertainment industry
Subject: Innovation (Technological)
SNIPER No.: 2014/01171
Author: Gholz, Charles L.
Title: A critique of recent opinions in patent interferences
SNIPER Bulletin – May 2015
Page 12 of 63
Source: Journal of the Patent and Trademark Office Society. Vol. 96 No. 1, 2014, pp. 92-111.
Summary: Discussion of US cases involving interference -- Dawson v Dawson et al appeal over
inventorship -- Amkor Technology Inc. v. International Trade Commission -- inventions of foreign
origin -- conception of a DNA segment in Sanofi-Aventis v. Pfizer Inc -- peer review of academic
papers by competitors in Rubin v. General Hospital Corp. -- In re Hubbell double patenting case -multiple patents containing similar scope in TactIP, LLC v. Janssen Biotech, Inc. -- use of
statements in a copied specification -- submission of live evidence.
Subject: Patent ownership--case law--United States
Subject: Patents--case law--United States
SNIPER No.: 2015/00385
Author: Goodchild, Joanne
Title: Cyberswatting: eradicating domain name pests
Source: Intellectual Property Magazine. February 2015, pp. 32-34.
Summary: Leading case in domain name squatting was British Telecommunication plc v One in a
Million Ltd -- need for a quick and inexpensive dispute resolution procedure resulted in the Uniform
Domain Name Dispute Resolution Policy -- three legal principles of confusing similarity, legitimate
interests and registration in bad faith used to determine domain name ownership.
Subject: Domain name dispute resolution--United Kingdom
Subject: Cybersquatting--United Kingdom
SNIPER No.: 2015/00398
Author: McMahon, Freddie
Title: Dawn of the data
Source: Intellectual Property Magazine. February 2015, pp. 74-75.
Summary: Using big data and analytics to automate IP processes -- using analytics to deliver
business benefits -- uncovering patent anomolies -- few companies realise the worth of their IP -using data to identify if an idea is new and worth protecting -- identifying global infringement threats
-- trend towards automatic IP management systems.
Subject: Intellectual Property management
Subject: Data mining
SNIPER No.: 2015/00093
Author: Lamping, Matthias, 1983Author: Hilty, Reto M, 1958Author: Burk, Dan L.
Author: Correa, Carlos María
Author: Drahos, Peter, 1955Author: Gopalakrishnan, N. S., Dr
SNIPER Bulletin – May 2015
Page 13 of 63
Author: Grosse Ruse-Khan, Henning, 1974Author: Kur, Annette
Author: Overwalle, Geertrui van
Author: Reichman, J. H. (Jerome H.), 1936Author: Ullrich, Hanns
Added author: Max-Planck-Institut für Immaterialgüter- und Wettbewerbsrecht
Title: Declaration on patent protection: regulatory sovereignty under TRIPS [electronic resource]
Source: Max Planck Institute for Innovation and Competition Research Paper. No. 14-19, 24
September 2014.
General Note: Also published in IIC: International Review of Intellectual Property and Competition
Law, 2014, Vol. 45 No. 6, pp. 679-698.
Summary: Patents as strategic assets -- protection of public interest when approving patents -patents should encourage innovation -- clarification of regulatory options for members of TRIPS -regulatory freedom -- balancing national and international needs -- scope of patent protection
under Article 29 of TRIPS -- Article 27 covers patent exhaustion -- three step test for exceptions to
patentability under TRIPS -- use of compulsory licensing as a regulatory instrument -- limiting
protection to ensure public good -- enforcement measures should consider all interests at stake -patent rights should not violate freedom of transit -- patent infringement should be subject to civil,
not criminal law -- final declaration summarising principles of TRIPS in relation to states being able
to determine the goals of their own patent systems.
Subject: Patent systems
Subject: International law
SNIPER No.: 2015/00320
Author: Chan, George
Title: Defeating the squatters with prior rights
Source: Intellectual Property Magazine. October 2014, pp. 31-33.
Summary: Settlement of Tesla case after mediation -- application in bad faith by Zhan Baosheng - asserting prior rights -- courts recognise five types of prior rights, trade names, personality rights,
copyright, design patents and merchandising rights -- likelihood of consumer confusion -personality rights protected under civil and tort law -- substantial similarity test in copyright cases -overlap between trade marks and design patents -- TRAB v Danqiao Ltd case over merchandising
rights -- use of prior rights defence.
Subject: Piracy--China
Subject: Trade mark entitlement--China
SNIPER No.: 2015/00078
Author: Frey, Carl Benedikt
Author: Ansar, Atif
Author: Wunsch-Vincent, Sacha
Added author: World Intellectual Property Organization
SNIPER Bulletin – May 2015
Page 14 of 63
Title: Defining and measuring the "market for brands": are emerging economies catching up?
[electronic resource]
Source: WIPO Economic Research Working Paper. No. 21, September 2014.
Summary: Role of brands in the economy -- licensing and buying of global brands -- business
franchising -- managing brands as a company asset -- investment required to build a strong brand - leveraging of established brands -- deciding on value of brands -- possible dilution of brand due to
licensing -- using brand acquisition to reduce costs -- pros and cons of market for brands -- brand
reputation -- privacy surrounding brand licensing transactions -- worldwide trends in trade mark
licensing -- trade mark usually part of a merger or acquisition -- little available data on licensing.
Subject: Brand management
Subject: Trade mark licensing
SNIPER No.: 2015/00384
Author: McIlraith, Gary
Title: Developing a defensive domain name strategy
Source: Intellectual Property Magazine. February 2015, pp. 30-31.
Summary: NetName survey -- majority of large companies have already invested in the new TLDs
-- exploitation of domain names by cybercriminals -- protection of brand names and trade marks -business benefits of adopting a .BRAND domain name include reducing risk of cybersquatting -introduction of Internationalised Domain Names (IDNs) allows business to tailor online global
presence -- preventative registration of suffixes that a brand does not wish to be associated with.
Subject: Domain name registration
Subject: Brand management
SNIPER No.: 2015/00374
Author: Price, Richard
Title: A difficult, but necessary journey
Source: Intellectual Property Magazine. February 2015, pp. 8-10.
Summary: New patent system to be quick and cost-effective -- System favourable to claimants -increase in amount of documents to prepare for cases -- exchange of pleadings and evidence to
be completed in five months -- interim conferences -- applications for opt-outs -- use of an official
EU language -- discretion of the court when issuing injunctions -- procedural appeals -interlocutory review -- administration of the new courts -- Spanish challenge to constitutionality of
the new court.
Subject: Patent litigation--Europe
Subject: Legal procedure--Europe
SNIPER No.: 2015/00377
Author: Grégoire, Jean-Charles
Title: Door opened for medical use claims in Canada
Source: Intellectual Property Magazine. February 2015, p. 15.
SNIPER Bulletin – May 2015
Page 15 of 63
Summary: CIPO position that methods of medical treatment are unpatentable -- CIPO
examination guidelines -- AbbVie Biotechnology Ltd v Canada (AG) appeal against a refusal to
grant a patent on fixed dosage and schedule -- interpretation of case law -- Federal Court held that
fixed dosage and schedule do not automatically constitute unpatentable subject matter -- medical
use claims.
Subject: Medical procedures and devices--patentability--Canada
Subject: Patentability--case law--Canada
SNIPER No.: 2015/00312
Author: Rajendra, Arty
Author: Welch, Joanne
Title: Double trouble
Source: Intellectual Property Magazine. October 2014, pp. 15-16.
Summary: UK only grants a single patent for each invention under section 18(5) of the Patent Act
-- European patents take precedence over UK patents for the same invention -- double patenting
not in the public interest -- post-grant amendment at discretion of comptroller or court -- EPO does
not allow double patenting for application with the same filing date and applicant -- patent thickets - EPO changed divisional rules in an attempt to limit the quantity and effect of divisionals.
Subject: Patent applications--United Kingdom
Subject: Patent applications--Europe
Subject: Divisional applications (Patents)--Europe
Subject: Divisional applications (Patents)--United Kingdom
Subject: Patentability
SNIPER No.: 2014/02179
Author: Kelly, Patricia
Title: Dream shield: communicating IP to indigenous businesses
Source: WIPO Magazine. No. 5, October 2014, pp. 29-32.
Summary: Development of materials to ensure indigenous Australians can protect their intellectual
property -- Nanga Mai Arung - Dream Shield -- future inclusion of copyright and moral rights
information -- case study featuring Warlukurlangu artists -- generating income by licensing
agreements with manufacturers -- Indigenous IP master-classes to help artists protect their works.
Subject: Traditional cultural expressions--Australia
Subject: Intellectual property rights--Culture and entertainment industry
Subject: Moral rights
SNIPER No.: 2015/00076
Author: Foray, Dominique
Author: Raffo, Julio
SNIPER Bulletin – May 2015
Page 16 of 63
Added author: World Intellectual Property Organization
Title: The emergence of an education tool industry: opportunities and challenges for innovation in
education [electronic resource]
Source: WIPO Economic Research Working Paper. No. 19, September 2014.
Summary: Emergence of an educational tool industry -- problem solving -- lack of incentives to
improve educational practices -- analysis of the patent data to measure innovation -- increase use
of information and communication technologies -- use of licensing agreements.
Subject: Innovation (technological)--Education and training industry--United States
SNIPER No.: 2015/00090
Author: Husovec, Martin
Added author: Max-Planck-Institut für Immaterialgüter- und Wettbewerbsrecht
Title: The end of (meta) search engines in Europe? [electronic resource]
Source: Max Planck Institute for Innovation and Competition Research Paper. No. 14-15, 8 July
2014.
Summary: Consequences of the CJEU landmark decision in Innoweb C-202/12 -- meta search
engines likely to infringe the database right of indexed websites if they constitute a protectable
subject matter -- evolution of meta search engines -- search engine business models -- revenue
raising -- European sui generis right -- investment in non-original subject matter -- recognising the
distinction between obtaining and creating data -- scope of database rights -- data-scraping -details of lawsuits filed by Ryanair against meta search engines in numerous countries since 2001
-- right-to-consult a database -- limitations of Innoweb decision.
Subject: Database rights--Europe
Subject: Copyright--Europe
SNIPER No.: 2013/02885
Author: Choi, Yo Sop
Author: Youn, Sang Youn
Title: The enforcement of merger control in China: a critical analysis of current decisions by
MOFCOM
Source: IIC : International Review of Intellectual Property and Competition Law. Vol. 44 No. 8,
December 2013, pp. 948-972.
Summary: Introduction of a competition law in China -- historical development of competition
policy -- prevention of monopolies -- establishment of agencies to enforce new law -- substantive
test for merger appraisal -- trend towards structural remedies to prevent monopolies -- analysis of
merger cases -- Coca-Cola/Huiyuan merger prohibited -- Google/Motorola merger allowed -- aim of
competition policy is to decide whether a merger is suitable for the socialist market economy -protectionism -- conflict between competition law enforcement and industrial policy.
Subject: Competition (Economics)--China
Subject: Competition law--China
Subject: Mergers and takeovers--law and legislation--China
SNIPER Bulletin – May 2015
Page 17 of 63
SNIPER No.: 2015/00322
Author: Daubin, Béatrice
Title: EU outlines vision to fight fakes
Source: Intellectual Property Magazine. October 2014, p. 37.
Summary: EU action plan to prevent commercial infringement of IP rights -- prevention of revenue
flow to counterfeiters -- online counterfeiting -- EU likely to legislate against third countries.
Subject: Electronic commerce--Europe
Subject: Counterfeiting--Europe
Subject: Intellectual property infringement--Europe
SNIPER No.: 2015/00094
Author: Drexl, Josef
Added author: Max-Planck-Institut für Immaterialgüter- und Wettbewerbsrecht
Title: The European Unitary Patent System: on the 'unconstitutional' misuse of conflict-of-law
rules [electronic resource]
Source: Max Planck Institute for Innovation and Competition Research Paper. No. 15-01, 1
January 2015.
Summary: Spain has challenged the conformity of the Unitary Patent Protection regulation with
primary EU law in the CJEU -- claim that the UPP regulation cannot implement unitary patent
protection under Article 5(3) -- opinion by the Advocate General, delivered in November 2014 that
member states are obligated to adhere to the UPC agreement -- paper questions the Advocate
General's rationale -- suggestion that the UPP contravenes the principle of democracy,
circumvents fundamental rights of citizens and denies necessary judicial protection based on rule
of law -- development of UPP has a long history -- conflict of law rule included in UPP regulation to
limit the jurisdiction of CJEU on patent law -- claims that the UPC favours patent holders over
users and the general public -- political decision to remove the CJEU as the court of last instance
in patent protection cases.
Subject: Conflict of laws--Europe
Subject: Patent owners' rights--Europe
Subject: Legal jurisdiction--Europe
SNIPER No.: 2014/02210
Author: Swann, Jerre B.
Title: The evolution of trademark economics: from the Harvard school to WIPO 2013: as
sheparded by Inta and the Trademark Reporter
Source: Trademark Reporter. Vol. 104 No. 5, September-October 2014, pp. 1132-1140.
Summary: Eighty-year trade mark economics debate between the Harvard and Chicago schools -trade mark monopolies -- unlimited competition -- use of advertising as brand protection -- WIPO
report on brand reputation and image.
