SNIPER Bulletin
Searchable Networked Intellectual
Property Electronic Resource
October 2014
Note: Due to copyright requirements, IP Australia
Library is unable to directly supply copies of these
articles to readers outside IP Australia. Please contact
your local library to obtain copies of these articles by
interlibrary loan.
© Commonwealth of Australia 2014
You may share and adapt the information in this publication for any purpose, as long as you
attribute the material as follows:
This work by the Commonwealth of Australia is licensed under a Creative Commons Attribution 4.0
International Licence.
Contact us
Enquiries about this publication can be sent to:
IP Australia Library
Email: library@ipaustralia.gov.au
Phone: (02) 6283 2301
ISSN: 2202-753X
SNIPER No.: 2013/02827
Author: Dereligil, Ersin
Author: Metin, Yesim
Title: 10 tips for protecting your plant varieties in Turkey
Source: World Intellectual Property Review. September-October 2013, pp. 104-105.
Summary: Nearly 700 plant breeder's rights applications received in Turkey in the past 9 years -France, Spain and Holland represent 58 percent -- most popular PBR applications are crops, fruits,
vegetables and ornamentals -- plant varieties protected since 2004 -- which variety? -- when to file
an application -- procedural stages of PBR prosecution -- take advantage of your existing DUS
(district, uniform & stable) tests -- take advantage of the priority right -- what to file with an
application -- denomination of plants -- obligation of use and compulsory licence -- cost -enforcement
Subject: Plant breeder's rights--Turkey
SNIPER No.: 2014/01729
Author: Shuai, Amanda
Author: Chan, Johnny
Author: Glass, Gregory
Title: The 2014 Asia IP trademark survey: a guide to Asia's trademark laws
Source: Asia IP: Protecting your Intellectual Assets. Vol. 6 No. 5, May-June 2014, pp. 9-46.
Summary: New trade mark laws, amendments and changes in Asian countries -- recommended
trade mark firms for trade mark prosecution and contentious matters -- Australia -- China -- Hong
Kong -- India -- Indonesia -- Japan -- Malaysia -- New Zealand -- Pakistan -- Philippines -Singapore -- South Korea -- Sri Lanka -- Taiwan -- Thailand -- Vietnam.
Subject: Trade marks--law and legislation--Asia
Subject: Trade mark attorneys--Asia
SNIPER No.: 2014/01824
Author: Lloyd, Mike
Title: Advanced citation analysis can help identify licensing candidates
Source: Les Nouvelles. Vol. 49 No. 3, September 2014, pp. 156-165.
Summary: Citation analysis used to search for potential patent licensing candidates -- licensing
managers reviewing forward citations -- statistical review -- forward rejection analysis from the
Patent River -- similarity and importance filters available in the AmberScope patent citation
searching tool -- forward and backward patent citations -- Google patent search site --citation
patent searching vs. keyword and patent code searching -- comparison of results for the Carnegie
Mellon patents and 'Paice' patent.
Subject: Patent searching--analysis
Subject: Patents--analysis
SNIPER No.: 2014/01802
Author: Richards, John, 1944Title: Alice Corporation v CLS Bank International
SNIPER Bulletin – October 2014
Page 2 of 76
Source: CIPA: the journal, incorporating the 'Transactions', of the Chartered Institute of Patent
Agents. Vol. 43 No. 7, July 2014, pp. 395-396.
Summary: Unanimous Supreme Court decision -- background to the case -- 35 U.S.C. s101 -Supreme Court's decision granting writ of certiorari -- Supreme Court held that an abstract idea did
not become computer-eligible simply by performing that idea on a computer -- The Mayo
Framework -- suggests in this context that for computer-related inventions, it may be desirable to
include in the application information as to why the computer is necessary to perform the tasks -not just why the computer carries out the task more rapidly than it can be done without one -- to
incorporate this feature in the claim in some way.
Subject: Computer-related inventions--case law--United States
Subject: Patentability--case law--United States
SNIPER No.: 2014/01838
Author: Powles, Julia
Title: Alice v. CLS Bank: United States Supreme Court establishes general patentability test
Source: WIPO Magazine. No. 4, August 2014, pp. 14-18.
Summary: Patentable subject-matter -- patent eligibility -- United States Supreme Court issued
four influential subject-matter rulings since 2009 -- Bilski v, Kappos -- Mayo v. Prometheus -- AMP
v. Myriad -- Alice v. CLS Bank -- Alice of interest because the patents in issue involved a business
method implemented by a computer -- section 101 of the US Patents Act -- comparison and
analysis of the key rulings -- implications for software patents -- merits of a subject-matter
requirement – Alice’s enduring significance comes from establishing Mayo’s two-step test as a
general test for US patentable subject-matter.
Subject: Business methods--case law--United States
Subject: Computer-related inventions--case law--United States
Subject: Patentability--case law--United States
SNIPER No.: 2014/01609
Author: Sims, Polly
Author: Hance, Jonathon
Author: Spivey, Jonathan
Author: Whittle, Jeffrey S.
Author: Snipes, LaTasha
Title: Alice v CLS: sending ripples
Source: Intellectual Property Magazine. July-August 2014, pp. 81-82.
Summary: United States Supreme Court -- Alice Corp v CLS Bank Intl -- affirmed the ineligibility of
patent claims directed to the abstract idea of "intermediated settlement" -- held that implementing
an "intermediated settlement" of financial accounts using a generic computer did not transform that
idea into patent-eligible subject matter -- abstract ideas -- United States Patent and Trademark
Office (USPTO) released preliminary examination instructions in light of the decision -- applying
Alice guidelines -- adjusting patentability analysis.
Subject: Patentability--case law--United States
Subject: Computer-related inventions--patentability
SNIPER Bulletin – October 2014
Page 3 of 76
SNIPER No.: 2014/01233
Author: Fair, Patrick
Author: Tidmarsh, Edwina
Title: The ALRC recommends fair use
Source: Intellectual Property Forum. No. 97, June 2014, pp. 28-34.
Summary: Australian Law Reform Commission (ALRC) Report, "Copyright and the Digital
Economy", recommends that the Copyright Act 1968 (Cth) be substantially amended -- principal
recommendation is that the fair dealing exceptions, together with many other specific exceptions to
copyright, be replaced by a general exception of "fair use" -- background -- submissions -recommendations -- specific impact of adopting fair use -- fair use and transformation in the United
States -- transformation use vs "derivative works" and "adaptation" -- incidental or technical use.
Subject: Fair use (Copyright)--reform--Australia
Subject: Copyright--law and legislation--Australia
SNIPER No.: 2014/01722
Author: Chan, Johnny
Title: The amazing enforce-men
Source: Asia IP: Protecting your Intellectual Assets. Vol. 6 No. 4, April 2014, pp. 9-22.
Summary: Intellectual property enforcement involves customs, police, companies, lawyers and
individuals worldwide -- perspectives from lawyers in various jurisdictions -- difficulties in working
outside your jurisdiction -- procedural matters -- cultural differences -- language -- finding the right
partner firm for enforcement dossiers -- differing views on whether to use administrative or criminal
measures in various jurisdictions -- enforcement in China -- causes of widespread piracy in China - counterfeits -- working with international customs authorities -- ways to find fakes -- training in
distinguishing fakes from authentic merchandise -- education of the general public to avoid
purchasing counterfeits -- health and safety issues with fake medicines, food and automobile parts
-- public education about fakes should focus on local economic or employment effects and quality
issues.
Subject: Intellectual property enforcement
Subject: Counterfeiting
SNIPER No.: 2014/01329
Author: Smith, Joel
Author: Morgan, Alexandra
Title: Amazon infringes Lush's Community trade mark by bidding on "Lush" as keyword and by
displaying it on its own website: Cosmetic Warriors Ltd & Lush Ltd v Amazon.co.uk Ltd & Amazon
EU Sàrl
Source: European Intellectual Property Review. Vol. 36 No. 6, 2014, pp. 400-402.
Summary: Cosmetic Warriors Ltd & Lush Ltd v Amazon.co.uk Ltd & Amazon EU Sàrl -- Amazon s
purchase and use of "lush" as a keyword through Google AdWords -- Lush's Community trade
mark was held to be infringed by Amazon -- display and non-display of the word "lush" in the online
ad -- significance of the decision.
Subject: Community trade mark--case law--Europe
Subject: Trade mark infringement--case law--Europe
Subject: Keyword advertising--case law
SNIPER Bulletin – October 2014
Page 4 of 76
SNIPER No.: 2014/01698
Title: Apple tops the brand charts
Source: Trademarks and Brands Online. Vol. 3 No. 2, 2014, pp. 30-32.
Summary: Apple and Samsung have two of the most valuable names on the planet -- Brand
Finance released its annual list of the world's 500 most valuable brands -- Apple leads the way,
followed by Samsung -- other tech firms dominate the rankings -- how Brand Finance evaluates a
brand -- Apple and Samsung epitomise the dominance of tech brands -- usefulness of the report -limitations -- Brand Finance's competitors -- differences between Brand Finance and its
competitors.
Subject: Brand management
Subject: Value of intellectual property
SNIPER No.: 2013/02877
Author: Benedetti, Fabrizio de
Title: 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.
Summary: Application of the Max Planck Principles on Intellectual Property Provisions in Bilateral
and Regional Agreements to recently agreed or currently negotiated treaties -- Anti-Counterfeiting
Trade Agreement (ACTA) -- Trans-Pacific Partnership (TPP) -- EU-Canada Comprehensive
Economic and Trade Agreement (CETA) -- Pan-African Intellectual Property Organization (PAIPO)
-- WIPO Marrakesh Treaty on Copyright Exceptions for Visually Impaired Persons (VIP Treaty) -concludes that the principles, together with other best-practice guidelines for international IP
lawmaking, can be usefully applied to a whole range of agreements -- international lawmakers
adhering to the Principles can help make the global knowledge governance system more
transparent, participatory, legitimate and effective
Subject: International intellectual property law
Subject: International trade--treaties
SNIPER No.: 2014/01727
Author: Abel, Sally M.
Author: Gische, Emily M.
Title: As apps rise, are domain names the next AM radio?
Source: Asia IP: Protecting your Intellectual Assets. Vol. 6 No. 4, April 2014, pp. 53-54.
Summary: Massive expansion of the internet domain name space taking place -- whether Internet
Corporation for Assigned Names and Numbers (ICANN) has hastened the demise of its own
system by expanding and exploiting the domain space too fast -- practicalities of protection
mechanisms for brand owners -- Trademark Clearinghouse (TMCH) -- first step for brand owners
looking to curb third-party exploitation of their marks in the new gTLD space -- benefits and
disadvantages of using TMCH -- protection using the Uniform Rapid Suspension (URS) System -promoted by ICANN as cheaper and faster than Uniform Dispute Resolution Policy (UDRP) -problems with UDRP -- two predictions for domain names -- .com will remain the most important
gTLD -- apps, not domain names, are not the future -- people using apps on smartphones and
have less need to access the internet website directly -- domain names becoming irrelevant -cluttering the domain space with another 900-plus gTLDs could lead to misinformation and fraud -drive consumers to apps on smartphones --as domain names reduce in importance to app names,
SNIPER Bulletin – October 2014
Page 5 of 76
impact of the new gTLDs on enforcement strategy and resources reduces -- conflict and chaos
until then
Subject: Domain name registration
Subject: Domain name dispute resolution
Subject: Multimedia works
SNIPER No.: 2014/01836
Author: Jewell, Catherine
Title: Bacteria as a vehicle for drug delivery
Source: WIPO Magazine. No. 4, August 2014, pp. 7-10.