Subject: Trade marks--economics--United States
Subject: Competition (Economics)--United States
SNIPER Bulletin – May 2015
Page 18 of 63
SNIPER No.: 2015/00205
Author: Malaquias, Pedro
Title: Exhaustion without exasperation: intellectual property, parallel imports and border measures
Source: Queen Mary Journal of Intellectual Property. Vol. 5 No. 1, January 2015, pp. 87-94.
Summary: Overview of conference papers -- Football Association Premier League v QC Leisure
and Karen Murphy v Media Protection Services -- economic aspects of licensing -- implications of
Usedsoft v Oracle on software distribution -- parallel importation of pharmaceuticals -- international
exhaustion rule -- implied license doctrine -- trade mark exhaustion law -- permissible repair
doctrine -- in rem actions -- border regulation obligations under TRIPS.
Subject: Centre for Intellectual Property and Information Law: Spring Conference (2014:
Cambridge, United Kingdom)
Subject: Parallel importing--Europe
Subject: Trade mark licensing--Europe
Subject: Trade mark owners' rights--Europe
SNIPER No.: 2015/00315
Author: Parker, Scott
Author: Johnson, Gillian
Title: Experimental use exemptions
Source: Intellectual Property Magazine. October 2014, pp. 21-23.
Summary: Amendments to UK Patents Act to align it with other EU countries -- statutory
exemptions to undertaking clinical trials -- Monsanto v Stauffer interlocutory decision -- definition of
'experimental purposes' -- experiments must have a direct connection to the subject matter of the
invention -- narrow interpretation of Bolar exemption -- impact of the new amendments -interpretation of the guidelines -- third-party manufacturing of pharmaceuticals -- running clinical
trials during transition period between national laws and the inception of the UPC.
Subject: Research and development--law and legislation--United Kingdom
Subject: Experimental use (Patents)--United Kingdom
Subject: Patent infringement--pharmaceutical Industry
SNIPER No.: 2015/00318
Author: Chatterton, Edward
Author: Jebbitt, Ian
Title: Falling foul of China's trademark system
Source: Intellectual Property Magazine. October 2014, pp. 27-28.
Summary: Problem of piracy due to first-to-file system -- question of filing a national application or
an international one in China -- international registration of a trade mark does not necessarily
provide protection in China -- undertaking pre-clearance searches -- Chinese classification system
also contains sub-classes -- examination of non-standard items.
Subject: Piracy--China
Subject: Trade mark applications--China
SNIPER Bulletin – May 2015
Page 19 of 63
SNIPER No.: 2015/00324
Author: McIlraith, Gary
Title: The fight against luxury counterfeits
Source: Intellectual Property Magazine. October 2014, pp. 39-40.
Summary: LVMH Moët Hennessy vs eBay -- sale of counterfeit goods via the Internet -- adverse
economic effects of black market retailers -- rise in worldwide trade in counterfeit goods -- damage
to genuine brands -- effective brand protection strategies -- strategies for brand protection.
Subject: Luxury goods
Subject: Counterfeiting
SNIPER No.: 2015/00308
Author: Riaz, Henna
Title: Fines for vines?
Source: Intellectual Property Magazine. October 2014, p. 10.
Summary: UK Premier League crackdown on illegal videoing and posting of matches -unauthorised use of copyright material -- protection of contracts with TV stations -- damage to
revenue streams caused by illegal downloads -- policing illegal activity difficult due to large number
of posts -- monitoring use of social media -- action only likely to be taken against the serial
offenders.
Subject: F.A. Premier League
Subject: Major sporting events--United Kingdom
Subject: User-generated content--tourism and recreation industry--United Kingdom
Subject: Copyright infringement--tourism and recreation industry--United Kingdom
Subject: Internet--tourism and recreation industry--United Kingdom
SNIPER No.: 2013/02883
Author: Roffe, Pedro
Title: Free Trade Agreements and the Americas
Source: IIC : International Review of Intellectual Property and Competition Law. Vol. 44 No. 8,
December 2013, pp. 932-942.
Summary: MPI declaration on provisions for IP in bilateral and regional trade agreements -equality of intellectual property rules for all parties to an agreement -- difficulty for Latin American
countries to comply with all obligations in agreements -- lack of transparency in negotiations -case study highlighting problems with the US-Peru FTA.
Subject: International intellectual property law
Subject: International trade--treaties
SNIPER Bulletin – May 2015
Page 20 of 63
SNIPER No.: 2014/02182
Author: Al Sultani, Saba
Author: Deans, Rob
Title: GCC trade mark law coming soon
Source: WIPO Magazine. No. 5, October 2014, pp. 37-40.
Summary: Draft law covering the six states of the Gulf Cooperation Council -- single set of
provisions, not a single registration system across all states -- GCC Trade Cooperation Committee
has the power to interpret the law -- non-traditional marks -- multi-class filings -- examination and
opposition -- well-known marks -- exclusivity -- trade mark infringement -- seizure of infringing
goods.
Subject: Trade mark systems--Middle East
Subject: Trade marks--law and legislation--Middle East
SNIPER No.: 2015/00116
Author: Maskus, Keith E. (Keith Eugene)
Author: Saggi, Kamal
Added author: International Centre for Trade and Sustainable Development
Added author: World Economic Forum
Added author: E15 Expert Group on Trade and Innovation
Title: Global innovation networks and their implications for the multilateral trading system
[electronic resource]
Source: E15 Initiative Think Piece. December 2013.
General Note: "The E15 Initiative - strengthening the global trade system".
Summary: Establishment of research and development facilities within multinational enterprises -policies for technology transfer from research institutions to private enterprise -- rise in investment
in research facilities -- patent applications with inventors from one country and applicants from
another -- developing countries -- World Trade Organisation regulations -- research under GATS
agreements -- research grants -- technology transfer to developing countries.
Subject: Technology transfer
Subject: Innovation (Technological)
Subject: International trade
SNIPER No.: 2015/00258
Author: Wu, Katrina
Title: The Google Art Project: an analysis from a legal and social perspective on copyright
implications
Source: Journal of the Patent and Trademark Office Society. Vol. 96 No. 4, 2014, pp. 514-535.
SNIPER Bulletin – May 2015
Page 21 of 63
Summary: Four major stakeholders in the Google Art Project, the artist/creator,
museum/institution, general public and Google -- licensing and copyright issues with curating
artwork online -- Google negotiates contracts with museums, not the Artists Rights Society (ARS) - artists represented by the ARS are not included in the Google Art Project -- costs and benefits of
participating in the Art Project -- increase public access to art works -- onus of copyright clearance
is placed on museums -- digital reproduction of high quality images -- fair use defence -- Google
pursuing a defensive legal strategy with the Art Project --modern and contemporary art missing
from project because of length of copyright protection.
Subject: Copyright--culture and entertainment industry
Subject: Carriage service providers--liability
SNIPER No.: 2015/00317
Author: Lee, Davina
Title: Great expectations: the amended Trademark Law in China
Source: Intellectual Property Magazine. October 2014, p. 26.
Summary: Opportunity to file applications electronically -- multiple class applications -- speed of
examinations -- trade mark opposition -- amending description of goods.
Subject: Trade mark examination--China
Subject: Trade mark systems--China
SNIPER No.: 2014/02211
Author: Jay, E. Deborah
Title: He who steals my good name: likelihood-of-confusion surveys in TTAB proceedings
Source: Trademark Reporter. Vol. 104 No. 5, September-October 2014, pp. 1141-1182.
Summary: Likelihood of confusion precedent set In re E.I. du Pont de Nemours & Co. -- 13 points
known as the DuPont factors -- use of consumer surveys to prove or rebut consumer confusion -expert testimony -- established survey formats in Union Carbide v. Ever-Ready and SquirtCo v.
Seven-Up -- use of open and closed ended survey questions -- use of test and control stimuli -ability of surveys to measure likelihood of confusion -- examples of cases using consumer surveys
-- evaluating competing surveys.
Subject: Confusing similarity--case law--United States
Subject: Expert witnesses--United States
Subject: Market research--United States
Subject: Evidence--case law--United States
SNIPER No.: 2013/02878
Author: Correa, Carlos María
Title: High costs, negligible benefits from intellectual property provisions in FTAs
Source: IIC : International Review of Intellectual Property and Competition Law. Vol. 44 No. 8,
December 2013, pp. 902-905.
SNIPER Bulletin – May 2015
Page 22 of 63
Summary: Use of trade agreements to protect intellectual property rights -- minimal success in
gaining higher protections in agreements with developed countries -- take-or-leave it approach
towards developing countries seeking market access -- significant problems with TRIPS-plus for
developing economies -- access to medicines -- Dominican Republic-Central American Free Trade
Agreement (CAFTA-DR) need to take account of human rights -- Max Planck Principles for
Intellectual Property Provisions in Bilateral and Regional Agreements.
Subject: Human rights
Subject: Intellectual property--treaties
Subject: International trade--treaties
Subject: Pharmaceuticals--treaties
SNIPER No.: 2015/00319
Author: Conway, Michael
Title: Highly charged
Source: Intellectual Property Magazine. October 2014, pp. 29-30.
Summary: Settlement of Tesla Motors case against Zhan Baosheng -- trade mark squatting
prevalent in China - first-to-file system -- strict examination of applications -- profits from trade mark
squatting -- difference between registration by a party with a contractual connection to the brand
and those bad faith registrations by unconnected third parties -- registration in good faith -- new
laws to address issue of filing in bad faith.
Subject: Brand management--China
Subject: Trade mark entitlement--China
SNIPER No.: 2015/00387
Author: Stembridge, Bob
Title: How China claimed the global patent throne
Source: Intellectual Property Magazine. February 2015, pp. 38-40.
Summary: China top of the world list of patent filers -- economy changing from a manufacturing to
an innovation base -- using IP as part of a business strategy -- questions raised over the quality of
Chinese patents -- increase in filings for utility model patents.
Subject: Patent filing--statistics--China
SNIPER No.: 2015/00397
Author: Ranck, Jeffrey L.
Title: How outsourcing made Microsoft a patent powerhouse
Source: Intellectual Property Magazine. February 2015, pp. 72-73.
Summary: Microsoft reengineered it's IP department to concentrate on achieving business goals
and outsourced the protection side to other legal companies -- in-house drafting and prosecution
service --paralegal and filing services provided to external lawyers -- identifying a value chain for
outsourced vendors -- decision to outsource paralegal and administrative; technical and legal
services -- developing best practice.
Subject: Patent attorneys--information technology industry--United States
Subject: Outsourcing--information technology industry--United States
SNIPER Bulletin – May 2015
Page 23 of 63
SNIPER No.: 2014/00714
Author: Barnett, Griffin M.
Title: ICANN morality standards and the new gTLDs: a comparative analysis of morality in
international trademark law in the Internet age
Source: Trademark Reporter. Vol. 103 No. 5, 2013, pp. 1214-1239.
Summary: Limited public interest objection to a gTLD application -- specific grounds for an
objection -- grounds for objection and refusal under the Paris Convention and TRIPS -examination of national laws relating to the public interest and morality -- guidance provided by
ICANN on limited public interest objection -- offensive terms cannot be registered as a gTLD -standards for gTLDs.
Subject: Domain name registration
Subject: Internet
Subject: Ethics
SNIPER No.: 2014/01652
Author: Xu, Fei
Title: Identification of embedded advertising in TV programs and determination of false advertising
and unfair competition
Source: China Intellectual Property: comprehensive IP report on China. Vol. 60 No. 3-4, MarchApril 2014, pp. 42-46.
Summary: Beijing Kela Diamond Network Technology Co. Ltd vs China Syndication Entertainment
Co. Ltd, and Shanghai Zhuomei Jewelry Co. Ltd. -- use of Kela's product to advertise Zhuomei
brand -- lack of Chinese case law on embedded advertising -- determining whether product
placement in a TV show constitutes embedded advertising -- proof of a collaborative agreement
between a business and a producer -- consumers must be able to discern an advertisement.
Subject: Product placement--case law--China
Subject: Television broadcasts--China
Subject: Passing-off--China
SNIPER No.: 2014/01281
Author: Dagne, Teshager W.
Title: The identity of geographical indications and their relation to traditional knowledge in
intellectual property law
Source: IDEA: the Intellectual Property Law Review. Vol. 54 No. 2, 2014, pp. 255-284.
Summary: Geographical indications (GIs) included in TRIPS -- protection of GIs in trade
agreements -- distinguishing GIs from trade marks -- place-based nature of GIs -- establishing
collective rights over traditional knowledge -- ownership of GIs not the same as owning a trade
mark -- GIs recognised as public property -- advantages of a having a GI rather than a trade mark.
Subject: Geographical indicators
Subject: Traditional knowledge
SNIPER Bulletin – May 2015
Page 24 of 63
SNIPER No.: 2015/00086
Author: Geiger, Christophe
Added author: Max-Planck-Institut für Immaterialgüter- und Wettbewerbsrecht
Title: Implementing intellectual property provisions in human rights instruments: towards a new
social contract for the protection of intangibles [electronic resource]
Source: Max Planck Institute for Innovation and Competition Research Paper. No. 14-10, 25 June
2014.
General Note: Also published in: Geiger, C. (ed.), Research Handbook on Human Rights and
Intellectual Property, Cheltenham, UK/Northampton, MA, Edward Elgar, 2014
Summary: Majority of human rights instruments lack a clear IP clause -- paper based on empirical
study of 200 national constitutions and European treaties on human rights -- success of open
source movement -- multiplication of IP rights -- public perception and acceptance of IP rights -many domestic constitutions do not mention IP rights -- balanced IP protection contained under
UDHR and ICESCR -- safeguarding creators' rights -- judicial interpretation of IP clauses -fundamental rights and public interest limits of IP protection -- TRIPS -- proposals for future IP
clauses including changes to Article 17 or IP protection under the Freedom of Arts and Sciences or
under the Freedom of Expression and Information of the EU Charter.
Subject: Human rights--law and legislation
Subject: Intellectual property--social aspects
SNIPER No.: 2014/01653
Author: Ling, Zongliang
Title: In pursuit of rationalized balance between registration and use in trademark enforcement:
analysis on trademark infringement dispute of Lacoste Co., Ltd. v. Shanghai Europe Crocodile
Stationery Co., Ltd. and Shanghai HengFuLi Trading Co., Ltd.
Source: China Intellectual Property: comprehensive IP report on China. Vol. 60 No. 3-4, MarchApril 2014, pp. 47-51.
Summary: Protection of an unused registered trade mark -- dispute over use of a crocodile design
-- case dismissed at first instance trial -- Lacoste appeal to Shangai Higher People's Court
dismissed -- use of crocodile logo on stationery in a different class to Lacoste trade mark.
Subject: Trade mark infringement--case law--China
Subject: Confusing similarity--China
SNIPER No.: 2015/00204
Author: Zappalaglio, Andrea
Title: International exhaustion of trade marks and parallel imports in the US and the EU: how to
achieve symmetry?
Source: Queen Mary Journal of Intellectual Property. Vol. 5 No. 1, January 2015, pp. 68-86.
SNIPER Bulletin – May 2015
Page 25 of 63
Summary: Using the Trans-Atlantic Trade and Investment Partnership (TTIP) to manage parallel
imports -- exhaustion case law in USA and Europe -- EU has narrower approach to parallel imports
than US -- US adopted territorial exhaustion in 1923 -- material quality differences rule -Community-wide exhaustion rule in Europe bans all parallel imports from outside the EU -strengths and weaknesses of EU and US approaches to PI -- suggested reforms to EU law to open
the market to PI -- advantages of international exhaustion -- common control doctrine -- Kirtsaeng
v. John Wiley & Sons Inc case relating to first sale doctrine -- new case law in the EU has proved
unsatisfactory -- Zino Davidoff and Levi Strauss v Tesco Stores Ltd on requirement of consent -introducing a sui generis model of exhaustion limited to US/EU parallel trade.
Subject: Parallel importing--United States
Subject: Parallel importing--Europe
Subject: Trade mark exhaustion--Europe
Subject: Trade mark exhaustion--United States
SNIPER No.: 2015/00077
Author: Kashcheeva, Mila
Author: Wunsch-Vincent, Sacha
Author: Zhou, Hao
Added author: World Intellectual Property Organization
Title: International patenting strategies of Chinese residents: an analysis of foreign-oriented
patent families [electronic resource]
Source: WIPO Economic Research Working Paper. No. 20, September 2014.
Summary: Paper presents findings of a WIPO study into Chinese international patenting strategies
1970-2012 -- large volume of utility model filings -- government subsidies and the introduction of
pro-patent legislation led to increase in patent applications in China -- raised awareness of
strategic value of patents -- international filings increased since 2000 -- most foreign patent families
related to inventions -- comparison to Germany, Japan and USA -- digital communication growth -comparison of international filings between Huawei and ZTE -- patent filing strategies -- USPTO
main target for Chinese international filings -- use of Patent Co-operation Treaty.
Subject: International Patent Applications--China
Subject: Innovation (Technological)--China
SNIPER No.: 2015/00111
Author: Seuba Hernández, Xavier
Added author: ICTSD Programme on Innovation, Technology and Intellectual Property
Added author: International Centre for Trade and Sustainable Development
Title: International regulation of pharmaceuticals: codification by means of legal transplantation
[electronic resource]
Source: Information Note (International Centre for Trade and Sustainable Development). July
2014.
SNIPER Bulletin – May 2015
Page 26 of 63
Summary: Interaction between different branches of international and national laws regulating the
life of pharmaceuticals -- harmonisation of rules and regulations for medicines -- intellectual
property rights in free trade agreements -- some countries are promoting the adoption of
increasingly demanding pharmaceutical standards -- developing countries adopting the standards
and regulations of developed countries -- high level of intellectual property protection in regulatory
transfer -- dispute settlement mechanisms in trade agreements -- monitoring IP and technical
standards for medicines in other countries under trade agreements -- protection for geographical
indicators -- promotion of innovation and competition.
Subject: Agreement on Trade-Related Aspects of Intellectual Property Rights (1994 April 15)
Subject: International Centre for Trade and Sustainable Development
Subject: International trade--pharmaceutical industry
Subject: Harmonisation of laws
Subject: International intellectual property law
SNIPER No.: 2015/00203
Author: Wahyuningtyas, Sih Yuliana
Title: Interoperability for data portability between social networking sites (SNS): the interplay
between EC software copyright and competition law
Source: Queen Mary Journal of Intellectual Property. Vol. 5 No. 1, January 2015, pp. 46-67.
Summary: European General Data Protection Regulation (GDPR) introduced the right to data
portability -- transmission of data from one platform to another -- creation of a common standard -role of competition law in promoting innovation -- entitlement to rights to data portability -- CJEU
interpretation of the scope of protection in SAS Institute Inc. v World Programming Ltd. -protection for application program interfaces (APIs) -- mandatory disclosure under competition law
--two forms of reverse engineering to study functionality -- increasing consumer choice.
Subject: Computer-related inventions
Subject: Competition law
Subject: Standards (technical)
SNIPER No.: 2015/00089
Author: Cremers, Katrin
Author: Gaessler, Fabian
Author: Harhoff, Dietmar
Author: Helmers, Christian
Added author: Max-Planck-Institut für Immaterialgüter- und Wettbewerbsrecht
Title: Invalid but infringed?: an analysis of Germany's bifurcated patent litigation system
[electronic resource]
Source: Max Planck Institute for Innovation and Competition Research Paper. No. 14-14, 13
September 2014.
SNIPER Bulletin – May 2015
Page 27 of 63
Summary: Patent validity and infringement are independently decided by different courts -expense of challenging validity -- legal framework with the bifurcated patent litigation system -stays of proceedings -- effect of divergent decisions on infringement and validity -- argument that
bifurcation acts as a filter to deter challenges that have a low probability of success -- analysis of
data on infringement actions from regional courts and invalidity from federal courts from 2000 to
2008 -- frequency of invalid but infringed cases -- results indicated that the bifurcated system
favours the patent holder.
Subject: Patent validity--Germany
Subject: Patent infringement--Germany
SNIPER No.: 2015/00136
Author: Powell, Nikki
Title: The IP Act 2014 and other changes to IP law explained
Source: Intellectual Property Magazine. November 2014, pp. 18-19.
Summary: Key changes make to UK patent, design and copyright law in the UK -- home copying
legalised -- limited amounts of copyright material can now be used for parody, caricature or
pastiche -- no formal definition of "fair dealing" -- blatant copying of a registered design now a
criminal offence -- designer now owns the design not the commissioner of the design -introduction of "good faith" infringement defence -- definition of unregistered design right -introduction of UPC -- either website address or patent number to appear on patented products -expansion of UKIPO Patent Opinions Service -- harmonisation of IP rights.
Subject: Law--reform--United Kingdom
SNIPER No.: 2015/00388
Author: Duke, Tom
Title: IP and SMEs in China
Source: Intellectual Property Magazine. February 2015, p. 41.
Summary: Bilateral trade between China and the UK continues to increase -- importance of
securing the relevant IP protection in China -- using Patent Attorneys to take advantage of market
opportunities -- cooperation programs between the UK and China to assist SMEs entering the
Chinese market -- increased use of the EU IPR SME Helpdesk via email and phone hotlines.
Subject: International Trade
Subject: International Trade mark applications
SNIPER No.: 2015/00143
Author: Gatto, James G.
Title: IP protection for games
Source: Intellectual Property Magazine. November 2014, pp. 36-37.
Summary: Many options available under IP law to protect games -- common misconceptions have
resulted in lack of IP protection for games developers -- software applications and technology
platforms are patentable -- content, source code and other creative aspects are copyrightable -name and brand elements can be protected by a trade mark -- perception about length of time to
obtain a patent -- patent invalidation -- cost of obtaining a patent -- patent litigation -- perception
that improvements on existing inventions are not patentable -- copyright can deter game cloning -obtaining advice from an IP attorney.
SNIPER Bulletin – May 2015
Page 28 of 63
Subject: Multimedia works--patentability
Subject: Electronic copyright
Subject: Trade mark registrability--information technology industry
SNIPER No.: 2015/00150
Author: Paranavitane, Varuni
Title: Is DNA patentable?: a tale of three continents
Source: Intellectual Property Magazine. November 2014, pp. 56-57.
Summary: Contrast between Federal Court of Australia and US Supreme Court decisions in
D'Arcy v Myriad Genetics Inc -- Mayo v Prometheus -- artificially created DNA sequences are
patentable because they do not occur naturally -- USPTO guidelines on patent eligibility following
Myriad and Mayo -- theoretically naturally occurring DNA sequences are patentable in Europe and
UK providing they satisfy other patentability conditions.
Subject: Gene patents--United States
Subject: Gene patents--United Kingdom
Subject: Gene patents--Europe
Subject: Gene patents--Australia
SNIPER No.: 2015/00131
Author: Korenberg, Alexander
Author: Venner, Julia
Title: Is the UPC all hot air?
Source: Intellectual Property Magazine. November 2014, p. 11.
Summary: Doubts over effectiveness of UPC -- mandatory jurisdiction over unitary and standard
patents -- Spain challenging legality of UP before the CJEU -- ratification by 13 countries required
before agreement can come into force -- ease of access to patent system -- cost savings -bifurcation proceedings.
Subject: Patent systems--Europe
SNIPER No.: 2014/01655
Author: Duan, Xiaomei
Title: Joint ownership of trademarks and judicial practice: an analysis with comment on "BEIRENTSK and Image" case
Source: China Intellectual Property: comprehensive IP report on China. Vol. 60 No. 3-4, MarchApril 2014, pp. 56-59.
Summary: Refusal of a joint application by BEIREN Group and Fuzhou Huangjing Printing
Machinery Co for registration of BEIREN-TSK trade mark -- registration of a combination trade
mark -- TRAB reviewed the case -- during period of agreement between the two companies the
joint trade mark would be used.
Subject: Trade mark ownership--case law--China
Subject: Business collaboration--China
SNIPER Bulletin – May 2015
Page 29 of 63
SNIPER No.: 2014/01279
Author: Landau, Michael, 1953Title: Joint works under United States copyright law: judicial legislation through statutory
misinterpretation
Source: IDEA: the Intellectual Property Law Review. Vol. 54 No. 2, 2014, pp. 157-224.
Summary: Concept of ownership of a work -- interpretation of statutes under the Copyright Act -joint works doctrine -- history of joint works cases -- joint works under section 101 of the 1976
Copyright Act -- "12th Street Rag" doctrine -- "independently copyrightable" requirement -Childress v. Taylor case standards -- independent contributions must be copyrightable -- overview
of cases relating to joint works -- modern interpretation of the statute -- definition of "intent" to be
joint owners -- collaborators' rights.
Subject: Copyright--case law--United States
Subject: Business collaboration--culture and entertainment industry--United States
SNIPER No.: 2015/00381
Author: Gisbey, Ben
Author: Thompson, Dorothea
Title: Judicial review of UK private copying exception
Source: Intellectual Property Magazine. February 2015, pp. 24-25.
General Note: See also 2015/00146 "Musical Chairs"
Summary: Introduction of exception for private copying in UK -- copying onto different media for
individual and immediate family use now allowed -- judicial review sought by the Musicians' Union
and others claiming exception contravened Article 5(2)(b) of the EU Directive -- compensation
scheme not included in UK exception -- UK government claim that compensation factored in at
point of sale -- difference between UK exception and those of other EU member states relates to
levy systems -- questions raised over compliance with European law.
Subject: Fair use (Copyright)--United Kingdom
Subject: Copyright levies--United Kingdom
SNIPER No.: 2014/01170
Author: Biggins, Brice Lauer
Title: Keep it American: preventing foreign acquisition of federally funded intellectual property
Source: Journal of the Patent and Trademark Office Society. Vol. 96 No. 1, 2014, pp. 76-91.
Summary: National security issues when IP rights are sold to foreign entities -- amending the
Bayh-Dole Act to prohibit sale of federally funded IP to foreign investors -- Committee on Foreign
Investments in the United States (CFIUS) -- protection of critical infrastructure -- applying secrecy
orders to patent applications -- regulating federally-funded inventions under Bayh-Dole Act -Invention Secrecy Act -- exercising march-in rights.
Subject: Secret patents--United States
Subject: Patent ownership--United States
Subject: Patent assignment--United States
Subject: Technology transfer--United States
SNIPER Bulletin – May 2015
Page 30 of 63
SNIPER No.: 2014/01667
Author: Nie, Kevin
Author: Chen, Jessie
Title: Landmark IP cases of China in 2013
Source: China Intellectual Property: comprehensive IP report on China. Vol. 61 No. 5-6, May-June
2014, pp. 26-55.