Summary: ActoGenix development of ground breaking new class of drugs to treat gastrointestinal,
immunological and metabolic diseases (such as Type 1 diabetes) -- why intellectual property is
important to the growth of the company's business -- advantages of the technology -- role for
intellectual property -- 12 patent families in 2006 -- necessary to attract finance to go forward -maintaining competitive advantage -- deals with big pharma -- multi-layered approach to IP -- IP
expertise -- concept of actobiotics -- perspective on open innovation -- PCT supporting SMEs -challenges -- tips for innovative companies.
Subject: Value of intellectual property--pharmaceutical industry
SNIPER No.: 2014/01234
Author: Elliott, Clive
Title: Bad faith: a matter of proof
Source: Intellectual Property Forum. No. 97, June 2014, pp. 35-43.
Summary: What bad faith is -- many commercial decisions are aimed at improving one party's
commercial position at the expense of competitors -- Unilever v Cussons dispute over the Radiant
trade mark -- disputes as to entitlement to registration arise in a number of contexts -- one is
whether the applicant is genuinely entitled to register the mark -- Chettleburgh v Seduce Group
Australia Pty Ltd -- Valley Girl Co Ltd v Hanama Collection Pty Ltd -- Neumann v Sons of the
Desert SL -- Hansens Beverage Company v Bickford's Australia Pty Ltd -- Lacoste v Crocodile
International Pte Ltd -- Zoggs International Limited v Sexwax Incorporated.
Subject: Trade mark ownership--case law--New Zealand
Subject: Trade mark registration--New Zealand
SNIPER No.: 2014/01703
Author: Moody, Don
Author: Nizami, Khurram
Title: The best way to fight
Source: Trademarks and Brands Online. Vol. 3 No. 2, 2014, pp. 42-43.
Summary: Internet Corporation for Assigned Names and Numbers (ICANN) -- created a new
Uniform Rapid Suspension System (URS) -- how it differs from the Uniform Domain-Name
Dispute-Resolution Policy (UDRP) -- where do the newly created post-delegation dispute
procedures fit in? -- is enforcement in country-code TLDs (ccTLDs) still important? -- what are the
options if you don't want to file a formal dispute?
Subject: Domain name dispute resolution
SNIPER Bulletin – October 2014
Page 6 of 76
Subject: Brand management
SNIPER No.: 2014/00155
Author: Aljehani, Khalil
Title: Better protection: the KSA's fight against counterfeits at the border
Source: World Intellectual Property Review. November-December 2013, pp. 36-37.
Summary: Kingdom of Saudi Arabia (KSA) -- acceded to the World Trade Organisation (WTO) -obliged to implement the WTO agreements -- agreement on Trade-Related Aspects of Intellectual
Property Rights (TRIPS) -- KSA has issued Regulations for Border Protection of IP Rights
'Trademarks & Copyrights' (RBPIPR) -- make it imperative on the customs department to
implement the order at border checkpoints to stop commodities and goods that infringe trade
marks and copyright from entering the country -- KSA's obligations -- procedures for border
protection of trade marks -- crime of smuggling counterfeits.
Subject: Customs--Saudi Arabia
Subject: Counterfeiting--Saudi Arabia
SNIPER No.: 2014/01613
Author: Rose, Nicholas
Author: Little, Lucy
Title: Betty Boop wins the High Court's heart
Source: Intellectual Property Magazine. July-August 2014, pp. 88-90.
Summary: England and Wales High Court -- Hearst Holdings Inc & Anor v AVELA Inc & Ors -judgments in the landmark character merchandising case relating to the iconic 1930s cartoon
character, Betty Boop -- trade mark infringement and passing off claims -- an invalidity claim for
bad faith and jurisdiction issues -- claimants were successful in both instances -- judgments
provided some key guidance on a range of issues -- instances where a famous name, character or
image on merchandise can be considered as a badge of origin -- defendants have appealed -background -- claims -- the defences -- the first judgment -- the second judgment -- practical
implications.
Subject: Trade mark infringement--case law--United Kingdom
Subject: Passing-off--case law--United Kingdom
SNIPER No.: 2014/00152
Author: Calvo, Paul A.
Title: Biosimilar biologics: is the US being left behind?
Source: World Intellectual Property Review. November-December 2013, pp. 24-27.
Summary: Approval for biosimilar biologics topic of great interest -- push for accessibility to
cheaper biologic medicines -- European Medicines Agency (EMA) clear leader in the area -- United
States Food and Drug Administration (FDA) lagging behind -- passage of the Patient Protection
and Affordable Care Act -- FDA implementing an abbreviated licensure pathway for biosimilars -guidance documents -- many states have begun passing legislation trying to regulate when
pharmacists can substitute a biosimilar for prescribed biologic -- biosimilar sponsors are forging
ahead with development -- poised to introduce the first biosimilar application in the US -- 17
approved biosimilar products on the market in Europe -- European Commission -- first approval of
a biosimilar monoclonal antibody, Inflectra.
SNIPER Bulletin – October 2014
Page 7 of 76
Subject: Pharmaceuticals--United States
Subject: Pharmaceuticals--Europe
SNIPER No.: 2014/01256
Author: Hinchliffe, Sarah
Title: A bit of this and a bit of that... what money can't buy in the patent system
Source: Australian Intellectual Property Law Bulletin. Vol. 27 No. 4, May 2014, pp. 111-115.
Summary: Virtual or private digital currency -- patentability of payment systems, algorithms and
software patents -- private digital currency -- Bitcoins -- use and regulation of private digital
currency -- patent eligibility and update in 2014 -- payment systems and Bitcoins -- algorithms -software, software-related patents and source code
Subject: Computer-related inventions--patentability--Australia
Subject: Financial services industry
SNIPER No.: 2014/01699
Author: Fuller, Stuart
Title: Brands in the palm of your hand
Source: Trademarks and Brands Online. Vol. 3 No. 2, 2014, pp. 34-35.
Summary: New generic top-level domain (gTLD) programme will alter the way companies engage
with customers in the digital world -- younger consumers interacting with brands using apps on
their smartphones -- brand owners will not be able to register each and every new gTLD -- decision
based on a defensive strategy and brand opportunities -- redefining its image -- creating sectorspecific websites -- grabbing some of the internet space that the unavailability of existing domain
suffixes has prevented them from using -- just over 100 gTLDs available for public registration -most successful domain names so far -- number of gTLD registries are still planning on
differentiating themselves -- appetite for the new gTLD programme -- first geographic domain
name.
Subject: Domain name registration
Subject: Domain names
SNIPER No.: 2014/01808
Author: Bolam, Peter
Title: Can business contracts be sold?
Source: Australian Intellectual Property Law Bulletin. Vol. 27 No. 7, August 2014, pp. 189-191.
Summary: General assignability of contracts -- whether a party to a business contract can assign
its rights and benefits without the consent of the non-assigning party -- intangible assets such as
trade marks and patents and business contracts -- could comprise a substantial part of the value of
the assets transferred in the business sale -- key points for understanding the assignability of
business contracts -- circumstances in which a business contract can be assigned -- obligations
versus benefits -- personal contracts -- benefits versus fruits of performance -- consent to
assignment -- implied consent -- express consent.
Subject: Contract law
Subject: Intellectual property assignment
SNIPER Bulletin – October 2014
Page 8 of 76
SNIPER No.: 2014/01831
Author: Yu, Peter K.
Title: Can the Canadian UGC exception be transplanted abroad?
Source: Intellectual Property Journal (Carswell). Vol. 26 No. 2, July 2014, pp. 175-203.
Summary: Canadian Copyright Modernization Act -- new exception for user-generated content
(UGC) in copyright law -- Hong Kong case study exploring whether this exception can be
transplanted abroad -- background of the digital copyright reform in Hong Kong -- benefits and
drawbacks of legal transplants -- compares the Canadian UGC exception against the U.S. Digital
Millennium Copyright Act -- the processes of evaluation, selection, adaptation, and assimilation
that are needed to make the transplant successful -- identifies key objections to the proposed
transplant, in particular those relating to the compliance with the TRIPS Agreement.
Subject: User-generated content--Canada
Subject: Copyright--reform--Hong Kong
Subject: Intellectual property law--reform
SNIPER No.: 2014/00167
Author: Khan, Sheema
Title: Canada and the Patent Prosecution Highway
Source: World Intellectual Property Review. November-December 2013, p. 80.
Summary: Patent Prosecution Highway (PPH)-- an international framework in which patent
prosecution may be accelerated in one jurisdiction if the claims in a corresponding application are
allowed by a second jurisdiction -- the two jurisdictions must have a bilateral PPH agreement -Canadian Intellectual Property office (CIPO) is part of the Mottainai PPH -- Canadian application
eligibility for the PPH --majority of PPH requests at CIPO used the US Patent and Trademark
Office (USPTO) as the office of earlier examination (OEE) -- few peculiarities of Canadian patent
law require some care when entering the PPH -- patent offices are hoping to launch a pilot global
PPH programme.
Subject: Patent litigation--procedure--Canada
Subject: Free trade--Canada
SNIPER No.: 2014/00168
Author: Cooper, Rodrigo
Title: Chilean trademark law and piracy
Source: World Intellectual Property Review. November-December 2013, p. 81.
Summary: Chilean intellectual property shows a strong record against trade mark piracy -- lack of
an explicit legal provision against piracy -- no provisions on the lack of use of a trade mark -- lack
of use of a registered trademark has no effect at all -- may not be used as the basis for a
cancellation action -- trade mark may be registered forever, as long as it is renewed every ten
years -- nobody can challenge it even if it has never been used -- favour trade mark piracy -- a
local registration may indefinitely block a legitimate trade mark owner from introducing his products
or services to Chile -- Chilean Supreme Court of Justice -- National Institute of Industrial Property
(INAPI) -- upholding oppositions or accepting cancellation actions concerning well-known foreign
trade marks applied-for or registered by third parties in Chile.
Subject: Trade marks--law and legislation--Chile
Subject: Piracy--Chile
SNIPER Bulletin – October 2014
Page 9 of 76
SNIPER No.: 2014/00169
Author: Gao, Xiang
Title: China's legislature adopts amendment to trademark law
Source: World Intellectual Property Review. November-December 2013, p. 82.
Summary: Major changes and additions to the Chinese Trademark Law -- expansion of nontraditional trade marks -- multi-class application -- applicant's chance to explain -- shortened
examination period -- renewal -- well-known marks -- simplified opposition procedures -- forbidding
of the copying of an earlier mark of a party who has commercial ties with the applicant -- principle
of good faith -- conflict of trade mark and trade name -- increased damages -- trade mark agencies.
Subject: Trade marks--reform--China
Subject: Trade marks--law and legislation--China
SNIPER No.: 2014/01524
Author: Husovec, Martin
Title: CJEU allowed website-blocking injunctions with some reservations
Source: Journal of Intellectual Property Law and Practice. Vol. 9 No. 8, August 2014, pp. 631-634.