General Note: Specific details of over 200 landmark IP cases in China during 2013 can be
accessed through the China IP website, microblog, and WeChat
Summary: 26 examples of IP case law in 2013 -- preliminary injunctions -- determining irreparable
harm -- patent infringement -- protection of innovation -- protection of well-known trade marks -generic names of trade marks -- functionality of the three dimensional trade mark -- trade mark
similarity -- trade mark refusal -- unfair competition -- unauthorised use of another's business name
-- consumer confusion -- embedding another's mark in product information in e-commerce -- use of
unregistered abbreviated titles -- court jurisdiction over contract disputes -- determining
compensation for infringement -- parallel imports -- false or misleading advertising -- real time
network broadcasting -- copyright infringement -- reproduction of literary works -- infringement by a
webpage snapshot providing service -- personality rights -- protection of architectural designs -determination of damages by the courts -- liability of software and network service providers -group buying websites -- use of photographs without permission -- behavioural protection orders -disclosure of trade secrets -- role of customs in protecting IP.
Subject: Intellectual property--case law--China
SNIPER No.: 2015/00145
Author: Dalton, Peter
Title: Levelling up
Source: Intellectual Property Magazine. November 2014, pp. 41-42.
Summary: Changes in the response to video gaming piracy -- cost to game publishers in lost
revenue -- difficult to enforce IP rights against pirates with the advent of file sharing -- hardware
measures to prevent users running pirated games on their machines -- publishers use Digital
Rights Management software to prevent illegal copying -- publishers seeking to use incentivisation
rather than prevention in future -- providing service delivery around games including updates post
launch -- alternative business models including freemium, providing the base game for free but
charging for content and bonuses.
Subject: Multimedia works--management--United Kingdom
Subject: Piracy
SNIPER No.: 2014/00711
Author: Maeyaert, Paul
Author: Muyldermans, Jeroen
Title: Likelihood of confusion in trademark law: a practical guide based on the case law in
community trade mark oppositions from 2002 to 2012
Source: Trademark Reporter. Vol. 103 No. 5, 2013, pp. 1032-1115.
SNIPER Bulletin – May 2015
Page 31 of 63
Summary: Uniform Community Trade Mark system in the EU -- jurisprudence defining "likelihood
of confusion" -- overview of general guidelines -- registering a CTM -- established case law on
likelihood of confusion -- likelihood of association defines the scope of likelihood of confusion -perception of a trade mark by an average consumer -- use of sub-brands by the clothing industry -defining 'relevant public' -- Nice Agreement -- assessing similarity -- establishing connection
between goods -- deciding similarity between trade marks -- examples of European case law on
confusing similarity -- assessment of phonetic similarities of marks -- landmark Thomson Life case
-- complex marks.
Subject: Confusing similarity--case law--Europe
Subject: Trade mark infringement--Europe
SNIPER No.: 2015/00088
Author: Grosse Ruse-Khan, Henning, 1974Added author: Max-Planck-Institut für Immaterialgüter- und Wettbewerbsrecht
Title: Litigating intellectual property rights in investor-state arbitration: from plain packaging to
patent revocation [electronic resource]
Source: Max Planck Institute for Innovation and Competition Research Paper. No. 14-13, 8 July
2014.
General Note: Also published as Fourth Biennial Global Conference of the Society of International
Economic Law (SIEL) Working Paper No. 2014-21.
Summary: International Investment Agreements (IIAs) cover IP as a form of protected investment
-- most favoured nation (MFN) principle -- explanation of cases that raise questions on overlapping
jurisdictions -- Philip Morris Asia vs. Australia case over plain packaging of tobacco products -case brought under the Australia-Hong Kong Bilateral Investment Treaty, Art. 10 -- TRIPS
compliance -- tobacco exporting countries initiated WTO dispute settlement proceedings against
Australia -- Eli Lily vs Canada case under Ch. 11 of the North American Free Trade Agreement -invalidation of patents -- promise doctrine -- utility requirement -- Canada's defence not yet
publically available -- Eli Lily allege breaches of international IP law -- AHS vs Niger case over
termination of an airport services concession -- arbitration proceedings before the ICSID -- decision
of expropriation against Niger and damages awarded -- infringement of IP rights -- IIA tools used to
litigate international IP rules in investor-state arbitration -- fair and equitable treatment notion -protection of legitimate expectations -- rights to regulate -- investor expectations -- obligations
under international treaties -- use of umbrella clauses -- burden of proof under safeguard clauses
Subject: International law--case studies
Subject: Intellectual property--treaties
Subject: International trade--treaties
Subject: Intellectual property litigation
SNIPER No.: 2014/02178
Title: Making international IP law: an interview with Francis Gurry
Source: WIPO Magazine. No. 5, October 2014, pp. 2-6.
Summary: Focus on innovation and IP -- difficulties in obtaining international agreements -ratification of Beijing and Marrakesh treaties -- broadcasting rights -- establishing a global digital
content marketplace -- negotiations to achieve a Design Law treaty -- protection of traditional
knowledge -- geographical indicators -- securing international protection for IP -- international
cooperation.
SNIPER Bulletin – May 2015
Page 32 of 63
Subject: Gurry, Francis--interviews
Subject: Intellectual property systems
Subject: Intellectual property--trends
SNIPER No.: 2014/02133
Author: Ventose, Eddy D. (Eddy David), 1976Author: Harris, Terry
Title: Managing the "risky" business of patenting in the United States
Source: European Intellectual Property Review. Vol. 36 No. 12, 2014, pp. 762-777.
Summary: Patent eligibility of medical diagnostic methods -- patenting inventions relating to risk -inclusion of business methods in an application -- inconsistent application of the law -- CLS Bank
International v Alice Corp Pty Ltd decision on computerised trading platforms -- increase in number
of business risk patents issued since 2006 -- patent-eligible subject matter under US law -development of precedent for patent-eligibility -- Bilski v Kappos -- test for determining patentability
-- patentability of abstract ideas -- machine or transformation test -- patentability of algorithms -inconsistency in court decisions.
Subject: Computer-related inventions--United States
Subject: Business methods--case law--United States
SNIPER No.: 2015/00326
Author: Dowle, Chad
Author: Cothill, Shaun
Title: Mapping out brand development strategies
Source: Intellectual Property Magazine. October 2014, pp. 43-44.
Summary: Intellectual property law underdeveloped in Middle Eastern countries -- high cost of
trade mark registration in the Middle East -- registering trade marks in Arabic -- translating word
marks -- intellectual property laws are subject to Sharia and Islamic law and cultural restrictions -some Middle Eastern countries signatories to the Paris Convention -- care when using advertising
and promotional materials to prevent devaluation of brand.
Subject: Intellectual property rights--Middle East
Subject: Brand management--Middle East
SNIPER No.: 2013/02879
Author: Dreyfuss, Rochelle Cooper, 1947Title: The Max Planck principles as an aspect of global administrative law
Source: IIC : International Review of Intellectual Property and Competition Law. Vol. 44 No. 8,
December 2013, pp. 906-912.
Summary: Transnational regulation using treaties and conventions -- dispute settlement -legitimacy of administrative action -- impact of global administrative law on IP -- establishing
procedural norms -- international negotiations -- access to medications for developing countries -transparency in IP negotiations between countries.
Subject: International intellectual property law
Subject: International trade--treaties
SNIPER Bulletin – May 2015
Page 33 of 63
SNIPER No.: 2015/00334
Author: Durden, Jayne
Author: Mustafa, S. Farhan
Title: Maximising IP value through budget forecasting
Source: Intellectual Property Magazine. October 2014, pp. 76-77.
Summary: Determining cost-benefit value of IP assets -- understanding business strategy and
how each product fits in -- protecting IP -- accuracy of information -- IP cost strategy -- efficiency
assessments -- integrating cost forecasting with IP management systems.
Subject: Intellectual property management
SNIPER No.: 2015/00117
Author: Benavente, Daniela
Added author: International Centre for Trade and Sustainable Development
Added author: World Economic Forum
Added author: E15 Expert Group on Trade and Innovation
Title: Measurement of trade and innovation: issues and challenges [electronic resource]
Source: E15 Initiative Think Piece. July 2014.
General Note: "The E15 Initiative - strengthening the global trade system".
Summary: Need to update multilateral trading system in the internet era -- trade related aspects of
innovation -- measuring innovation -- tariffs and trade liberalisation -- voluntary and mandatory
implementation of standards -- causal relationship between IP rights and innovation -- collection of
data from copyright related industries -- statistical data -- data dissemination.
Subject: World Trade Organization
Subject: International trade--statistics
Subject: Innovation (Technological)
Subject: Intellectual property rights
SNIPER No.: 2015/00298
Author: Carson, Nigel
Author: Tam, Nelvin
Title: Metadata: the hidden evidence
Source: Asia IP: Protecting your Intellectual Assets. Vol. 7 No. 1, January 2015, pp. 37-38.
Summary: No set definition of metadata -- use in forensic investigations such as the ICAC
investigation into Barry O'Farrell and Nicholas Di Girolamo -- examples of the metadata evidence
trail -- metadata information useful in litigation cases.
Subject: Data forensics
Subject: Intellectual property rights
SNIPER Bulletin – May 2015
Page 34 of 63
SNIPER No.: 2014/02137
Author: Bindal, Saurabh
Title: The missing spear
Source: European Intellectual Property Review. Vol. 36 No. 12, 2014, pp. 802-806.
Summary: Determining the appropriate jurisdiction when a dispute is covered under more than
one piece of legislation -- Prevention of Money Laundering Act 2002 -- protection of IP under
TRIPS -- money laundering in IP cases -- Supreme Court ruled that later Money Laundering Act
should override earlier statutes.
Subject: Intellectual property law--India
Subject: Criminal law--India
Subject: Conflict of laws--India
SNIPER No.: 2015/00310
Author: Assim, Gary
Author: Kelly, Michael
Title: Monkeying around with selfies
Source: Intellectual Property Magazine. October 2014, p. 12.
Summary: Claim of copyright by photographer David Slater over a selfie taken by a macaque
monkey -- Wikimedia claimed that the photo was taken by a non-human so it could not be
protected by copyright -- US and UK law both state that the owner of a photographic image is the
person who created it -- recent amendment to US copyright regulations that exclude works
produced by nature, animals or plants -- question of creative input by the photographer in setting
up the conditions for the monkey to take the photo.
Subject: Copyright owners' rights
Subject: Artistic works--United States
Subject: Artistic works--United Kingdom
Subject: Moral rights
SNIPER No.: 2014/01282
Author: Mejías, Alejandro
Title: The multifactor test for trademark infringement from a European perspective: a path to
reform
Source: IDEA: the Intellectual Property Law Review. Vol. 54 No. 2, 2014, pp. 285-349.
Summary: Comparison between US and European tests for trade mark infringement -harmonisation of European trade mark law -- single registration to obtain a European-wide trade
mark -- role of precedent -- likelihood of confusion in Sabel v. Puma -- uniform application of EU
law without referencing national law -- three levels of trade mark protection in US under common,
state and federal law -- impact of the Lanham Act -- thirteen multifactor tests in US to determine
likelihood of confusion -- CJEU definition of average consumer -- assessing similarity of trade
marks -- word-picture rule of equivalence -- proximity of goods -- Nice classification.
Subject: Confusing similarity--Europe
Subject: Confusing similarity--United States
SNIPER Bulletin – May 2015
Page 35 of 63
SNIPER No.: 2015/00146
Author: Gisbey, Ben
Author: Thompson, Dorothea
Title: Musical chairs
Source: Intellectual Property Magazine. November 2014, p. 43.
General Note: See also 2015/00146 "Judicial review of UK private copying exception"
Summary: Introduction of an exception for private copying in the UK -- regulating consumer
copying in the music industry -- Hargreaves Review -- copying onto different media for individual
and immediate family use now allowed -- streaming, creating a mixtape and allowing others to
access a personal cloud remain illegal -- circumvention of technological protection measures
illegal.
Subject: Fair use (Copyright)--United Kingdom
Subject: Copyright levies--United Kingdom
SNIPER No.: 2015/00301
Author: Misra, Tanvi
Author: Anand, Dhruv
Title: 'Musical scales' in Indian Copyright Law: introducing the right to receive royalty (the R3
right) of the 'performer owner' in a song
Source: Asia IP: Protecting your Intellectual Assets. Vol. 7 No. 1, January 2015, p. 43.
Summary: Performers rights were reinforced when amendments were made to the Indian
Copyright Act in 2012 -- a performers' society established for each class of performer -- royalties to
be shared equally between performer and other owners of the copyright -- Indian Singers' Rights
Association (ISRA) first to be registered after the amendments -- protection against exploitation of
a singers' performance -- singers have a right to receive a royalty payment for their performance of
a song -- rights if a song is incorporated into a film -- infringement remedies -- unauthorised
reproduction of the performance.
Subject: Neighbouring rights--India
Subject: Copyright licensing--culture and entertainment industry--India
Subject: Copyright licensing societies--India
SNIPER No.: 2015/00152
Author: Vachanavuttivong, Darani
Author: Thean-ngarm, Yuwadee
Title: Myanmar: an emerging IP regime begins to take shape
Source: Intellectual Property Magazine. November 2014, pp. 62-63.