Summary: Court of Justice of the European Union (CJEU) decision confirms that website-blocking
injunctions are compatible with European Union (EU) law -- UPC Telekabel Wien Case -- Article
8(3) of Directive 2001/29 -- film production companies had their films offered on the streaming
website 'kino.to' -- court order sought against internet service provider UPC Telekabel -- legal
history of case -- analysis of CJEU decision -- decision will have a different influence on the various
Member States -- application of decision to specific website-blocking injunction is subject to
interpretation -- practical significance.
Subject: Electronic copyright--case law--Europe
Subject: Carriage service providers--liability--Europe
Subject: Copyright infringement--case law--Europe
SNIPER No.: 2014/01523
Author: Rosati, Eleonora
Title: CJEU on communication to the public and national systems of collective rights management
Source: Journal of Intellectual Property Law and Practice. Vol. 9 No. 8, August 2014, pp. 630-631.
Summary: Court of Justice of the European Union (CJEU) ruled that TV and radio transmissions
in spa guest rooms are regarded as a communication to the public of those works and that EU law
did not prevent a monopoly granted by Czech national legislation to a single copyright collecting
society -- Ochranný svaz autorský (OSA) pro práva k dílům hudebním o.s. v Léčebné láznĕ
Mariánské Láznĕ a.s -- Article 3(1) of Directive 2001/29 -- Article 16 of Directive 2006/123 and
Articles 56 and/or 102 of the Treaty on the Functioning of the European Union -- OSA is an
authorized musical works copyright collecting agency in the Czech Republic -- spa refused to pay
fees claimed by OSA -- legal history -- analysis of CJEU decision -- national implementation of the
CRM Directive will mean that a monopoly regime granted by national laws is only a temporary
scenario -- practical significance.
Subject: Copyright--case law--Europe
Subject: Sound broadcasts--case law--Europe
Subject: Television broadcasts--case law--Europe
Subject: Copyright licensing societies--law and legislation--Europe
SNIPER Bulletin – October 2014
Page 10 of 76
Subject: Copyright licensing--case law--Europe
SNIPER No.: 2014/01612
Author: Hatchwell, Michael
Title: Clarification for unregistered Community designs
Source: Intellectual Property Magazine. July-August 2014, p. 87.
Summary: Court of Justice of the European Union (CJEU) -- Karen Millen Fashions Ltd v Dunnes
Stores, Dunnes Stores (Limerick) Ltd -- background to the case -- High Court in Ireland -- case
claimed that Dunnes had infringed its design rights under Regulation No 6/2002 on unregistered
Community designs -- Dunnes conceded that they had copied the articles -- remaining issue to be
litigated was Dunnes' claim that the KM articles were not protected under the Regulation due to a
lack of individual character -- High Court ruled against Dunnes -- Dunnes appealed to the Supreme
Court of Ireland -- Supreme Court dismissed some of the complaints raised by Dunnes, but
referred certain matters to the CJEU in 2013 -- CJEU provides useful clarification on the
Regulation -- indicates a desire aligned to the purpose of the legislation.
Subject: Industrial designs--case law--Europe
Subject: Industrial designs--law and legislation--Europe
SNIPER No.: 2014/01754
Author: Epperson, Ron J.
Author: Kassaraba, Myron
Title: Clean tech trends: intellectual property & transactions
Source: Les Nouvelles. Vol. 49 No. 2, June 2014, pp. 94-95.
Summary: Investment in clean energy -- collection of data and perspectives from thought leaders
in the clean tech market -- funding & transactions -- new investment in clean energy by sector -government funding and programs -- clean tech IPO market -- global M&A and IPO activity -global energy & environmental tech M&A -- acquisitions by company 2012/2013 -- bankruptcy -intellectual property patenting activity -- clean energy patent growth index by year -- FED litigation - wind -- licensing -- sector spotlight: wind patents -- case study Nest Labs, Inc. -- opportunities and
concluding remarks.
Subject: Environmental issues in intellectual property
Subject: Intellectual property industry--statistics
SNIPER No.: 2014/01328
Author: Moir, Andrew
Author: Montagnon, Rachel
Author: Newton, Heather
Title: Communication to the public: the CJEU finds that linking to material already "freely available"
cannot be restricted by copyright owners: Nils Svensson v Retriever Sverige AB (C-466/12)
Source: European Intellectual Property Review. Vol. 36 No. 6, 2014, pp. 399-400.
Summary: Nils Svensson v Retriever Sverige AB -- use of unauthorised hyperlinks by a third party
is to be considered a "communication to the public" -- right of communication to the public of a
copyright work being an exclusive right of the copyright owner -- Court of Justice of the European
Union (CJEU) decision -- implications of the decision -- provision of hyperlinks as references to
publicly available material.
SNIPER Bulletin – October 2014
Page 11 of 76
Subject: Copyright--law and legislation--Europe
Subject: Copyright infringement--case law--Europe
Subject: Electronic copyright--case law--Europe
SNIPER No.: 2014/01286
Author: Christie, Andrew, LL. M., Ph. D.
Author: Wright, Robin, 1963Title: A comparative analysis of the three step tests in international treaties
Source: IIC: International Review of Intellectual Property and Competition Law. Vol. 45 No. 4,
June 2014, pp. 409-433.
Summary: The three step test -- step one: limited or special case -- step two: no conflict with
normal exploitation -- step three: no prejudice to legitimate interests -- eight versions of a provision
in four current international treaties -- Berne Convention, WIPO Copyright Treaty, WIPO
Performances and Phonograms Treaty, and TRIPS Agreement -- define the permissible scope of
the exceptions and limitations to the exclusive rights with intellectual property regimes that may be
implemented in national law -- there is no one "three-step test" that is common to all instruments
and provisions and which has a common purpose and operation -- detailed comparison of each
element of each step across all implementations of the test -- similarities and differences in
wording and structure of the fundamental components of the steps of the test -- each version of the
test contains differences in meaning which have practical significance -- supports view that there is
no such thing as the three-step -- eight uniquely different three-step tests.
Subject: Intellectual property--treaties
Subject: International intellectual property law--interpretation
SNIPER No.: 2014/00880
Author: Ramalho, Ana
Title: Conceptualising the European Union's competence in copyright: what can the EU do?
Source: IIC: International Review of Intellectual Property and Competition Law. Vol. 45 No. 2,
March 2014, pp. 178-200.
Summary: European Union Treaties do not grant the EU a specific competence to intervene in the
field of copyright -- competence of the EU in copyright lawmaking -- analysis of EU's legal basis for
action -- suggests certain factors can influence the exercise of its competence -- factors contribute
to clarification of the division of powers between the EU and the Member States -- provide better
definition of how the EU should proceed -- can provide normative guidance absent from the main
competence norms -- a few limits can be imposed on EU action.
Subject: Copyright--law and legislation--Europe
Subject: Harmonisation of laws--Europe
SNIPER No.: 2014/01611
Author: Grubner, Judith
Title: Copyright expiration: it's elementary
Source: Intellectual Property Magazine. July-August 2014, p. 86.
Summary: United States Court of Appeals for the Seventh Circuit -- Leslie S Klinger v Conan
Doyle Estate, Ltd -- held that the first forty six Sherlock Holmes stories and four novels written by
Arthur Conan Doyle, published prior to 1923, are in the US public domain -- a work whose
SNIPER Bulletin – October 2014
Page 12 of 76
copyright has expired falls into the public domain -- can be copied and sold without obtaining a
licence from the owner of the expired copyright -- background to the case.
Subject: Copyright expiry--United States
Subject: Public domain--United States
SNIPER No.: 2014/01318
Author: Rosati, Eleonora
Title: Copyright in the EU: in search of (in)flexibilities
Source: Journal of Intellectual Property Law and Practice. Vol. 9 No. 7, July 2014, pp. 585-598.
Summary: European Union (EU) legislative framework and in particular Directive 2001/29 (InfoSoc
Directive) -- Directive 2001/29 as the main directive in EU copyright and the criticisms levelled at
this legislation -- national legislative freedom and the doctrine of EU pre-emption -- EU pre-emption
and InfoSoc exclusive rights -- Nils Svensson and others v Retreiver Sverige AB -- More
Entertainment AB v Linus Sandberg -- Court of Justice of the European Union (CJEU) case law
suggests that InfoSoc exclusive rights may not be altered -- EU pre-emption and InfoSoc
exceptions and limitations -- Member States have certain freedom to legislate with respect to
unharmonised rights, related exceptions, as well as neighbouring rights -- incorrect implementation
of the InfoSoc Directive and its consequences.
Subject: Copyright--law and legislation--Europe
Subject: Copyright--reform--Europe
Subject: Copyright--harmonisation--Europe
Subject: Copyright systems--Europe
SNIPER No.: 2014/01195
Author: Geiger, Christophe
Author: Izyumenko, Elena
Title: Copyright on the human rights' trial: redefining the boundaries of exclusivity through freedom
of expression
Source: IIC: International Review of Intellectual Property and Competition Law. Vol. 45 No. 3, May
2014, pp. 316-342.
Summary: Courts have traditionally considered copyright to be immune to any external freedom of
expression review -- important rulings from the European Court of Human Rights (ECtHR) in 2013
-- judgment against France in the Ashby Donald case -- admissibility decision in the Swedish
"Pirate bay" case -- both rulings held that use of a copyrighted work can be considered an exercise
of the right to freedom of expression even if it the use is an infringement and is profit-motivated -Court accepts the idea that the compatibility of any copyright enforcement measure with Article 10
of the European Convention on Human Rights (ECHR) needs to be evaluated on a case-by-case
basis -- freedom of expression might be used in the future by courts to redefine the boundaries of
exclusivity -- examination of ECtHR case law -- what guidelines should be applied by judiciary to
solve the conflict between copyright and freedom of expression.
Subject: Copyright infringement--Europe
Subject: Free speech--Europe
Subject: Human rights--Europe
SNIPER Bulletin – October 2014
Page 13 of 76
SNIPER No.: 2014/01716
Author: Westkamp, Guido
Title: Copyright reform and necessary flexibilities
Source: IIC: International Review of Intellectual Property and Competition Law. Vol. 45 No. 5,
August 2014, pp. 497-499.
Summary: Criticism of reform of the 2001 Copyright Directive -- some stakeholders, including
library and archive associations, have withdrawn from negotiations -- concern that consultations
concentrated mainly on issue of licences, not whether limitations should be strengthened -- need
complete rethinking and reform of the Directive in line with rapid advances in technology -changing need to recognise interest in competition and access to works
Subject: Copyright--law and legislation--Europe
SNIPER No.: 2014/00172
Author: Nylund, Hanna
Author: Battistelli, Davide
Title: Copyright under review
Source: World Intellectual Property Review. November-December 2013, p. 85.
Summary: Copyright in Finland is in flux -- European Union (EU) Directives are about to be
implemented -- Ministry of Education and Culture (MEC) is preparing a new government bill that
would address the private copying levy system and enforcement measures against unauthorised
use of copyrighted material online -- implementing the EU Directives -- upcoming changes to the
Copyright Act.
Subject: Copyright--law and legislation--Finland
Subject: Copyright--reform--Finland
SNIPER No.: 2014/01806
Author: Henderson, Joshua
Author: Bajracharya, Lani
Title: Cost issues in IP litigation
Source: Australian Intellectual Property Law Bulletin. Vol. 27 No. 7, August 2014, pp. 179-184.
Summary: Commencing proceedings -- interlocutory injunctions -- genuine steps to attempt to
resolve disputes -- conduct during proceedings -- rechallenging validity -- prolonging the dispute or
failing to make admissions -- expert evidence -- nominal damages -- offers to settle -- formal offers
under Federal Court Rules 2011 (Cth) (FCR) -- Calderbank offers -- assessment process -- bill of
costs -- gross-sum assessment.
Subject: Intellectual property litigation--costs--Australia
Subject: Dispute resolution--Australia
SNIPER No.: 2013/02830
Author: Verheijen, Pauline
Title: Counterfeiting: it's time to step up the fight
Source: World Intellectual Property Review. September-October 2013, pp. 112-115.
SNIPER Bulletin – October 2014
Page 14 of 76
Summary: Preparing the business case -- budgeting for anti-counterfeiting activity -- measuring
the threat -- targeting and costing action -- measuring return on investment -- getting the right
support
Subject: Counterfeiting
Subject: Piracy
SNIPER No.: 2014/01666
Author: Eliades, Dimitrios G.
Title: Criminal prosecution for IP offences: the reality
Source: Australian Intellectual Property Law Bulletin. Vol. 27 No. 6, July 2014, pp. 166-168.
Summary: Copyright owner of numerous photographs of articles and their individual detailed
descriptions marketed its wares on eBay -- competitor used identical images and essentially the
same descriptions -- copyright
owner sent the usual cease-and-desist communication alleging infringement of private rights and
contravention of consumer protection provisions -- no result -- an interlocutory injunction was
secured -- very early mediation was sought -- mediation was not successful -- applicant filed its
statement of claim -- respondents failed to file a defence -- applicant moved for default judgment
under r 5.23 of the Federal Court Rules 2011 (Cth) for the failure to comply with an order -corporate respondents went into voluntary liquidation and the individual into voluntary bankruptcy -immediate impact -- the problem -- relevant copyright provisions.
Subject: Criminal law
Subject: Copyright enforcement
SNIPER No.: 2014/01232
Author: Wang, Szu-Yuan
Title: Definition, characteristics, and justifications: an attempt to construct an analytical framework
of intellectual property
Source: Intellectual Property Forum. No. 97, June 2014, pp. 16-27.
Summary: Attempt to construct a working analytical framework for the concept of intellectual
property (IP) -- by examining three aspects of the IP concept -- terminology and definition, shared
characteristics, and justifications -- IP is still a concept in debate -- term has been used in different
senses in different contexts -- no international treaty has succeeded in providing a general
definition of it -- commentators also disagree on the function of, and rationales behind, the
institution -- different IP worldviews bear academic significance but also policy consequences -- the
affect understanding as to what could be legitimately protected as IP as well as why and how
should it be protected.
Subject: Intellectual property--research
Subject: Intellectual property rights
SNIPER No.: 2014/00183
Author: Chen, Candy K. Y.
Author: Chen, Crystal J.
Title: Determining inventive step
Source: World Intellectual Property Review. November-December 2013, p. 97.
SNIPER Bulletin – October 2014
Page 15 of 76
Summary: Inventive step of an invention always takes centre stage when prosecuting patent
applications or enforcing patent rights in Taiwan -- when an invention filed for a patent can be
easily accomplished by a person having ordinary skill in the art (PHOSITA) based on the prior art
before filing, the invention will be regarded as lacking an inventive step over the prior art, even
though it may be novel -- Patent Examination Guidelines specify five steps to facilitate the
determination of inventive step -- secondary factors -- courts rely heavily on a literal interpretation
of Article 22 of the Patent Act -- whether the cited references teach or disclose the "technical
features" of the patent at issue is what the Taiwan IP Office or the courts actually consider
-- patent disputes.
Subject: Inventive step--Taiwan
Subject: Patent applications--Taiwan
SNIPER No.: 2014/01665
Author: Hinchliffe, Sarah
Title: Determining patent eligibility for computer implemented inventions in 2014
Source: Australian Intellectual Property Law Bulletin. Vol. 27 No. 6, July 2014, pp. 160-165.
Summary: Software patents and business method patents have been "available" in Australia for
years -- generally patentable in Australia, subject to restrictions that may be described as similar to
those imposed in the United States -- legislative and administrative background -- The Australian
Patent Office (APO) -- determining patent eligibility in Australia -- High Court's celebrated judgment
in National Research Development Corp v Commissioner of Patents -- Federal Court in RPL
Central Pty Ltd v Commissioner of Patents -- reaffirmed that software patents are available in
Australia -- remain questions concerning the ability to determine with clarity the patent eligibility of
certain computer-implemented inventions -- CLS Bank v Alice -- where are we now? -- scope for
change?
Subject: Computer-related inventions--patentability--Australia
Subject: Patentability--law and legislation--Australia
SNIPER No.: 2014/01255
Author: Stiel, Miriam
Author: Kovarsky, Julia
Title: Distinctiveness dilemma of "Dental Excellence" for dentistry: Agapitos v Habibi
Source: Australian Intellectual Property Law Bulletin. Vol. 27 No. 4, May 2014, pp. 108-110.
Summary: Descriptive phrase used in a business name -- Dr Agapitos operated a dental practice
in Western Australia under the name "Dental Excellence" -- Dr Habibi traded under the name
"South Perth Dental Excellence" -- claims of misleading or deceptive conduct, trade mark
infringement and passing off by Dr Agapitos -- denied by Dr Habibi with counterclaims that the
"Dental Excellence" mark does not distinguish services and that it should be cancelled -- whether
the trade mark was valid -- whether there was infringement or passing off -- whether misleading or
deceptive conduct.
Subject: Trade mark distinctiveness--Australia
Subject: Trade mark infringement--case law--Australia
Subject: Passing-off--Australia
SNIPER No.: 2014/00161
SNIPER Bulletin – October 2014
Page 16 of 76
Author: Gómez, Jorge
Author: Donatlan, Antonio
Title: Do you want to import products to Mexico?
Source: World Intellectual Property Review. November-December 2013, pp. 64-67.
Summary: In Mexico every product or service has to comply with requirements in order to ensure
the fulfilment of quality, information and safety -- regulatory measures can be imposed by various
agencies -- importance of
the official Mexican standards (NOMs) -- advertising restrictions and regulations -- other important
authorisations -- medicines, health supplies, food, alcohol, tobacco products, plant nutrients or
pesticides.
Subject: International trade--Mexico
Subject: Standards (Technical)--law and legislation--Mexico
SNIPER No.: 2014/01800
Author: McGeough, Gemma
Title: Does 3D printing add a new dimension to claim drafting?
Source: CIPA: the journal, incorporating the 'Transactions', of the Chartered Institute of Patent
Agents. Vol. 43 No. 7, July 2014, pp. 389-390.
Summary: Challenges faced by businesses in preventing unauthorised copying -- unauthorised
copying of digital media -- development of three dimensional (3D) printing technology -- enables
the production of a three dimensional object from a digital file -- how may IP owner's rights be
protected -- patent protection in Europe and the U.S. -- future level of adoption of 3D printing -significant impact on patent owners -- indications from decision of the US International Trade
Commission suggests patent protection from design files may be possible in the U.S. -- in respect
of computer program claims suggests there is scope to protect design files for 3D printing in
Europe.
Subject: Three dimensional printing--Europe
Subject: Three dimensional printing--United States
Subject: Intellectual property rights--manufacturing and processing industry
SNIPER No.: 2014/01811
Author: Campisi, Nancy
Title: Does a copyright sub-licence survive the termination of a head licence?: VLM Holdings Ltd v
Ravensworth Digital Services Ltd.
Source: Australian Intellectual Property Law Bulletin. Vol. 27 No. 7, August 2014, pp. 198-199.
Summary: Whether a sub-licence survives termination of a head licence depends on -a number of
things -- whether the sub- licence must fail if the head licence is terminated -- once the rights of the
sub-licensor come to an end, then so must any sub-licensed rights derived from the existence of
the head licence -- VLM Holdings Ltd v Ravensworth Digital Services Ltd -- English High Court
ruled that the rights of the sub-licensee continued despite the termination of the licence to the sublicensor, at least in certain circumstances -- background -- Court's decision.
Subject: Intellectual property licensing--case law--United Kingdom
Subject: Copyright--case law--United Kingdom
SNIPER No.: 2014/01704
SNIPER Bulletin – October 2014
Page 17 of 76
Author: Beltran, Anthony
Title: The domain name gold rush
Source: Trademarks and Brands Online. Vol. 3 No. 2, 2014, pp. 44-45.
Summary: New generic top-level domain (gTLD) land grab -- important not to look past generic
domain names, such as .com .net and .org and the hundreds of country-code TLDs (ccTLDs) -growth of the existing domain name market -- tools created for trade mark owners to enforce their
rights in the domain name system -- main types of dispute resolution -- recovering ccTLDs in
foreign jurisdictions -- acquire the infringing domain name through an anonymous acquisition -develop a strategy for registering domain names -- be proactive about registering key domain
names in key jurisdictions -- evaluate the marketplace, opportunities and risks -- consult with
corporate registrar to determine proper strategy and risks, guide you through various requirements,
and organise domain name launches and acquisitions.
Subject: Domain names
Subject: Trade mark enforcement
SNIPER No.: 2014/00162
Author: Alvarez, Andre
Title: Early warning: filing patents in Brazil
Source: World Intellectual Property Review. November-December 2013, pp. 68-69.
Summary: Peculiarities in the field of industrial property in Brazil -- lack of knowledge can result in
involuntary restrictions in the scope of the intended protection -- important to be aware of some of
the processes practised by the Brazilian patent and trademark office (INPI) -- current backlog of
applications -- methods to shorten the processing time of an application -- priority examination -additional examiners hired -- prosecution of an application -- INPI is reluctant to accept
amendments made after examination is requested -- filing divisional applications.
Subject: Patent filing--Brazil
Subject: Patent systems--Brazil
SNIPER No.: 2014/00171
Author: Holme, Marianne
Title: The effect of Rule 36
Source: World Intellectual Property Review. November-December 2013, p. 84.
Summary: New divisional system under Rule 36 European Patent Convention (EPC) -- new rule
caused concern among applicants -- calculation of the time limit is not transparent to nonprofessional representatives -- unduly restrictive on applicants -- particularly restrictive in view of
the increased restriction on the possibility of changing claim scope in the examination to cover
what is deemed unsearched subject matter -- expensive because applicants are forced to file
numerous divisional applications to preserve the right for examination of features of the
specification -- increases the workload of the European Patent Office (EPO) -- prior articles may
turn up from the examination of the patent family -- consultation for users to comment on the new
divisional application system -- the period of 24 months for filing a divisional is too short for many
cases -- short deadline does not harmonise with divisional filing systems outside EPO -- EPO
proposes to amend Rules 36 and 135 -- proposes to establish an additional fee.
Subject: Divisional applications (Patents)--procedure--Europe
Subject: Divisional applications (Patents)--reform--Europe
SNIPER Bulletin – October 2014
Page 18 of 76
SNIPER No.: 2014/00180
Author: Delion, Alain C.
Title: Effective protection of appellation of origin in Peru
Source: World Intellectual Property Review. November-December 2013, p. 94.