Summary: Outdated IP regime currently in existence in Myanmar -- problems with enforcing IP
rights -- Myanmar does not have an examination or trade mark search process -- reliance on
current Registration Act -- trade mark use is used to determine ownership of marks -- new draft IP
laws are under consideration -- 10th draft of the trade mark bill has been publicised, but the patent,
industrial design and copyright drafts have not -- confusingly similar marks -- protection for marks
is 10 years from date of application filing -- exclusive rights for mark owners -- use in good faith -cancellation for non-use for three consecutive years.
SNIPER Bulletin – May 2015
Page 36 of 63
Subject: Intellectual property systems--Myanmar
Subject: Trade marks--law and legislation--Myanmar
SNIPER No.: 2014/01168
Author: Getsinger, Andrew D.
Title: A new approach to combating the piracy of intellectual property: develop the rule of law and
increase the supply of legitimate goods
Source: Journal of the Patent and Trademark Office Society. Vol. 96 No. 1, 2014, pp. 30-55.
Summary: Anti-Counterfeiting Trade Agreement (ACTA) -- cost of copyright infringement -software piracy rates vary between countries -- piracy rates continue to climb despite international
agreements -- higher the cost of a product, more likely it is to be pirated -- developing countries
have weaker enforcement regimes -- impact of rule of law on piracy -- piracy higher where legal
goods are in short supply and are expensive to purchase -- regional coding for DVDs -- action by
IP rights owners -- international cooperation to enforce anti-piracy measures -- cost of enforcement
proceedings -- using the IMF and World Bank loans to secure compliance with IP enforcement
regimes.
Subject: Copyright enforcement--treaties
Subject: Copyright infringement
SNIPER No.: 2015/00392
Author: Freund, Bill
Title: New approaches to piracy protection
Source: Intellectual Property Magazine. February 2015, p. 49.
Summary: Limiting online piracy by focusing attention on the top few pages of search engine
results -- use of appropriate metrics -- futility of trying to eliminate all infringing links.
Subject: Piracy--culture and entertainment industry
Subject: Internet
Subject: Carriage service providers
SNIPER No.: 2015/00153
Author: Young, Joycia
Author: Parker, Jon
Title: New trademark law for the GCC
Source: Intellectual Property Magazine. November 2014, pp. 64-65.
Summary: Ambiguity of law within the Gulf Co-Operation Council (GCC) countries relating to
mandatory recordal -- resolution of some legal issues when new GCC Trademark Law signed into
law by the six member states -- benefits of recording licences or RUAs -- does not include a single
GCC-wide filing -- comparison of current and future licensing laws -- currently licenses can only be
recorded against registered trade marks -- proof of authority to use.
Subject: Trade mark licensing--Middle East
Subject: Trade marks--law and legislation--Middle East
SNIPER Bulletin – May 2015
Page 37 of 63
SNIPER No.: 2015/00309
Author: Daboul, Sharon
Title: Nissan races to 'Infiniti' with Eau Rouge trademark applications
Source: Intellectual Property Magazine. October 2014, p. 11.
Summary: Trade mark application for 'Eau Rouge' under automobiles approved in Japan and
currently being examined in the US -- Eau Rouge is also a famous corner on the Spa F1 Belgian
Grand Prix circuit -- 'L'Eau Rouge' registered as a community mark by le Circuit de Spa
Francorchamps in the EU -- Spa filed the application to register 'L'Eau Rouge' under vehicles one
week after Nissan sought the trade mark rights in Japan.
Subject: Trade mark registrability--manufacturing and processing industry
Subject: Trade mark infringement--manufacturing and processing industry--Europe
SNIPER No.: 2013/02882
Author: Hestermeyer, Holger P.
Title: The notion of "trade-related" aspects of intellectual property rights: from world trade to EU
law: and back again
Source: IIC : International Review of Intellectual Property and Competition Law. Vol. 44 No. 8,
December 2013, pp. 925-931.
Summary: Inclusion of IP rights under the 1994 WTO Agreement -- TRIPS -- difficulty amending
IP standards in international agreements.
Subject: International intellectual property law
Subject: International trade--treaties
SNIPER No.: 2015/00149
Author: Morgan, Gareth
Title: On second thoughts... (part one)
Source: Intellectual Property Magazine. November 2014, pp. 51-52.
General Note: First article in a series of two. See also: 2015-00181.
Summary: Second use medical patents -- generic pharmaceuticals -- AIPPI resolution -- indirect
infringement -- disadvantages of new resolution -- effects on patient health -- patient monopolies -generic substitution policies.
Subject: Swiss-type claims--pharmaceutical industry
Subject: Swiss-type claims--law and legislation
Subject: Patent owners' rights
SNIPER No.: 2015/00321
Author: McCarthy, Kelly P.
Title: Online wild west for fakes can be regulated
Source: Intellectual Property Magazine. October 2014, p. 36.
Summary: Difficulty of spotting counterfeits when shopping online -- use of online monitoring
programmes -- procedures for brand owners to request removal of counterfeits -- using trade
marks on social media.
SNIPER Bulletin – May 2015
Page 38 of 63
Subject: Electronic commerce
Subject: Counterfeiting
Subject: Trade marks--social aspects
SNIPER No.: 2015/00155
Author: Graham, Richard
Title: Out of time
Source: Intellectual Property Magazine. November 2014, pp. 68-70.
Summary: Landmark case of Cartier International AG and others vs BSKyB Limited and others -first time a brand owner had required an ISP to prevent websites offering counterfeit goods for sale
in the UK -- test case against ISPs -- challenge of enforcing rights online -- identification of the
primary infringer -- legal context of the case -- determination that the court had the jurisdiction to
make the trade mark infringement order -- four threshold conditions to be satisfied before order
could be granted -- restricted freedom of expression concerns -- ISP role in prevention of
infringement.
Subject: Trade mark infringement--case law--United Kingdom
Subject: Carriage service providers--case law--United Kingdom
Subject: Counterfeiting--fashion and design industry--United Kingdom
SNIPER No.: 2015/00389
Author: Adcock, Alan
Author: Siraprapha Rungpry
Title: Patent battle
Source: Intellectual Property Magazine. February 2015, pp. 42-44.
Summary: Establishing a sound litigation strategy to prove pharmaceutical infringement in
Thailand -- patent reviews -- using a cease and desist letter -- negotiating out-of-court settlements
ensuring effective protection and remedies -- specialised Thai court for IP cases -- patent
infringement actions can be either criminal or civil -- options for injunctions and Anton Piller orders - raising an infringement defence.
Subject: Patent infringement--Thailand
SNIPER No.: 2015/00302
Author: Lee, Victor S. C.
Author: Chen, Crystal J.
Title: Patent invalidated after confirming patent infringement not to overrule final judgment: IP
Court
Source: Asia IP: Protecting your Intellectual Assets. Vol. 7 No. 1, January 2015, p. 44.
Summary: Bifurcation system in Taiwan -- separation of civil and administrative cases -- since the
Intellectual Property Case Adjudication Act, 2008 patent invalidity can be raised as a defence in
civil proceedings -- request for a retrial if invalidation follows an infringement decision.
Subject: Patent validity--Taiwan
SNIPER Bulletin – May 2015
Page 39 of 63
SNIPER No.: 2015/00257
Author: Lane, Eric L.
Title: Patent PR
Source: Journal of the Patent and Trademark Office Society. Vol. 96 No. 4, 2014, pp. 486-513.
Summary: Analysis of patent focused press releases by patent holders -- search methodology -exclusions from the data set -- development of a coding system for the material -- results of content
analysis -- patent documentation as a signal to publicise information about the patent owner -subject matter preferences -- patent activity.
Subject: Patent publication--United States
Subject: Patents--research
SNIPER No.: 2015/00394
Author: Vinti, Baldassare
Author: Werb, Daniel
Title: Patent reform: back on the table but late to the party?
Source: Intellectual Property Magazine. February 2015, pp. 52-53.
Summary: Bill to curb abusive patent litigation may be introduced to the US House of
Representatives again in 2015 -- recent Supreme Court decisions such as Alice, Occtane fitness
and Highmark have addressed some of the concerns the Bill is intended to address -- PTAB review
procedure has led to invalidation of a number of cases involving abusive litigation -- need to file
more detailed pleadings following abolishing of Form 18 pleading sheet -- concern that
Congressional interference may weaken patent rights -- awarding of attorney fees -- inter partes
examination.
Subject: Patent litigation--law and legislation--United States
SNIPER No.: 2015/00148
Author: Stacy, Wayne O.
Author: Pivovar, Adam M.
Title: The Patent Trial and Appeal Board after two years: future challenges
Source: Intellectual Property Magazine. November 2014, pp. 49-51.
Summary: PTAB created to resolve patent validity disputes at the USPTO -- PTAB widely used
since its creation -- reviews normally completed within 18 months -- reviews under PTAB cheaper,
faster and with a lower burden of proof -- petitioners success rate at approximately 89% -obviousness challenges -- PTAB an alternative to litigation in district courts -- stay of proceedings - mandatory estoppel from a PTAB proceeding -- need to redefine PTAB policy relating to
concurrent USPTO proceedings.
Subject: Patent validity--United States
Subject: Patent examination--United States
SNIPER Bulletin – May 2015
Page 40 of 63
SNIPER No.: 2014/00716
Author: Platt, Neal R.
Title: Persistent infirmities in trademark priority: toward a cure
Source: Trademark Reporter. Vol. 103 No. 5, 2013, pp. 1268-1272.
Summary: Proposal for legislation to include passage of time -- contains hypothetical situation
showing problem with a renewal application -- use of a curative or a limitations period -- correction
of errors in applications -- naked licenses.
Subject: Trade mark priority--case studies--United States
Subject: Trade mark owners' rights--case studies--United States
Subject: Trade mark validity--case studies--United States
SNIPER No.: 2015/00316
Author: Davidoff, Galina
Title: Picture perfect
Source: Intellectual Property Magazine. October 2014, p. 24.
Summary: Use of courtroom graphics in patent cases -- importance to the case -- organisational
principles when using graphics in a trial -- providing clarity for jurors -- creating key visuals -- team
involvement.
Subject: Artistic works
Subject: Expert witnesses
SNIPER No.: 2015/00332
Author: Adamo, Kenneth R.
Author: Higer, David W.
Author: Goryunov, Eugene
Author: Hubbard, Ryan M.
Title: The price of a stay: prior art estoppel
Source: Intellectual Property Magazine. October 2014, pp. 61-64.
Summary: Stay of litigation under inter partes review (IPR)-- lower burden of proof in invalidity
claims under IPR -- factors considered by US district courts in deciding stay motions -- recent trend
in the US for courts to impose limited estoppel -- non-IPR petitioners.
Subject: Intellectual property litigation--United States
SNIPER No.: 2013/02881
Author: Gopalakrishnan, N. S., Dr
Title: Principles for intellectual property provisions in bilateral and regional agreements: reflections
on the ongoing negotiations of an EU-India FTA
Source: IIC : International Review of Intellectual Property and Competition Law. Vol. 44 No. 8,
December 2013, pp. 920-924.
SNIPER Bulletin – May 2015
Page 41 of 63
Summary: Increased importance of IP regulations in FTAs after TRIPS -- transparency of
negotiations -- impact of TRIPS-plus provisions on innovation and development in India -- access
to generic medicines -- protection of traditional knowledge -- public interest -- promotion of
domestic economic welfare.
Subject: International intellectual property law
Subject: International trade--treaties--India
Subject: International trade--treaties--Europe
SNIPER No.: 2014/02134
Author: Baines, Rebecca
Title: Prior art before patent: the only way to instruct expert witnesses in patent cases?
Source: European Intellectual Property Review. Vol. 36 No. 12, 2014, pp. 778-784.
Summary: Conflicting decisions in UK Patent Court cases involving expert witness evidence -uncertainty following the Starsight v Virgin (Rovi) decision about the notional skilled person -- fair
and objective expert opinion -- hindsight analysis -- commentary on evaluation of expert opinion in
cases of patent infringement -- applicability of prior art before patent approach.
Subject: Inventive step--case law--United Kingdom
Subject: Expert witnesses--United Kingdom
SNIPER No.: 2015/00330
Author: Sloss, Robert H.
Author: Mehta, Miku H.
Title: Privileged position
Source: Intellectual Property Magazine. October 2014, pp. 53-55.
Summary: Attorney-client privilege varies across different jurisdictions -- communications between
a client and a Japanese bengoshi (lawyers) or benrishi (trade mark attorneys) -- defining attorneyclient privilege under US law -- US application of attorney-client privilege to patent agents -significance of applying US or Japanese law to a privilege issue.
Subject: Legal privilege--United States
Subject: Legal privilege--Japan
SNIPER No.: 2014/01167
Author: Gonsalves, Gregory J.
Author: Grubbs, Kathy
Title: The PTAB's interpretation of the real party in interest and privy provision in the AIA: a look at
the PTAB's rulings for several fact scenarios
Source: Journal of the Patent and Trademark Office Society. Vol. 96 No. 1, 2014, pp. 22-29.
SNIPER Bulletin – May 2015
Page 42 of 63
Summary: Inter Partes Review (IPR) -- estoppel -- time limits for filing -- Congressional aim to
prevent serial challenges to patent validity -- current system a cost burden on patent owners -Taylor v. Sturgell decision on real-party-in-interest -- PTAB Trial Practice Guide defines qualifying
relationships -- examples of IPR proceedings and rulings -- party that controls, directs and funds
an IPR is a real party in interest.
Subject: Patent validity--United States
Subject: Intellectual property litigation--United States
SNIPER No.: 2015/00335
Author: MacLean, Ian
Title: Quality (and value) v quantity
Source: Intellectual Property Magazine. October 2014, pp. 76-77.
Summary: Realising value of patent portfolios -- balance between quality and quantity -- valuing
high-quality patents -- organising market protection for patent portfolios -- using software to review
patent portfolios -- balance between risk and reward -- monitoring the competition.
Subject: Patent owners' rights
Subject: Value of intellectual property
SNIPER No.: 2015/00256
Author: Brody, Tom
Title: Rebutting obviousness rejections by disclosing impermissible hindsight
Source: Journal of the Patent and Trademark Office Society. Vol. 96 No. 4, 2014, pp. 427-485.
Summary: Ten categories of admissible hindsight -- referencing prior art -- Graham v. John Deere
case noted that hindsight should not be used in imposing obviousness rejections -- in re Winslow
provided a test for determining whether impermissible hindsight had been used to determine an
obviousness rejection -- case law relevant to categories of impermissible hindsight -- examples of
Patent Trial Appeal Board cases -- primary and secondary references -- "teaching away" -redundant advantage -- disparate references -- optimising.
Subject: Patent examination--United States
Subject: Inventive step--case law--United States
Subject: Patent validity--case law--United States
SNIPER No.: 2014/02135
Author: Long, Séamus David
Title: Regulation 5129/2013: the protection it offers intellectual property right holders
Source: European Intellectual Property Review. Vol. 36 No. 12, 2014, pp. 785-789.
Summary: New customs regulations to prevent pirated and counterfeit products entering the EU -extension of IP protection to a wider range of goods -- destruction of small consignments from
internet sales -- reimbursement of costs -- seizure of goods in transit -- harmonisation of
enforcement procedures.
Subject: Infringement remedies--Europe
Subject: Counterfeiting--law and legislation--Europe
SNIPER Bulletin – May 2015
Page 43 of 63
SNIPER No.: 2013/02884
Author: Seuba Hernández, Xavier
Title: The relevance of the principles for intellectual property provisions in bilateral and regional
agreements vis-à-vis European Preferential Trade agreements
Source: IIC : International Review of Intellectual Property and Competition Law. Vol. 44 No. 8,
December 2013, pp. 943-947.
Summary: Concerns over provisions for intellectual property in preferential trade agreements
(PTAs) -- social and human rights within IP provisions -- lack of attention given to local needs -transplantation of IP legal regime into agreements -- negotiating in good faith
Subject: International intellectual property law
Subject: International trade--treaties
SNIPER No.: 2015/00137
Author: Adediran, Peter
Title: Repeal of section 52: an innovation block?
Source: Intellectual Property Magazine. November 2014, pp. 20-21.
Summary: Proposed repeal of section 52 of the UK Patents Act -- mass production of a copyright
work by the holder will be covered from the life of the creator plus 70 years -- consultation on
timing, implementation and transition period -- wide range of designers affected by the repeal -overview of arguments for and against shorter transition periods.
Subject: Copyright terms--United Kingdom
Subject: Copyright owners' rights--United Kingdom
Subject: Visual arts and crafts--United Kingdom
SNIPER No.: 2015/00133
Author: Thompson, Sandra P.
Title: Researching green technology patents
Source: Intellectual Property Magazine. November 2014, pp. 13.14.
Summary: Using published patent applications and issued patents as an indicator of innovation in
green technology sector -- reviewing patents that have been renewed and those that have expired
in a particular sector -- USPTO procedures -- patent infringement -- published patent applications
can indicate leading areas of research -- biofuels sector -- Clean Energy Patent Growth Index.
Subject: Environmental issues in intellectual property--United States
SNIPER No.: 2015/00328
Author: Oker-Blom, Max, 1948Author: Díaz Alaminos, Bárbara
Title: The right to use a trademark
SNIPER Bulletin – May 2015
Page 44 of 63
Source: Intellectual Property Magazine. October 2014, pp. 47-49.
Summary: Implications of trade marks as exclusionary right -- three approaches to the nature of a
trade mark right -- natural rights approach -- utilitarian approach -- positivist approach -- purpose of
trade marks -- intent to use a trade mark -- transfer of trade mark rights -- national jurisdictions
within the EU have different laws covering trade mark rights -- right to use a trade mark under
TRIPS -- trade marks and plain packaging of tobacco products.
Subject: Trade mark owners' rights--Europe
Subject: Trade dress--Europe
SNIPER No.: 2015/00325
Author: Bloom, David
Title: Security blanket
Source: Intellectual Property Magazine. October 2014, pp. 41-42
Summary: Costs to SMEs in IP litigation cases -- increase in value of IP in the UK -- reduction in
number of funding options available to rights holders to enforce their IP rights -- IP lawyer fees -conditional fee agreements -- damages based agreements -- third party funding -- before the event
insurance for IP disputes.
Subject: Intellectual property litigation--United Kingdom
Subject: Intellectual property rights--United Kingdom
SNIPER No.: 2015/00378
Author: Mukaddam, Farah
Title: Shape of child's chair not registrable as a trademark
Source: Intellectual Property Magazine. February 2015, pp. 16-17
Summary: CJEU ruling on the interpretation of Article 3(1)(e)(i) and (iii) of the Trade Marks
Directive for refusal or invalidity of shape marks -- absolute grounds are mutually exclusive -registration of a Benelux trade mark for the Tripp Trapp child's chair -- Hauck GmbH & Co. KG v
Stokke A/S, Stokke Nederland BV -- case referred to CJEU by Supreme Court of the Netherlands - assessing essential characteristics -- a mark cannot be registered if the shape results from the
nature of the goods themselves -- shape is necessary to obtain a technical result -- shape gives
substantial value to the goods.
Subject: Shape marks
Subject: Industrial design registrability--Europe
SNIPER No.: 2015/00259
Author: Ghosh, Shubha
Title: Short-circuiting contract law: the federal circuit's contract law jurisprudence and IP
federalism
Source: Journal of the Patent and Trademark Office Society. Vol. 96 No. 4, 2014, pp. 536-566.
SNIPER Bulletin – May 2015
Page 45 of 63
Summary: Stanford University v. Roche -- faulty contract law led to loss of a potential multimillion
dollar patent by Stanford -- inconsistencies between federal and state laws -- simultaneous patent
assignments -- Stanford case first to be heard under the Bayh-Dole Act -- patent law under state
contract law jurisdiction -- legal rules of priority in security interests -- on sale bar under the 1953
Patent Act -- conflict between exhaustion doctrine and conditional sale doctrine -- differentiating
between and sale and a license -- settlement agreements -- relationship between patent and antitrust laws -- FTC v. Actavis -- use of the Erie doctrine -- contract jurisprudence -- uniformity in
patent law decisions -- need for a predictable body of law to govern patents -- intellectual property
preemption -- reform of Federal Circuit approach to contract law needed.
Subject: Intellectual property law--United States
Subject: Legal jurisdiction--United States
SNIPER No.: 2015/00114
Author: Burri, Mira
Added author: International Centre for Trade and Sustainable Development
Added author: World Economic Forum
Added author: E15 Expert Group on Trade and Innovation
Title: Should there be new multilateral rules for digital trade? [electronic resource]
Source: E15 Initiative Think Piece. December 2013.
General Note: "The E15 Initiative - strengthening the global trade system".
Summary: Regulatory response to innovation in digital technology -- Information Technology
Agreement (ITA) -- access to telecommunication markets -- globalisation of digital technologies -dispute settlements under WTO law all included an Internet-related element -- questions over the
ability of WTO governance to address the new digital technologies -- e-commerce programme
developed by WTO inadequate -- duty-free moratorium on electronic transmissions -- calls for
WTO reform -- including digital trade in the Trade in Services Agreement -- increasing the level of
certainty for businesses involved in digital trade.
Subject: World Trade Organization
Subject: Electronic commerce
Subject: International trade
Subject: International law
SNIPER No.: 2015/00313
Author: Sandonato, Michael P.
Author: Bayne, Laura A.
Title: Smartphone stalemate: what was the point of Apple v Samsung?
Source: Intellectual Property Magazine. October 2014, pp. 17-18.
Summary: Apple and Samsung agreement to drop all non-US patent litigation -- litigation has
failed to protect market share -- summary of litigation worldwide between the two companies -dispute between Apple and Samsung now limited to two US cases -- resolution likely to be
financial, not product bans -- market share statistics show that Samsung has the larger market
share.
SNIPER Bulletin – May 2015
Page 46 of 63
Subject: Patent infringement--case law
Subject: Patent litigation
Subject: Mobile computing
SNIPER No.: 2015/00379
Author: Minns, Abby
Title: Solving the Rubik's Cube challenge
Source: Intellectual Property Magazine. February 2015, pp. 18-20
Summary: Long running dispute between Seven Towns and Simba Toys over validity of shape
mark for the Rubik's Cube -- CJEU upheld decision of Second Board of Appeal and dismissed
Simba's application for invalidity on every ground -- finding that the essential characteristics of the
mark did not perform a technical function -- inherent difficulty in registering a shape mark.
Subject: Shape marks--case law--Europe
Subject: Trade mark registrability--Europe
SNIPER No.: 2014/01654
Author: Tan, Emily
Title: Specialist whilst generalist: interview with Mr. C. K. Kwong, President of APAA
Source: China Intellectual Property: comprehensive IP report on China. Vol. 60 No. 3-4, MarchApril 2014, pp. 52-55.
Summary: Asian Patent Attorneys Association (APAA) earliest non-government organisation on
patents -- different types of patents in Hong Kong and China -- requirements for patent agents.
Subject: Kwong, C. K.--interviews
Subject: Patent attorneys--China
Subject: Patent systems--China
Subject: Patent systems--Hong Kong
SNIPER No.: 2015/00115
Author: Karachalios, Konstantinos
Author: McCabe, Karen
Added author: International Centre for Trade and Sustainable Development
Added author: World Economic Forum
Added author: E15 Expert Group on Trade and Innovation
Title: Standards, innovation, and their role in the context of the World Trade Organization
[electronic resource]
Source: E15 Initiative Think Piece. December 2013.
General Note: "The E15 Initiative - strengthening the global trade system".
SNIPER Bulletin – May 2015
Page 47 of 63
Summary: Impact of nation-centric standards within WTO on innovation -- Technical Barriers to
Trade (TBT) Agreement established pre-digital era -- development of open standards and
technology platforms -- removal of barriers to innovation -- technological innovation needs global
open standards to address important issues as security and privacy -- promotion of international
harmonisation of technical regulations.
Subject: World Trade Organization
Subject: Trade regulation
Subject: Innovation (Technological)
Subject: International trade
SNIPER No.: 2014/01657
Author: Han, Weiwei
Title: Stepping up of the green technologies in China: from the view of intellectual property
Source: China Intellectual Property: comprehensive IP report on China. Vol. 60 No. 3-4, MarchApril 2014, pp. 68-71.
Summary: Priority patent examination for green technologies -- definition of important patent
applications -- commercialisation of green patents.
Subject: Environmental issues in intellectual property--China
SNIPER No.: 2015/00391
Author: Kramer, Anessa Owen
Title: Tackling tacking
Source: Intellectual Property Magazine. February 2015, pp. 47-48.
Summary: Oral arguments in Hana Financial Inc v Hana Bank -- rarely used argument of trade
mark tacking -- case rested on proving priority use -- numerous rulings and appeals in the case -questions over whether case should have gone to the US Supreme Court -- is trade mark tacking a
legal issue or a question of fact -- decision by SCOTUS upholding Ninth Circuit Court of Appeals
finding that trade mark tacking is a question of fact -- decision likely to affect circuit courts treating
likelihood of confusion as a matter of law.
Subject: Trade mark priority--case law--United States
SNIPER No.: 2015/00380
Author: Vichayanonda, Anjie
Title: Taste tactics
Source: Intellectual Property Magazine. February 2015, pp. 21-23.
Summary: Taste trade marks have not yet been approved by the USPTO -- registration of a taste
mark falls under the Lanham Act -- no indication in either the Lanham or Trademark Acts to allow
or disallow registration -- registration refused because the mark was either functional or did not act
as a source identifier -- use of the four Morton-Norwich factors to determine whether mark is
functional -- taste seen as a characteristic rather than an identifier -- two taste marks for
pharmaceuticals have been refused by the TTAB based on taste being an inherent characteristic -applications to register flavour marks for beverages also rejected on the grounds of functionality
and distinctiveness -- difficulty of enforcing a taste mark -- registration for scent marks has been
approved -- Morrocanoil Inc scent mark had acquired distinctiveness -- substantial evidence
required to prove acquired distinctiveness -- law relating to taste marks undeveloped in the US.