Summary: Appellation of origin is a special kind of geographical indication -- used on products
which have a specific quality or characteristics that are due to the geographical environment in
which they are produced -- unique and distinctive quality -- they generate rights -- use of the
appellation by any other marketer is prohibited -- producers who qualify for the appellation of origin
are obliged to maintain the highest quality and traditional production of the product -- most
important advantage of the appellation of origin for consumers -- producers get legal protection
against the production or processing of such products in other areas -- in Peru, only appellations of
origin recognised by the National Institute for the Defense of Competition and IP (INDECOPI) are
protected -- treaty between Peru and country of origin required for appellations of origin from
foreign countries to be protected -- foreign appellation of origin 'Solingen'.
Subject: Geographical indicators--case law--Peru
SNIPER No.: 2014/01840
Author: Abdel-Latif, Ahmed
Title: Egypt and Tunisia underscore the importance of IP
Source: WIPO Magazine. No. 4, August 2014, pp. 38-40.
Summary: Egypt and Tunisia enacted new constitutions in 2014 -- both give high priority to
building a knowledge economy and provide for the protection of intellectual property rights -recognising the importance of the knowledge economy -- similarities and differences in their IP
clauses -- challenge of implementation through national laws and judicial decisions -- critical to
ensuring a balanced approach to IP protection is adopted
Subject: Intellectual property systems--Egypt
Subject: Intellectual property systems--Tunisia
SNIPER No.: 2014/01830
Author: Rosen, Daniel
Title: Electronic dance music, creativity and user generated content: a Canadian perspective
Source: Intellectual Property Journal (Carswell). Vol. 26 No. 2, July 2014, pp. 153-173.
Summary: Creative practices in electronic dance music (EDM) -- modern popular musical genre
somewhat removed from copyright law from a Canadian perspective -- recording practice,
electronic dance music and copyright law -- amendments to the Canadian Copyright Act
addressing creative practices -- addition of new section the non-commercial user generated
content (UGC) exception -- case for broader definition of musical creativity -- interaction between
the new non-commercial UGC exception and the Canadian EDM community.
Subject: Neighbouring rights--reform--Canada
Subject: Musical works--law and legislation--Canada
Subject: User-generated content--Canada
Subject: Copyright--law and legislation--Canada
SNIPER No.: 2014/01518
Author: Fields, Désirée
SNIPER Bulletin – October 2014
Page 19 of 76
Title: Enhanced distinctiveness irrelevant to assessing likelihood of confusion
Source: Journal of Intellectual Property Law and Practice. Vol. 9 No. 8, August 2014, pp. 623-624.
Summary: Court of Justice of the European Union (CJEU) rules that once marks are found to be
dissimilar, likelihood of confusion is impossible and therefore enhanced distinctiveness of an earlier
mark is of no consequence -- OHIM v riha WeserGold Getränke -- Lidl filed a Community trade
mark (CTM) application for the word mark WESTERN GOLD -- WeserGold filed an opposition
alleging likelihood of confusion with its word mark WESERGOLD -- legal history -- analysis of
CJEU decision -- Article 8(1)(b) of the CTM Regulation 40/94 (207/2009) -- situation under which
enhanced distinctiveness would be a relevant factor in determining whether there is likelihood of
confusion -- practical significance.
Subject: Confusing similarity--case law--Europe
Subject: Trade mark distinctiveness--case law--Europe
SNIPER No.: 2013/03002
Author: Long, Clinton R.
Title: Enjoy your TRIPS: the problems with TRIPS retaliation under Article 22.3 of the DSU
Source: Journal of the Patent and Trademark Office Society. Vol. 95 No. 3, 2013, pp. 257-270.
Summary: Dispute Settlement Understanding (DSU) -- World Trade Organization (WTO) dispute
resolution agreement -- DSU retaliation remedy and the TRIPS Agreement -- Article 22 of the DSU
-- TRIPS suspensions -- Article 22.3 utility and purpose in the WTO system -- Article 22.3
shortcomings -- proposals for modification -- proposes suspending rights to bring claims at the
WTO for noncompliant countries.
Subject: World Trade Organization
Subject: Agreement on Trade-Related Aspects of Intellectual Property Rights (1994 April 15)
Subject: Intellectual property--treaties
Subject: Dispute resolution
Subject: Trade--treaties
SNIPER No.: 2014/01756
Author: Cisneros, Mario
Title: EU state aid policy: a model to assess intellectual property rights and knowledge
dissemination in R&D cooperation: Part 1
Source: Les Nouvelles. Vol. 49 No. 2, June 2014, pp. 116-123.
General Note: First in a series of two articles, see 2014/01828 (Part 2)
Summary: Cooperation between research organisations and industrial organisations to facilitate
the flow and use of scientific and technological knowledge -- research and development in the
European Union -- current framework for state aid for R&D -- dynamic efficiency and systemic
failures -- competition model -- ownership of intellectual property rights -- the Leipzig Halle case -distortion of competition and IPRs ownership -- general of market power and IPRs ownership -distortion of dynamic incentives and IPRs ownership -- maintaining inefficient market structures
and allocation of IPRs -- selective advantage of IPRs ownership -- adverse effects on trade and
allocation of IPRs.
Subject: Research and development--policy--Europe
Subject: Technology transfer--analysis--Europe
SNIPER Bulletin – October 2014
Page 20 of 76
SNIPER No.: 2014/01828
Author: Cisneros, Mario
Title: EU state aid policy: a model to assess intellectual property rights and knowledge
dissemination in R&D cooperation: Part 2
Source: Les Nouvelles. Vol. 49 No. 3, September 2014, pp. 206-214.
General Note: Second article in a series of two. See also 2014/01756 (Part 1).
Summary: How state aid should be applied to knowledge dissemination -- licensing practices
involved in publicly funded R&D cooperation -- alternatives for the rules on knowledge
dissemination -- benefits generated by knowledge spillovers -- problem of asymetric information
and coordination and network failures.
Subject: Research and development--policy--Europe
Subject: Technology transfer--analysis--Europe
SNIPER No.: 2014/01610
Author: Clark, Simon
Title: The ever-widening scope of the temporary copies exception
Source: Intellectual Property Magazine. July-August 2014, pp. 83-85.
Summary: Court of Justice of the European Union (CJEU) -- Public Relations Consultants
Association Ltd v Newspaper Licensing Agency Ltd and Ors -- ruled that a copy of a page from a
website that appears on the user's computer screen and the copies in the internet 'cache' of their
computer, made in the course of viewing a website, satisfy the first three conditions laid down in
the exception against copyright infringement for certain temporary copies -- concluded that the
conditions laid down in Article 5(5) of the Copyright Directive 'the Three Step Test' were also
satisfied -- reasons given by the CJEU in its judgment -- potentially far reaching consequences for
rightsholders.
Subject: Fair use (Copyright)--case law--Europe
Subject: Copyright--law and legislation--Europe
SNIPER No.: 2014/01193
Author: Acquah, Daniel
Title: Extending the limits of protection of pharmaceutical patents and data outside the EU: is there
a need to rebalance?
Source: IIC: International Review of Intellectual Property and Competition Law. Vol. 45 No. 3, May
2014, pp. 256-286.
Summary: Patent term extension and data exclusivity in the European Union -- chapters on IP that
extend patent terms and data exclusivity in recent EU Free Trade agreements (FTAs) with
developing countries -- increases length of protection given to existing products and limits generic
market entry -- issue of "cross-pollination" of laws -- argues that, as similar laws exist in the internal
regime of the EU, incorporating them into the EU would not be technically too difficult -implementation in developing countries would cause difficulties to health and economic sectors -proposes that developing countries should not be forced to adopt these laws through FTAs, but if
adopted, there should be compulsory inclusion of both a clause on transitional arrangements for
specific to IP and a clause clearly linking objectives for IP protection and enforcement -- balance
between promotion of technological innovation and access to medicine.
Subject: Patent extension--pharmaceutical industry--Europe
Subject: Patent extension--pharmaceutical industry--developing countries
SNIPER Bulletin – October 2014
Page 21 of 76
Subject: Data exclusivity--Europe
Subject: Data exclusivity--developing countries
Subject: Free trade--treaties
SNIPER No.: 2014/00173
Author: Marie, Aurélia
Title: Extension of IP rights to French Polynesia
Source: World Intellectual Property Review. November-December 2013, p. 86.
Summary: French industrial property rights have not covered the territory of French Polynesia -French Polynesia has now adopted laws and regulations to fill the legal void -- applications will be
possible and in the meantime transitional provisions have been included in the texts -- automatic
recognition -- optional recognition -- new provisions apply equally to patents, utility certificates,
topographies of semiconductor products, trade marks and designs -- Community trade marks as
well as International IP rights are not covered by the provisions of the Polynesian law -- Community
trade marks are protected in Polynesia under the French Code of Industrial Property.
Subject: Intellectual property law--reform--French Polynesia
Subject: Intellectual property rights--reform--French Polynesia
SNIPER No.: 2013/03001
Author: McCombs, David L.
Author: McComas, Debra J.
Author: Ehrich, Thomas H.
Author: Sivinski, Stephanie N.
Title: Federal Circuit appeals from the PTAB: a new game or just the same old practice?
Source: Journal of the Patent and Trademark Office Society. Vol. 95 No. 3, 2013, pp. 240-256.
Summary: Patent and Trademark Appeal Board (PTAB) -- appellate practice -- examines
strategies and issues related to PTAB proceedings -- parallel proceedings occurring among
different patent dispute venues -- building a proper record in the PTAB -- appealing PTAB
discovery decisions -- expected appellate standards of review for PTAB decisions -- effect of
divergent decisions -- obtaining a stay of district court litigation -- the issue of estoppel -- Federal
Circuit Appeals and anticipated timing with respect to rulings.
Subject: Patent and Trademark Appeal Board
Subject: Legal procedure--United States
Subject: Patent litigation--United States
SNIPER No.: 2014/01260
Author: Cade, Anita
Author: Dalrymple, Amber
Title: Federal Court holds Seafolly "knock-offs" not on: Seafolly Pty Ltd v Fewstone Pty Ltd
Source: Australian Intellectual Property Law Bulletin. Vol. 27 No. 5, June 2014, pp. 131-137.
Summary: Federal Court ordered that Fewstone Pty Ltd, trading as City Beach Australia, pay
Seafolly Pty Ltd damages for infringement of Seafolly's copyright in a number of artistic works -works used by Seafolly in the design and manufacture of a swimwear line -- court discerned an
SNIPER Bulletin – October 2014
Page 22 of 76
objective similarity between the corresponding City Beach and Seafolly works -- City Beach had
deliberately acquired Seafolly garments and images of Seafolly garments and had provided them
to its designers with instructions to copy and use them for "inspiration" -- "originality" and
"substantiality" -- Seafolly's Senorita artwork, the copyright/design overlap -- shirring and smocking
-- damages.
Subject: Copyright litigation--fashion and design industry--Australia
Subject: Copyright--case law--Australia
SNIPER No.: 2014/01521
Author: Hood, Graham A.
Title: Federal Court of Canada promotes a purposive interpretation of the remedial provisions of
the Trade-marks Act, with a view to providing greater access to relief
Source: Journal of Intellectual Property Law and Practice. Vol. 9 No. 8, August 2014, pp. 626-628.
Summary: Definition of 'interested person' relaxed by Federal Court of Canada making litigation
easier under Canada's Trade-marks Act -- Victoria's Secret Stores Brand Management, Inc v
Thomas Pink Limited -- section 53.2 'interested person' and Section 57 'person interested' under
the Act -- dispute over trade marks consisting of or containing the word 'PINK' -- Thomas Pink
Limited did not file a defence in response to the plaintiffs action but argued that the action should
be dismissed as the plaintiff was not an "interested person" -- Federal Court did indeed find
Victoria's Secret to be an interested person -- practical significance.
Subject: Trade mark infringement--case law--Canada
Subject: Trade mark litigation--case law--Canada
SNIPER No.: 2014/01737
Author: Gorbylev, Sergei
Title: Fighting online copyright piracy: are there any alternatives to traditional litigation?
Source: European Intellectual Property Review. Vol. 36 No. 7, 2014, pp. 413-417.
Summary: Online copyright piracy -- World lntellectual Property Organization (WIPO) dispute
settlement system -- design a mandatory alternative dispute resolution mechanism in the sphere of
online copyright piracy -- complainant to initiate a procedure which can run its course even if the
counterparty refuses to participate -- main features of the existing mechanisms for those who seek
protection of their intellectual property rights -- reforms to traditional copyright protection that have
been already proposed -- author's proposals to reform current enforcement procedures.
Subject: Dispute resolution
Subject: Copyright owners' rights--reform
Subject: Copyright infringement--law and legislation
Subject: Piracy
SNIPER No.: 2014/01706
Author: Petillion, Flip
Title: Filling the NTIA void
Source: Trademarks and Brands Online. Vol. 3 No. 2, 2014, pp. 50-52.
Summary: US National Telecommunications and Information Administration (NTIA) -- wants to
hand over key internet domain name functions to the global multi-stakeholder community -- NTIA
asked Internet Corporation for Assigned Names and Numbers (ICANN) to consult stakeholders in
SNIPER Bulletin – October 2014
Page 23 of 76
order to develop a proposal for transitioning the NTIA's role in coordinating the internet's domain
name system (DNS) -- NTIA's responsibilities -- NTIA requires broad community support and for a
proposal to address four principles -- can ICANN cope with the task? -- the meaning of
accountability.
Subject: Internet Corporation for Assigned Names and Numbers
Subject: Domain names
SNIPER No.: 2014/01803
Author: Cole, Paul, 1946Title: First published comments on the Myriad-Mayo patent eligibility guidance
Source: CIPA: the journal, incorporating the 'Transactions', of the Chartered Institute of Patent
Agents. Vol. 43 No. 7, July 2014, pp. 397-399.
Summary: Submissions sought from members of the public by US Patent and Trademark Office in
relation to interpretation of the impact of relevant US Supreme Court precedent -- legal and
technical issues involved in subject matter eligibility -- laws of nature, natural resources and natural
products -- invites members of the public who believe Supreme Court decisions could be
implemented in an alternative manner from the approach taken in the Guidance -- comments
expected from major organisations such as AIPLA and IPO, possibly CIPA.
Subject: Patenting of life forms--United States
Subject: Legal procedure--United States
SNIPER No.: 2014/01519
Author: Jackson, Deborah R. C.
Title: A five-star debate
Source: Journal of Intellectual Property Law and Practice. Vol. 9 No. 8, August 2014, pp. 624-625.
Summary: High Court of Australia considers the inherent distinctiveness of laudatory foreign word
trade marks -- Cantarella Bros Pty Limited v Modena Trading Pty Ltd -- Cantarella's registered
trade marks CINQUE STELLE and ORO for coffee -- trade mark words translated as 'Five Star'
and 'gold' in Italian respectively -- Cantarella sued Modena -- Modena argued that trade mark
registrations should be cancelled as each mark only described the standard of the coffee -Modena felt that its own use of the words in question were merely descriptive -- Federal Court
found for Cantarella -- Full Federal Court however reached the opposite conclusion -- this question
is a first for the High Court and its verdict is much anticipated.
Subject: Trade mark infringement--case law--Australia
Subject: Trade mark distinctiveness--case law--Australia
Subject: Passing-off--case law--Australia
Subject: Trade mark validity--Australia
SNIPER No.: 2014/00159
Author: Köllner, Malte
Title: Fixed patent prosecution fees are the future
Source: World Intellectual Property Review. November-December 2013, pp. 56-59.
Summary: Number of foreign patent filings continues to increase globally -- reasons to optimise
prosecution -- costs are an important issue -- possible solution for reducing costs and optimising
SNIPER Bulletin – October 2014
Page 24 of 76
prosecution -- outsourcing to a well-known global player in intellectual property (IP) law -- whether
a flat-fee prosecution service is possible
Subject: Patent litigation--costs
Subject: Patent filing
SNIPER No.: 2014/01693
Title: Fluid trademarks: keeping them watertight
Source: Trademarks and Brands Online. Vol. 3 No. 2, 2014, pp. 12-15.
Summary: Fluid trade marks used by brands such as Google -- fluid trade marks are those
presented in an unconventional way -- reinterpretation of the standard Google logo, the "Google
doodle" -- invite interaction and can transform a brand's engagement with a customer into a two
way relationship -- offer a way for established brands to refresh or update their marks -- present a
trade-off between brand dynamism and integrity -- an excellent marketing tool -- allow brands to
evolve and stay relevant -- the "Google doodle" -- logos as billboards -- Absolut vodka -- risks of
introducing other companies' well-known imagery into an existing mark -- fluid marks are a
potentially dangerous thing to do if your trade mark is weak or not well known -- Channel 4 -- it's
not always necessary to protect a fluid mark -- type of protection depends on the 'shelf life' of the
mark -- register underlying mark -- option to register series marks -- copyright, unregistered and
registered design rights can be very important -- potential problems with non-use.
Subject: Brand management
Subject: Trade mark series
Subject: Non-traditional marks
SNIPER No.: 2014/01283
Author: Ghidini, Gustavo
Title: For a holistic and systemic approach to IP law
Source: IIC: International Review of Intellectual Property and Competition Law. Vol. 45 No. 4,
June 2014, pp. 381-382.
Summary: New technologies and forms of communication -- intellectual property regulatory
framework becoming increasingly more complicated -- at domestic, international and particularly
EU level -- "separatist" trend in rulemaking -- IP law based on separate compartments -- risk of
sacrificing important methodical guidelines of consistency and coherence -- avoiding open
contradictions within IP law -- risk of sacrificing interpreting IP law consistent with the constitutional
principles -- two fundamental liberties of freedom of enterprise and freedom of expression -principles should play a primary role under a systemic approach but could be lost in separatist
approach
Subject: Intellectual property law--philosophy
SNIPER No.: 2014/01615
Author: Vos Strache, Kyle
Title: The forgotten patent
Source: Intellectual Property Magazine. July-August 2014, pp. 94-95.
Summary: Design patent overview -- enforcement and infringement of design patents -- damages
for design patent infringement -- overlap between design patents and copyright and trade mark
applications -- strategy for in-house counsel.
SNIPER Bulletin – October 2014
Page 25 of 76
Subject: Industrial designs--United States
Subject: Industrial design infringement--United States
SNIPER No.: 2014/01717
Author: Yu, Ling
Author: Du, Weike
Title: From "dissimilarity" to "significant difference": recent developments and challenges in the for
design patents in China
Source: IIC: International Review of Intellectual Property and Competition Law. Vol. 45 No. 5,
August 2014, pp. 500-523.
Summary: China -- designs of industrial products mainly protected by patent law -- third
amendment to Chinese Patent Act in 2008 -- improved substantive requirements for design patent
grants in two ways -- introduction of "absolute novelty standard" -- substitution of "dissimilarity" with
"significant difference" -- changes and challenges in the substantive requirements for design
patents based on legislation, guidelines and case law -- focus on the new understanding of the
"normal consumer" as reference person -- change to comprehensive judgment approach
Subject: Industrial designs--law and legislation--China
Subject: Industrial design novelty--China
SNIPER No.: 2014/01841
Author: Bakshi, Ashish M.
Title: Gene patents at the Supreme Court: Association for Molecular Pathology v. Myriad Genetics
Source: Journal of Law and the Biosciences. Vol. 1 No. 2, June 2014, pp. 183-189.
Summary: Ruling in June 2013 that isolated naturally occurring sequences of genomic DNA
cannot be patented -- possibility left open of patenting complementary DNA which may result in
follow-on suits by Myriad -- patents on BRCA1 and BRCA2 -- DNA sequence claims -- method
claims -- implications -- several invalidated patents were due to expire in 2014 -- legal implications
-- whether a need for judicial specialisation.
Subject: Patenting of life forms--case law--United States
Subject: Gene patents
SNIPER No.: 2014/01320
Author: Loschelder, Michael
Title: Generalizations in the wording of a patent claim
Source: Journal of Intellectual Property Law and Practice. Vol. 9 No. 7, July 2014, pp. 605-606.
Summary: Drawing up patent claims -- s34(4) of the German Patent Act (PatG) -- clear and
complete disclosure of the invention is required in the patent application -- invention for reducing
blood sugar levels -- German Federal Court of Justice (BGH) allows the generalized listing of a
group of substances in the patent claim -- it is permissible to include substances which could be
listed without inventive effort -- practical significance.
Subject: Patent claims--case law--Germany
Subject: Patent specifications--Germany
SNIPER Bulletin – October 2014
Page 26 of 76
SNIPER No.: 2013/02823
Author: Janssen, Bernd Christian
Title: Getting prepared: the unitary patent
Source: World Intellectual Property Review. September-October 2013, pp. 94-95.
Summary: Creation of a European patent valid throughout the EU -- idea for a Community Patent
Convention (CPC) started in the 1970s and failed two attempts -- legislation approved in 2012 for
the unitary European patent (UP) and unified patent court (UPC) system -- 13 member states need
to ratify -- how the UP works
Subject: Patent systems--Europe
Subject: Patents--Europe
SNIPER No.: 2013/02828
Author: Chen, Jessica T. C.
Author: Wu, Peggy
Title: Getting up to speed: changes to the Taiwan Patent Act
Source: World Intellectual Property Review. September-October 2013, pp. 106-107.
Summary: Revised Taiwan Patent Act came into force in January 2013 -- novelty and the grace
period -- filing divisional applications -- reinstatement of priority claim and patent rights -- dual
invention/ utility model system -- design -- invalidation proceedings -- enforcement of patent rights
and damages -- patent term extension (PTE)
Subject: Patents--law and legislation
Subject: Patent owners' rights
Subject: Patents--Taiwan
SNIPER No.: 2014/00151
Title: A giant's perspective
Source: World Intellectual Property Review. November-December 2013, pp. 20-22.
Summary: Protecting IP rights a challenging task for pharmaceutical companies -- interview with
Jörg Thomaier, chief IP counsel at pharmaceutical company Bayer -- state of protection in
emerging jurisdictions -- challenges Bayer faces in asserting its intellectual property (IP) -tendency to implement patentability criteria that are too restrictive -- some countries link patent
decisions to local industrial policy objectives.
Subject: Intellectual property rights--pharmaceutical industry
SNIPER No.: 2014/01242
Title: Giving creators their fair share
Source: Trademarks and Brands Online. Vol. 3 No. 1, 2014, pp. 18-20.