SNIPER Bulletin – May 2015
Page 48 of 63
Subject: Taste marks--registrability--United States
Subject: Trade mark distinctiveness--United States
SNIPER No.: 2014/00712
Author: Jay, E. Deborah
Title: Ten truths of false advertising surveys
Source: Trademark Reporter. Vol. 103 No. 5, 2013, pp. 1116-1171.
Summary: Claims for false advertising fall under the Lanham Act -- consumer reaction to alleged
false advertising must be determined -- requirement for consumer perception surveys -- survey
target audience usually potential purchasers -- measurement of consumer perception -- use of filter
options in consumer surveys -- inclusion of open and closed-ended questions -- survey questions
should be relevant to the case -- including control questions or control groups -- test stimulus -disputes over multi-page websites with links to other sites -- data collection methods -- uniform
administration of surveys -- interpretation of survey results -- conforming with accepted survey
standards.
Subject: Marketing--United States
Subject: Evidence--United States
SNIPER No.: 2015/00147
Author: Yost, Eleanor M.
Author: Ahuja, Sumedha
Author: Sanders, Charles H.
Title: Three lessons learned from two years at the US PTAB
Source: Intellectual Property Magazine. November 2014, pp. 44-48.
Summary: A panel reviews the post-grant review petition to determine whether it should be
granted -- PTAB proceedings often run in parallel with litigation in a district court -- impact on trial
schedule from the large number of filings -- motion to amend patents -- non-obviousness -statistics on granting of stay proceedings.
Subject: Patent litigation--United States
Subject: Patent validity--United States
SNIPER No.: 2015/00202
Author: Rendas, Tito
Title: Time-shifted morality: a critique of the legal discourse on online copyright infringement
Source: Queen Mary Journal of Intellectual Property. Vol. 5 No. 1, January 2015, pp. 28-45.
Summary: Dominant rhetoric against sharing of copyrighted content on the Internet lacks moral
bite -- relationship between law and morality -- litigation against file sharers have been ineffective -illegal downloading not seen as morally wrong -- use of the theft metaphor when referring to illegal
downloads in the judicial arena -- possible changes to the legal discourse to influence public
perception of illegal downloads -- influencing behaviour.
SNIPER Bulletin – May 2015
Page 49 of 63
Subject: Copyright infringement--culture and entertainment industry
Subject: Electronic copyright--culture and entertainment industry
Subject: Piracy--culture and entertainment industry
Subject: Public interest--culture and entertainment industry
SNIPER No.: 2014/01166
Author: Jackiw, Suzanne
Title: Title defense: creating consistency in video game title trademark law
Source: Journal of the Patent and Trademark Office Society. Vol. 96 No. 1, 2014, pp. 1-21.
Summary: Cost of developing video games -- single-issue video game titles eligible for trade
marks -- protection of title following release -- case law follows TMEP guidelines -- video games
handled differently to other creative works -- Midway case of 1983 -- importance of title in the video
game industry -- alternative approach to trade marks for video games.
Subject: Multimedia works--United States
Subject: Trade mark owners' rights--United States
SNIPER No.: 2015/00156
Author: Minns, Abby
Title: To imitate or innovate?: the interplay of fashion and IP
Source: Intellectual Property Magazine. November 2014, pp. 82-83.
Summary: Creating a trend by copying another design -- copyright and trade marks the most used
IP protection in the fashion industry -- online naming and shaming of copycat retailers has been
successful -- acquired distinctiveness of the Louboutin red sole -- limited scope of protection for
sign marks -- difficulty in establishing passing-off.
Subject: Trade mark infringement--fashion and design industry
Subject: Passing-off--fashion and design industry
Subject: Brand management--fashion and design industry
SNIPER No.: 2015/00091
Author: Kur, Annette
Added author: Max-Planck-Institut für Immaterialgüter- und Wettbewerbsrecht
Title: Too common, too splendid, or 'just right'?: trade mark protection for product shapes and the
light of CJEU case law [electronic resource]
Source: Max Planck Institute for Innovation and Competition Research Paper. No. 14-17, 3
December 2014.
SNIPER Bulletin – May 2015
Page 50 of 63
Summary: Reconciling shapes as marks with IP law -- close connection between the mark and the
goods it designates -- protecting shape marks under European law -- defining distinctiveness and
descriptive character in Joined Cases Linde, Winward and Rado -- OHIM rejection of
distinctiveness of shape marks following Linde, Winward and Rado -- same principles apply to
packaging as for product shapes under CJEU jurisprudence -- legal rationale behind permanent
exclusion from protection -- preventing monopolies on technical solutions or functional
characteristics of a product -- Trip Trapp chair case -- distinction between indistinctive shapes and
those that fall under the exclusion clause -- Hauck v. Stokke decision -- CJEU decision on
technically necessary shapes such as the Philishave razor and Lego building blocks.
Subject: Shape marks--Europe
Subject: Trade mark distinctiveness--Europe
SNIPER No.: 2015/00154
Author: Goodchild, Joanne
Title: Toxic brands: is there a cure?
Source: Intellectual Property Magazine. November 2014, pp. 66-67.
Summary: Failure of a brand due to the reduction in quality of the product or association with a
third party -- example of businesses with the name 'Isis' now associated with terrorism -- public
perception of the name and its connotations -- decision to re-brand depends on the commercial
effect -- a loyal customer is unlikely to be swayed by the perceived association -- consideration of
the goodwill built by the brand name -- legal issues involved in re-branding.
Subject: Trade mark dilution--United Kingdom
Subject: Brand management--United Kingdom
SNIPER No.: 2015/00327
Author: Prewitt, Matthew F.
Title: Trade secrets in the era of cyber breach
Source: Intellectual Property Magazine. October 2014, pp. 45-46.
Summary: Bills before Congress to create a federal civil cause of action for trade secret
misappropriation -- business vulnerability to cyber attack and theft of electronic data -- noncompetition agreements -- state courts hear employment disputes.
Subject: Inevitable disclosure (Trade secrets)--United States
Subject: Trade secrets--law and legislation--United States
SNIPER No.: 2015/00119
Author: Lippoldt, Douglas
Author: Schultz, Mark F.
Added author: International Centre for Trade and Sustainable Development
Added author: World Economic Forum
Added author: E15 Expert Group on Trade and Innovation
SNIPER Bulletin – May 2015
Page 51 of 63
Title: Trade secrets, innovation and the WTO [electronic resource]
Source: E15 Initiative Think Piece. August 2014.
General Note: "The E15 Initiative - strengthening the global trade system".
Summary: Harmonising trade secret protection in WTO multilateral agreements -- intangible
assets -- Article 39.2 of TRIPS defines characteristics of a trade secret -- cost of trade secret theft - trade secret protection especially important to SMEs -- trade secrets protection index -- trade
secret abuse -- preliminary injunctions -- protecting trade secrets during litigation -- reform needed
for trade secret protection.
Subject: Trade secrets
Subject: International trade
Subject: Inevitable disclosure (Trade secrets)
SNIPER No.: 2015/00393
Author: Daboul, Sharon
Title: Trademark crash: Volvo v OHIM
Source: Intellectual Property Magazine. February 2015, pp. 50-51.
Summary: EU General Court upheld OHIM decision regarding opposition to registering the mark
'LOVAL' by Volvo -- opposition initially rejected on grounds of dissimilarity -- appeal considered
similarity, reputation of the earlier mark and distinctive character -- decision based on grammatical
rules and likelihood of consumer confusion -- not possible to carry out conceptual comparison as
neither sign had any meaning -- use of a visual dictionary theory by Volvo.
Subject: Confusing similarity--Transport and storage industry--Europe
Subject: Trade mark distinctiveness--Europe
SNIPER No.: 2015/00139
Author: Hjorth, Beverly E.
Title: Trademark genericide: lessons as close as your driveway
Source: Intellectual Property Magazine. November 2014, pp. 23-24.
Summary: Importance of building a strong brand to protect against infringement -- filing a
declaration under section 15 to obtain incontestable status -- case of PODS Enterprises vs. U-Haul
over trade mark registrations -- trade mark infringement litigation where competitor tries to prove a
trade mark has become generic -- use of consumer surveys -- PODS management of its brand -correct use of a trade mark.
Subject: Brand management--United States
Subject: Trade mark infringement--case law--United States
SNIPER Bulletin – May 2015
Page 52 of 63
SNIPER No.: 2014/02208
Author: Burshtein, Sheldon
Title: Trademark licensing in Canada: the control regime turns 21
Source: Trademark Reporter. Vol. 104 No. 5, September-October 2014, pp. 1001-1111.
Summary: Concept of distinctiveness -- restrictions on assignment -- assigning goodwill under
common law -- comparison with laws of other countries -- historical overview of Canadian trade
mark law -- registered user system -- scope of legislation -- non-use and opposition proceedings -requirements for licensing -- use of a trade mark by an agency -- consignment arrangements -- use
of sub-contractors -- toll manufacturers (co-packers) -- distribution of goods -- case studies -distribution of services – consent to use agreements -- phase out agreements between owners and
infringers -- double trade marking -- licenses assigned by licensees -- registration applications -maintaining the quality and character of a mark -- licensor monitoring to ensure quality – exception
under s. 51 for pharmaceutical preparation -- using a licensing agent -- sublicensing arrangements
-- unregistered trade marks -- licensing of trade dress -- use of a trade mark within a trade name by
a licensee -- ss. 50(1) for domain names -- licensing of certification marks -- official marks -- public
notice of licensed use -- use under license outside Canada -- licensing disputes -- estoppel -- nonuse proceedings -- opposition proceedings -- competition law -- insolvency.
Subject: Trade mark licensing--Canada
Subject: Trade mark systems--Canada
SNIPER No.: 2015/00260
Author: Stronach, Roger
Title: Trademarking social change: an ironic commodification
Source: Journal of the Patent and Trademark Office Society. Vol. 96 No. 4, 2014, pp. 567-599.
Summary: Increase in applications to trade mark slogans -- trade marking social movements -should social change be trade marked -- value of association with a social agenda -- growth of
non-profit organisations and activism -- business involvement in social causes -- online activism -some forms of social change have become a commodity -- balance between trade mark protection
and freedom of expression -- value of trade marks -- transforming social initiatives into
commodities -- cases of corporations attaching their trade mark to a social cause -- common law
right of publicity in the late Rosa Parks v. LaFace Records case -- trade mark designations -- trade
marking an identity -- gaining meaningful support in the internet age -- proving sufficient
commercial use of a non profit trade mark.
Subject: User-generated content--United States
Subject: Trade marks--social aspects--United States
Subject: Social change
Subject: Internet
SNIPER No.: 2015/00079
Author: Fink, Carsten
Author: Helmers, Christian
Author: Ponce, Carlos
Added author: World Intellectual Property Organization
Title: Trademarks squatters: evidence from Chile [electronic resource]
Source: WIPO Economic Research Working Paper. No. 22, September 2014.
SNIPER Bulletin – May 2015
Page 53 of 63
Summary: Using trade marks to impede market entry -- trade mark squatting for monetary gain -registering a trade mark in classes not covered by an existing mark -- squatters pursuing
infringement actions against imports of products relying on brand name -- free-riding on brand
reputation -- brand dilution and loss of sales -- first-to-file systems -- speculative registration of
trade marks -- impact on brand owners -- valuable foreign brands often targeted -- suggested
algorithmic methodology to identify trade mark squatters in any trade mark register -- application
procedure in Chile -- protection of well-known brands under the Paris Convention and TRIPS -enforcing trade mark law in Chile -- most squatter filings concentrated on clothing and accessories
related marks -- preemptive filings -- time lag in opposition procedures.
Subject: Non-practicing entities--Chile
Subject: Trade mark owners' rights--Chile
SNIPER No.: 2013/02880
Author: Frankel, Susy
Title: Trade-offs and transparency
Source: IIC : International Review of Intellectual Property and Competition Law. Vol. 44 No. 8,
December 2013, pp. 913-919.
Summary: Trading intellectual property for other benefits in trade negotiations -- TRIPS-plus
agreements -- free trade agreements -- power imbalance in bilateral agreements -- comparison of
international trade agreements -- Trans-Pacific Partnership (TPP).
Subject: International intellectual property law
Subject: International trade--treaties
SNIPER No.: 2014/01169
Author: Swamidass, Jayanth S.
Author: Swamidass, Paul M.
Title: The trajectory of China's trademark systems leading up to the new trademark law taking
effect in May 2014
Source: Journal of the Patent and Trademark Office Society. Vol. 96 No. 1, 2014, pp. 56-75.
Summary: Evolution of trade mark law in China -- importance of brand identity in China -- high
incidence of trade mark infringement -- comparative infancy of the modern Chinese trade mark
system -- economic growth leading to improved trade mark enforcement -- improvement in
compliance with international treaties -- first-to-file registrations -- foreign applicants must meet
certain requirements such as a Chinese transliteration of the company name -- customs seizure of
counterfeit goods -- improving qualifications for trade mark judges -- problem of bad faith
registrations -- registering non-traditional marks.
Subject: Intellectual property systems--China
Subject: Trade mark enforcement--China
SNIPER No.: 2015/00118
Author: Mercurio, Bryan
SNIPER Bulletin – May 2015
Page 54 of 63
Added author: International Centre for Trade and Sustainable Development
Added author: World Economic Forum
Added author: E15 Expert Group on Trade and Innovation
Title: TRIPs, patents, and innovation: a necessary reappraisal? [electronic resource]
Source: E15 Initiative Think Piece. July 2014.