Summary: International Confederation of Societies of Authors and Composers (CISAC) -- role is
to ensure the world's artists and creators get their fair share of royalties -- interview with general
counsel CISAC Gadi Oron -- type of relationship with members and industry -- what CISAC is
doing to fight online infringement -- challenges faced when collecting royalties outside the digital
sphere -- plans for the Asia Pacific office -- challenges faced in China -- expansion of work in the
legal and public affairs arena -- competition between the societies -- why 2012 was a record year
for collecting societies.
SNIPER Bulletin – October 2014
Page 27 of 76
Subject: International Confederation of Authors' and Composers' Societies
Subject: Copyright licensing societies
SNIPER No.: 2014/01813
Author: Schwab, Klaus, 1938Author: Sala-i-Martin, Xavier
Author: Barthe Eide, Espen
Author: Blanke, Jennifer
Author: Drzeniek Hanouz, Margareta 1971Author: Bilbao-Osorio, Beñat
Author: Browne, Ciara
Author: Corrigan, Gemma
Author: Crotti, Roberto
Author: Di Battista, Attilo
Author: Dreyer, Gaëlle
Author: Galvan, Caroline
Author: Geiger, Thierry
Author: Gutknecht, Tania
Author: Serin, Cecilia
Added author: World Economic Forum
Title: The global competitiveness report 2014-2015
Source: Global Competitiveness Report. 2014-2015.
General Note: Nineteenth report in a series.
Summary: Ranking of international competitiveness -- accelerating a robust recovery to create
productive jobs and support inclusive growth -- assessing progress toward sustainable
competitiveness -- business executive opinion survey -- country and economics profiles -- data
tables -- technical notes.
Subject: Competition (Economics)--reviews
SNIPER No.: 2014/01835
Author: Jewell, Catherine
Author: Wunsch-Vincent, Sacha
Title: Global innovation index: the human factor in innovation
Source: WIPO Magazine. No. 4, August 2014, pp. 35-36.
General Note: Global Innovation Index, see also 2014/01439.
Summary: Innovation -- economic growth and development -- global innovation index (GII)
rankings 2014 -- GII 2014 launched in Sydney -- country/economy profiles -- data tables -- in a
perfect world for innovation, who would do what -- rankings -- persistent innovation divide -developing countries lagging behind in terms of innovation performance -- Switzerland topped GII
rankings for the fourth consecutive year -- grounds for optimism -- valuable benchmarking tool to
analyse the innovation performance of different income groups and by region -- human factor in
innovation.
SNIPER Bulletin – October 2014
Page 28 of 76
SNIPER No.: 2014/01721
Author: Roberts, MacKenna
Author: Wall, Ivan B.
Author: Bingham, Ian
Author: Icely, Dominic
Author: Reeve, Brock
Author: Bure, Kim
Author: French, Anna
Author: Brindley, David A.
Title: The global intellectual property landscape of induced pluripotent stem cell technologies
Source: Nature Biotechnology. Vol. 32 No. 8, August 2014, pp. 742-748.
Summary: Whether freedom to research and innovate will be restricted as the induced pluripotent
stem cell (iPSC) field advances toward the clinic -- whether concerns are premature -- situation
rapidly changing -- global analysis focussing on the IP landscape for iPSC technologies -consideration of the broad landscape -- validity of increasing concerns over licensing practices for
this new field and possible solutions -- legal concern for IPSC technology is patent thickets not
patentability -- emergence of other forms of IP such as trade secrets that could erect barriers to
open and collaborative science
Subject: Research on life forms--analysis
Subject: Data mining--biotechnology industry
Subject: Patent licensing--biotechnology industry
SNIPER No.: 2014/00878
Author: Gürkaynak, Gönenç
Author: Güner, Ayşe
Author: Filson, Janelle
Title: The global reach of FTC v. Actavis: will Europe differ from the US approach to pay-for delay
agreements?
Source: IIC: International Review of Intellectual Property and Competition Law. Vol. 45 No. 2,
March 2014, pp. 128-160.
Summary: Pharmaceuticals -- reverse payment or pay for delay agreements between patentholding drug companies and their generic competitors -- conflict between patent law and
competition law policies -- US Supreme Court decision in Federal Trade Commission v Actavis
favoured objectives of competition law over patent law -- did not provide clear workable test for
lower courts -- situation in European Commission and other European jurisdictions -- whether other
jurisdictions will follow US approach under Actavis -- origins of reverse payment agreements -- US
case law -- analysis of the FTC v Actavis decision -- ongoing European investigations -- EU and
European Commission's announcement of fines in the Lundbeck case -- ways in which EU and
other jurisdictions might depart from or converge with US approach -- view that European
jurisdictions will share Supreme Court's view that antitrust objectives should take precedence over
patent law objectives
Subject: Pharmaceuticals--case law
Subject: Competition (Economics)--pharmaceutical industry
SNIPER Bulletin – October 2014
Page 29 of 76
SNIPER No.: 2014/00182
Author: Kitchen, Karen
Title: Grey goods: a matter of life or death
Source: World Intellectual Property Review. November-December 2013, p. 96.
Summary: Genuine articles manufactured by the actual manufacturer are imported into South
Africa -- manufacturer's labels have been removed and replaced with falsified labels which bear
fictitious serial numbers -- labels do not specify the electrical, oil and refrigerant information which
is critical to safe and efficient installation and operation of the goods, but which bear the
manufacturer's trade marks -- incorrect labelling or the omission of critical information on some
types of goods, could result in the end user's death -- legal considerations -- trade mark
considerations -- consumer protection -- unlawful interference.
Subject: Parallel importing--South Africa
Subject: Consumer protection--South Africa
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.
Summary: Analysis of the realities of negotiating IP provisions in agreements signed by South and
Central American countries -- Dominican Republic-Central American Free Trade Agreement
(CAFTA-RD) with the USA -- resulting imbalances following from IP rules primarily designed to
cater to the needs of export industries from the IP-demanding country -- TRIPS-plus standards
Subject: Free trade--treaties
Subject: International intellectual property law
SNIPER No.: 2014/01696
Title: High in the sky
Source: Trademarks and Brands Online. Vol. 3 No. 2, 2014, pp. 24-26.
Summary: Cloud computing -- many cloud subscribers use these services as their personal hard
drives -- growing potential for infringers -- what constitutes an infringement in the cloud? -- who
owns the content? -- who is accountable? -- every time a subscriber accesses a file stored in the
'cloud' they're connecting to the cloud service provider's remote server -- users can store any kind
of content here -- server is technically making copies of the file -- user may be liable for
infringement if they send a link to someone else's copyrighted content to another person without
permission -- infringement differences between United States and the United Kingdom -- private
copying exception in the UK -- question of content ownership in the digital context -- definition of
ownership in the digital world is in flux -- American Broadcasting Companies v Aereo case -whether Aereo's retransmissions of live TV programmes are "public performances" -- impact of the
case on cloud computing.
Subject: Electronic copyright--information technology industry
Subject: Copyright infringement--information technology industry
SNIPER No.: 2014/01807
Author: Thornton, Kara
SNIPER Bulletin – October 2014
Page 30 of 76
Title: Holy cow!: that's one expensive kebab
Source: Australian Intellectual Property Law Bulletin. Vol. 27 No. 7, August 2014, pp. 185-187.
Summary: Federal Court of Australia decision -- Halal Certification Authority Pty Ltd v Scadilone
Pty Ltd -- provided guidance as to the interpretation of the new provisions of the Trade Marks Act
1995 (Cth) -- set
out the circumstances in which "additional" or exemplary-style damages can be awarded for trade
mark infringements -- background to the case -- nominal damages -- additional damages -implications.
Subject: Trade mark infringement--case law--Australia
Subject: Damages--Australia
SNIPER No.: 2014/01732
Author: McLean, Jeffrey
Author: Ng, Stanley
Title: Hong Kong applies "Catnic" approach to short term patents
Source: Asia IP: Protecting your Intellectual Assets. Vol. 6 No. 5, May-June 2014, pp. 57-59.
Summary: Hong Kong High Court decision in SNE Engineering v. Hsin Chong Construction -confirms applicability of a purposive construction (("Catnic" approach) to claim interpretation for
Hong Kong patents -- Court found the patent invalid for lack of sufficient support, lack of novelty
and a search report inconsistent with the claim interpretation proposed by the patentee -- Catnic
approach refers to a 1982 decision of the United Kingdom House of Lords reported at [1982] RPC
183 -- patent must be read in a "purposive " manner that focuses on the essential features of the
patent -- facts of the case -- significance of the decision -- confirms applicability of the Catnic
principles to both English and Chinese language patents in Hong Kong -- highlights responsibility
of patentees of short term patents to provide appropriate search reports -- highlights importance of
having a quality patent specification
Subject: Patent infringement--case law--Hong Kong
Subject: Patent claims--case law--Hong Kong
SNIPER No.: 2014/01733
Author: Carmichael, Jason
Author: Williams, Rebecca
Title: Hong Kong court slashes cross-undertaking award
Source: Asia IP: Protecting your Intellectual Assets. Vol. 6 No. 5, May-June 2014, pp. 60-62.
Summary: Hong Kong Court of Final appeal ruling on damages for "loss of chance" -- MGA
Entertainment Inc v (1) Toys & Trends (Hong Kong) Limited (2) Cityworld Limited and (3) Jurg Willi
Kesselring -- facts of the case -- damages inquiry -- appeal decision -- costs -- key points for
litigators and their clients on expert evidence and cross-undertakings as to damages
Subject: Damages--case law--Hong Kong
Subject: Evidence--case law--Hong Kong
SNIPER No.: 2014/01804
Author: Lefstin, Jeffrey A.
Title: The hot-blast cases revisited
SNIPER Bulletin – October 2014
Page 31 of 76
Source: CIPA: the journal, incorporating the 'Transactions', of the Chartered Institute of Patent
Agents. Vol. 43 No. 7, July 2014, pp. 400-405.
Summary: Nineteenth century English patent law case Neilson v Hartford -- key innovation of the
industrial revolution concerning patent eligibility -- United States Supreme Court patent law -historical standard of patent-eligibility in the United States -- key US Supreme Court decisions such
as Parker v Flook -- Mayo v Prometheus -- patentability of inventions derived from the discovery of
breast cancer causing genes -- whether the Supreme Court mis-applied the rational in the hot blast
cases -- Alice Corp. v CLS Bank.
Subject: Patentability--case law--United States
SNIPER No.: 2014/01244
Author: Skrzypczak, Agnieszka
Title: How Cartier cancelled a rival Polish trade mark
Source: Trademarks and Brands Online. Vol. 3 No. 1, 2014, pp. 34-35.
Summary: Cartier International owns a number of trade mark registrations in Poland for the word
'Cartier' -- granting of the word figurative trade mark 'Chatier Purl' -- assessment of similarity -well known luxury brand mark -- Chatier Purl and Cartier -- marks covered similar goods -- Cartier
provided sufficient evidence to confirm the renowned character of its mark on the Polish market -clear that consumers associate the mark with one of the most prestigious brands in the category of
luxury perfumes and jewellery -- Chatier Purl mark filed in bad faith -- cancellation of the Chatier
Purl mark
Subject: Famous trade marks--Poland
Subject: Brand management
SNIPER No.: 2014/01812
Author: Bowman, Hayley
Author: Pead, Grace
Title: How far does the term "patent troll" extend?
Source: Australian Intellectual Property Law Bulletin. Vol. 27 No. 7, August 2014, pp. 200-202.