General Note: "The E15 Initiative - strengthening the global trade system".
Summary: Assumption that patents promote innovation now being questioned -- TRIPS
agreement provides uniform approach to patents and patent protection -- differentiating between
innovation and invention -- patent thickets -- weighing social costs against social benefits of
patents -- harmonising patent protection -- length of patent protection -- scope of patentability has
expanded -- question of software patentability -- patent trolls -- encouraging innovation and
protecting investments in the pharmaceutical industry -- recommendations to improve innovation
and competition.
Subject: Patent owners' rights
Subject: International trade
Subject: Innovation (Technological)
SNIPER No.: 2015/00390
Author: Williams, Thomas M.
Title: TTAB's 'likelihood of confusion' rulings
Source: Intellectual Property Magazine. February 2015, pp. 45-46.
Summary: B&B Hardware Inc v Hargis Industries Inc will impact on infringement cases involving
'likelihood of confusion' -- role of the TTAB in adjudicating disputes -- board applying the DuPont
factors test when determining whether confusion is likely. Court decision due in mid 2015.
Subject: Legal jurisdiction--United States
Subject: Trade mark infringement--United States
SNIPER No.: 2015/00297
Author: Zhang, Lily
Title: TV, taken down
Source: Asia IP: Protecting your Intellectual Assets. Vol. 7 No. 1, January 2015, pp. 35-36.
Summary: Chinese website for pirated videos, YYeTs.com and one for subtitles, Shooter.cn have
been taken down -- availability of subtitles led to growth in the audience for pirated movies and TV
shows -- new regulations issued by China's TV watchdog SARFT mean that all foreign shows must
have a permit and be reviewed by the watchdog before being made available online -- improved
copyright protection in China.
Subject: Copyright infringement--China
Subject: Internet--China
Subject: Cinematographic works--China
Subject: Television broadcasts--China
SNIPER Bulletin – May 2015
Page 55 of 63
SNIPER No.: 2015/00382
Author: Watson, Robert
Author: Graham, Emma
Title: Undressing the design copy issue: tribal wars: a review of John Kaldor Fabricmaker v Lee
Ann Fashions
Source: Intellectual Property Magazine. February 2015, p.26.
Summary: Difficulty of enforcing unregistered IP rights -- design must have been copied for
infringement to take place -- case rested upon two issues, whether a substantial part of the design
had been copied and whether other infringement requirements were met -- claim of copying and
infringement was dismissed -- eight step framework for copyright infringement following Designers
Guild Ltd v Russel Williams (Textiles) Ltd case.
Subject: Industrial designs--case law--United Kingdom
Subject: Copyright infringement--United Kingdom
SNIPER No.: 2015/00375
Author: Korenberg, Alexander
Author: Venner, Julia
Title: The unitary patent and the Unified Patent Court: an update
Source: Intellectual Property Magazine. February 2015, pp. 11-12.
Summary: Final decision on Spanish challenge to constitutionality of the new court expected in
2015 -- UPC ratified by half the necessary 13 countries -- locations of the courts -- qualifications
and experience of judges -- draft rules of procedure -- opt out clause -- designated language -bifurcation of infringement and validity proceedings -- payment of damages -- annual renewal fees
-- Malta's participation.
Subject: Patent litigation--Europe
Subject: Legal procedure--Europe
SNIPER No.: 2015/00396
Author: Larsen, Charles
Author: Kelly, Edward J.
Author: Carroll, Christopher P.
Author: Ling, Vincent
Title: UPC recap: have you been paying attention?
Source: Intellectual Property Magazine. February 2015, pp. 55-56.
Summary: Expected that the UPC will come into effect in 2016 -- current national level of
enforcement will be replaced with the UPC resulting in fewer costs -- Italian and Spanish challenge
to legality of the agreement and regulations -- competency of the CJEU to use enhanced
cooperation legislative procedure -- establishment of a Preparatory Committee to implement the
UPC -- draft Rules of Procedure include an accelerated timeline for infringement decisions -administrative and IT procedures on-going -- initial list of approved judicial candidates released.
Subject: Patent systems--Europe
Subject: Patent litigation--Europe
SNIPER Bulletin – May 2015
Page 56 of 63
SNIPER No.: 2015/00386
Author: Low, Eugene I.
Title: Updates from China: latest regulations on the protection of privacy
Source: Intellectual Property Magazine. February 2015, pp. 36-37.
Summary: Draft Chinese law on data privacy not yet implemented -- PRC Supreme Court Judicial
Interpretation on infringement of civil rights -- ISPs and the duty of disclosure -- specific examples
of personal data disclosure subject to court jurisdiction -- statutory damages -- Draft SMS rules
published in 2014 -- restriction on sending commercial SMS messages.
Subject: Privacy--law and legislation--China
Subject: Mobile computing--China
SNIPER No.: 2015/00080
Author: Barcelos, Vivian
Author: Jorge, Marina Filgueiras
Author: Le Feuvre, Bruno
Author: Lopes, Felipe
Author: Carvalho, Sergio M. Paulino de
Author: Pinheiro, Vera
Author: Raffo, Julio
Author: Ribeiro, Leonardo
Added author: World Intellectual Property Organization
Title: The use of intellectual property in Brazil [electronic resource]
Source: WIPO Economic Research Working Paper. No. 23, December 2014.
Summary: Effect of IP in developing countries -- tailoring IP systems to national capacity and
needs -- plan of action for science and technology programs -- adoption of international trade
agreements -- Greater Brazil Plan (PBM) -- structure of IP regulation -- inventions and utility
models protected as patents -- lack of substantive examination for industrial designs -- registration
of technology transfer contracts by National Institute of Industrial Property -- specific legislation
covers software -- IP trends in Brazil -- breakdown of application by type and class -- growth in
industrial design applications -- increasing demand for trade mark protection -- breakdown of
geographical indication applications.
Subject: Intellectual property systems--Brazil
Subject: Intellectual property law--Brazil
SNIPER No.: 2014/02140
Author: Teare, Isabel
Title: Virgin escapes Rovi's clutches again in the latest cable television patent dispute: lessons in
choosing (and preparing) an expert witness: Rovi Solutions Corp v Virgin Media Ltd
Source: European Intellectual Property Review. Vol. 36 No. 12, 2014, pp.810-813.
SNIPER Bulletin – May 2015
Page 57 of 63
Summary: Dispute over a relocate feature in cable television technology -- -- judge found for Virgin
-- choice of expert witnesses -- assessing inventive step in Rovi patent -- interpretation of prior art - analysis of prior art documentation -- claims of hindsight -- Rovi to appeal decision.
Subject: Expert witnesses--United Kingdom
SNIPER No.: 2015/00144
Author: Kelly, Don V.
Title: Virtual reality, virtual laws
Source: Intellectual Property Magazine. November 2014, pp. 38-39.
Summary: Game imagery and the code to display it are copyrightable -- appropriation of code
developed in former employment -- fair use of another's images -- creation of avatars -- protection
of game names and brands with trade marks -- trade mark dilution -- virtual reality games
protectable by patent -- infringement of celebrity rights -- indirect infringement.
Subject: Computer-related inventions--patentability--United States
Subject: Trade mark infringement--United States
SNIPER No.: 2015/00085
Author: Jaeger, Thomas, LL. M.
Added author: Max-Planck-Institut für Immaterialgüter- und Wettbewerbsrecht
Title: What's in the unitary patent package [electronic resource]
Source: Max Planck Institute for Innovation and Competition Research Paper. No. 14-08, 9 May
2014.
General Note: Prepared for the Regional and EU Intellectual Property Challenges Conference,
held on 6 June 2014 at Burch University, Sarajevo and published with the Conference papers
Summary: Plans for a unitary patent system stalled for many years -- establishing regimes for a
UPS -- EPO established a partial patent harmonisation from 1977 -- four areas for full patent
protection are grant, scope, property, enforcement -- cross border enforcement of patent rights -creation of working group for a European Patent Litigation Agreement (EPLA) -- draft agreement
on a unified European and Community Patent Court (ECPC) -- sui generis models -- unitary patent
created under Reg. 1257/2012 and adopted -- threat of territorial fragmentation -- mistrust
between courts -- high quality patent jurisprudence -- accessibility of the court -- problems with
enhanced cooperation -- absence of property rules -- concerns over functionality -- truncated scope
of the Regulation -- suggestions to improve the EPC.
Subject: Patent systems--Europe
Subject: Patents--law and legislation--Europe
SNIPER No.: 2015/00395
Author: Engelman, Mark
Title: What's wrong with UK innovation?
Source: Intellectual Property Magazine. February 2015, p. 54.
SNIPER Bulletin – May 2015
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Summary: Failure to turn innovation into product due to lack of research grants in the UK -- cost of
patent protection -- introduction of Unitary Patent Scheme -- UK Supreme Court decision in
principle to permit claims of foreign IP infringement to be heard in English Courts -- possibility of a
future single worldwide infringement court -- difficulties of IP protection from counterfeiters -- China
does not have an adequate IP protection system.
Subject: Innovation (Technological)--United Kingdom
Subject: Patent systems--Europe
Subject: Patent infringement--United Kingdom
Subject: Patent enforcement
SNIPER No.: 2015/00300
Author: Mirandah, Gladys
Title: When times are not fortunate in Singapore
Source: Asia IP: Protecting your Intellectual Assets. Vol. 7 No. 1, January 2015, p. 42.
Summary: Time Inc v. Li San Zhong -- IPOS Registrar dismissed case for invalidation of a trade
mark -- found that the marks in question were not visually or aurally similar -- failure to establish
likelihood of confusion -- failure to supply evidence in support of claim -- appeal has not been filed.
Subject: Trade mark validity--case law--Singapore
Subject: Confusing similarity--case law--Singapore
SNIPER No.: 2014/02195
Author: Gervais, Daniel J., 1963Author: Latsko, Julie M.
Title: Who cares about the 85 percent?: reconsidering survey evidence of online confusion in
trademark cases
Source: Journal of the Patent and Trademark Office Society. Vol. 96 No. 3, 2014, pp. 265-297.
Summary: Federal appellate circuits' use of the 15% Rule in infringement cases presents a
reductionist view of consumer interests -- each circuit has a slightly different multi-factor test to
decide likelihood of confusion -- Kraft Foods Group Brankds LLC v Cracker Barrel Old Country
Store Inc highlights shortcomings of survey evidence -- question of whether protecting goodwill and
preventing confusion are separable objects -- initial interest confusion in connection with online
trade mark usage -- most courts evaluate online 'initial interest' confusion by referring to the
traditional analysis -- consumer surveys highly regarded by the courts -- argument that if only 15%
of consumer are confused then the other 85% may lose something useful if an injunction is issued
-- shortcomings of the "Eveready", "Squirt" and Exxon" admissible survey formats -cybersquatting -- metatags -- keyword advertising -- courts are gradually recognising the increased
skill level of the average online consumer -- Establishment Clause scenario -- content prohibition
and consumer rights -- protecting the rights of small business on the internet -- impact on
innovation in the online marketplace -- judicial familiarity with the Internet -- using verbatim
responses in infringement cases.
Subject: Trade mark infringement--United States
Subject: Market research--United States
Subject: Consumer protection--United States
SNIPER Bulletin – May 2015
Page 59 of 63
SNIPER No.: 2014/00715
Author: Chestek, Pamela S.
Title: Who owns the open source project name?
Source: Trademark Reporter. Vol. 103 No. 5, 2013, pp. 1240-1266.
Summary: Free and open source software (FOSS) project is a unique business model -- difficulty
in granting rights as contributions are made by more than one person -- trade mark law developed
around the concept of a centralised process for creation of a product and ownership by one entity - different judicial approaches to deciding legitimate owner of a trade mark -- naked licenses -quality control -- bilateral licenses -- initial source of the software.
Subject: Trade mark licensing--information technology industry--United States
Subject: Trade mark ownership--information technology industry--United States
Subject: Trade mark registrability--United States
SNIPER No.: 2015/00314
Author: King, Robert A.
Title: With the US Innovation Act stalled, will courts rein in NPEs?
Source: Intellectual Property Magazine. October 2014, pp. 19-20.
Summary: High cost of defending against patent trolls in the US -- US legislative response to
patent trolls -- impact of decision in the Alice case -- vagueness of guidelines following Alice
decision -- some applications reviewed following Alice decision -- clear definition of 'abstract idea'
needed -- US states have taken action to protect businesses from patent trolls.
Subject: Non-practicing entities--United States
Subject: Patents--law and legislation--United States
SNIPER No.: 2015/00299
Author: Baro, Subhasmita
Title: Words matter when drafting patent specifications
Source: Asia IP: Protecting your Intellectual Assets. Vol. 7 No. 1, January 2015, pp. 39-41.
Summary: Poorly drafted patent specifications can result in rejection or be subject to litigation -definition of critical terms at issue in Chef America v. Lamb-Weston case over the term "heating" in
the specification -- indefiniteness of claim in Datamize v. Plumtree Software over use of term
"aesthetically pleasing" -- clarity in the preamble and disclosure -- benefit of providing multiple
versions of the invention in the description.
Subject: Patent specifications
SNIPER Bulletin – May 2015
Page 60 of 63
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Published by: IP Australia
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