Summary: Increasing number of disputes involving so-called "patent trolls" in the United States -no universal definition of the term -- extent of patent troll activity in Australia is relatively limited -what is a patent troll? -- activities associated with patent trolls -- stereotypical patent troll tactics -prevalence of patent troll activity -- implications.
Subject: Non-practicing entities
SNIPER No.: 2014/00175
Author: Harangozó, Gábor
Title: How to determine monetary compensation in a patent infringement proceeding
Source: World Intellectual Property Review. November-December 2013, p. 88.
Summary: A foreign patentee launched a patent infringement proceeding against an unauthorised
user before the Metropolitan Court -- patentee's claims covered a cutting mechanism for
agricultural use in Hungary -- patentee had sold a substantial number of devices incorporating the
patented cutting mechanism -- slavish imitation of the patented device appeared in the market -imitated devices were manufactured and distributed by a local company without permission of the
patentee -- manufacturer admitted patent infringement in the first trial -- proceeding was then
SNIPER Bulletin – October 2014
Page 32 of 76
directed to compensation -- number of the devices sold and enrichment obtained from them had to
be determined -- problems calculating the enrichment -- two calculation methods in local case law - profit gained -- principle of the lost licence fee -- patentee suggested a special calculation
method -- Metropolitan Court accepted this calculation -- obliged the defendant to pay a high
amount -- defendant appealed against this amount as unduly high -- the decision on establishment
of the patent infringement was not appealed and has thus become final -- defendant filed a nullity
action against the patent before the Hungarian IP Office -- Metropolitan Appeal Court rejected the
staying request and upheld the first instance decision.
Subject: Damages--case law--Hungary
Subject: Patent infringement--Hungary
SNIPER No.: 2014/01718
Author: Arezzo, Emanuela
Title: Hyperlinks and making available right in the European Union: what future for the internet
after Svensson?
Source: IIC : International Review of Intellectual Property and Competition Law. Vol. 45 No. 5,
August 2014, pp. 524-555.
Summary: Court of Justice of the European Union decision in Nils Svensson and Ors v. Retriever
Sverige AB -- analysis -- implications for the future of the internet -- whether the act of hyperlinking
can amount to direct infringement of copyright on the internet, specifically by violating the making
available right introduced by Art. 3 of the Information Society Directive -- clarification of the making
available right needed
Subject: Copyright infringement--Europe
Subject: Electronic copyright--Europe
Subject: Internet
SNIPER No.: 2014/01702
Author: Rindforth, Petter
Title: ICANN in Singapore
Source: Trademarks and Brands Online. Vol. 3 No. 2, 2014, pp. 40-41.
Summary: Internet Corporation for Assigned Names and Numbers (ICANN) meeting in Singapore
-- organised by the Non-commercial Users Constituency (NCUC) of the Generic Names Supporting
Organization (GNSO) with ICANN's support -- dominated by discussions related to the
announcement by the US government that it wants to relinquish its stewardship of some vital
technical internet functions -- ICANN is consulting global stakeholders about a proposal for
transitioning the role played by the US Commerce Department's National Telecommunications and
Information Administration (NTIA) in coordinating the internet's domain name system -- discussions
and decisions on increasing the availability of the internet -- privacy and proxy providers -- Whois
domain name directory -- policy development process working group on translation and
transliteration of contact information.
Subject: Internet Corporation for Assigned Names and Numbers
Subject: Domain name registries
SNIPER No.: 2014/01827
Author: Adrian, Stephen
SNIPER Bulletin – October 2014
Page 33 of 76
Title: The impact of Australian goods and services tax on assignments and licenses of intellectual
property
Source: Les Nouvelles. Vol. 49 No. 3, September 2014, pp. 202-205.
Summary: A New Tax System (Goods and Services Tax) Act 1999 (the "GST Act") -- guidelines
how the GST Act will apply to common transactions involving the transfer of technology -- what is a
taxable supply -- Australian statutory IP rights -- foreign statutory rights -- worldwide rights -common law IP rights: confidential information -- supplies of a going concern -- recommends
importance of knowing when GST might be imposed and when to seek specialist advice -assignments and licences of intellectual property -- disclosure of confidential information.
Subject: Intellectual property licensing--Australia
Subject: Business taxation--Australia
SNIPER No.: 2014/01231
Author: Kiel-Chisholm, Scott
Title: In conversation with The Honourable Ian Callinan AC
Source: Intellectual Property Forum. No. 97, June 2014, pp. 7-15.
Summary: Interview with retired High Court of Australia Judge, Ian Callinan -- his time on the High
Court -- thoughts on the operation of the High Court -- the intellectual property (IP) cases he
decided -- real life issues that he feels impact on counsel who are appearing before the High Court
-- people he regarded as role models.
Subject: Callianan, Ian--interviews
Subject: Intellectual property industry
SNIPER No.: 2014/01735
Author: Anand, Pravin
Title: India: Supreme Court ruling creates balanced patent regime
Source: Asia IP: Protecting your Intellectual Assets. Vol. 6 No. 5, May-June 2014, p. 63.
Summary: Supreme Court of India landmark ruling in Dr Aloys Wobben and Anor v. Yogesh
Mehra & Ors -- involved patents in connection with wind turbine generators -- settled the
controversy concerning multiple remedies that can be adopted in proceedings for revocation of
patents -- judgment affects all infringement actions and related counter claims and/or revocation
petitions and post grant oppositions -- creates balanced regime which harmonises these actions
Subject: Patent revocation--case law--India
SNIPER No.: 2014/01815
Author: Drahos, Peter, 1955Added author: Regulatory Institutions Framework
Added author: Australian National University. Centre for International and Public Law.
Title: Indigenous development networks and the non-developmental state: making intellectual
property work for indigenous people without patents
Source: RegNet Research Paper. No. 2014/39
General Note: Published on Social Science Research Network.
General Note: A later version of this paper can be found in Ruth L. Okediji and Margo A. Bagley
(eds), Patent Law in Global Perspective, Oxford University Press, New York, 2014, pp. 287-320.
SNIPER Bulletin – October 2014
Page 34 of 76
Summary: Knowledge assets of indigenous people a potential source of income -- extractive
property rights -- state of poverty -- extractive public domain -- context of intellectual property
systems -- drawing on fieldwork from Australia -- how indigenous development network can build
capacity and trust by enrolling scientists into its network -- Queeensland Biodiscovery Act -indigenous development networks -- adaptive governance -- commodity innovation, systems
innovation.
Subject: Traditional knowledge
Subject: Environmental issues in intellectual property
SNIPER No.: 2014/01235
Author: Ryan, Adrian
Title: Indirect infringement in Australia through the supply of products (with emphasis on section
117 and some recent cases)
Source: Intellectual Property Forum. No. 97, June 2014, pp. 44-48.
Summary: Section 117 of the Patents Act 1990 (Cth) -- infringement by supply of products -staple commercial product -- Northern Territory of Australia v Collins -- reason to believe -- Generic
Health Pty Ltd v Otsuka Pharmaceutical Co Ltd -- Apotex Pty Ltd v Sanofi-Aventis Australia Pty
Ltd.
Subject: Patent infringement--case law--Australia
Subject: Patents--law and legislation--Australia
SNIPER No.: 2014/00166
Author: Licks, Otto B.
Title: INIP targets patent owners
Source: World Intellectual Property Review. November-December 2013, p. 79.
Summary: Brazilian patent and trademark office (INPI) filed lawsuits seeking to invalidate a
number of patents owned by some foreign countries -- justification is a mistake made by INPI when
granting the patents that afforded a patent term of 10 years from grant, instead of 20 years from
the filing date -- 'mailbox' patents should not be entitled to 10 years from grant -- mailbox patents
given preferential treatment for examination.
Subject: Patent terms--Brazil
Subject: Patent validity--Brazil
SNIPER No.: 2014/01837
Author: Helm, Sarah
Title: Innovation gathers pace in renewables sector
Source: WIPO Magazine. No. 4, August 2014, pp. 11-13.
General Note: Renewable energy technology: Evolution and policy implications, evidence from
patent literature, see 2014/01844.
Summary: Climate change -- biggest challenges of our times -- report entitled Renewable energy
technology: Evolution and policy implications, evidence from patent literature -- indicates increases
in commercial innovation in four key renewable energy technology sectors, namely, biofuels, solar
thermal, solar photovoltaic (PV) and wind -- technology is the key to climate change mitigation -mining opportunities for technology development and diffusion -- overall renewables attract high
SNIPER Bulletin – October 2014
Page 35 of 76
levels of investment -- investment by developing countries -- changing patterns of technology
ownership -- diverse industry structure and drivers -- internationalisation of markets.
Subject: Environmental issues in intellectual property
Subject: Innovation (Technological)--trends
Subject: Research and development--utilities supply industry
SNIPER No.: 2014/01801
Author: Kim, Myung-Shin
Title: Intellectual property framework Act in Korea
Source: CIPA: the journal, incorporating the 'Transactions', of the Chartered Institute of Patent
Agents. Vol. 43 No. 7, July 2014, pp. 390-393.
Summary: Implementation of the IP Framework Act in Korea in 2011 -- background to the Act -how fundamental policy goals are influencing Korean IP developments -- enforcement of IP rights - obtaining evidence of infringement -- interaction between patent attorneys and "attorneys at law" - government support for the creation, protection, utilisation and infrastructure of IP in relation to
technology and industry development -- inefficient IP policy and administration -- main structure of
the IP Framework Act (IPFA) -- Parliamentary Bill -- organisation of the Presidential IP Council -position and functions of the Council -- implementation of the IPFA -- increase in R&D budget -change of jurisdiction for patent infringement cases -- change to the Patent Attorney System -future plan.
Subject: Intellectual property systems--reform--Korea
Subject: Intellectual property law--reform--Korea
SNIPER No.: 2014/00075
Author: Shen, Wei
Title: Intellectual property protection of layout designs on printed circuit boards: from comparative
and Chinese perspectives
Source: IIC : International Review of Intellectual Property and Competition Law. Vol. 45 No. 1,
February 2014, pp. 6-17.
Summary: Printed circuit boards (PCBs) -- protection of PCBs as layout designs -- intellectual
property protection -- industrial designs -- copyright law -- patent law -- comparative study of
situation in United Kingdom, United States, Germany, Japan and China
Subject: Circuit layout rights
SNIPER No.: 2014/01250
Author: Biggs, Ella
Author: Kallenbach, Paul
Title: Intellectual property rights and the right to freedom of artistic expression: complementary or
contradictory?
Source: Australian Intellectual Property Law Bulletin. Vol. 27 No. 4, May 2014, pp. 86-91.
Summary: Use of popular icons and images to comment on society could possibly infringe IP
rights -- examination of the way IP laws can restrict the creation and publishing of artistic works -intellectual property law as censorship -- Louis Vuitton v Nadia Plesner -- image of a starving child
carrying what appears to be a Louis Vuitton bag found not to be infringing rights -- Tumblr: free
expression or effective censorship? -- the Grumpy Cat industry -- the right to freedom of
SNIPER Bulletin – October 2014
Page 36 of 76
expression -- looking forward: the interaction of freedom of expression and intellectual property
laws in Australia
Subject: Artistic works
Subject: Free speech
Subject: Intellectual property law
Subject: Intellectual property rights
SNIPER No.: 2013/02875
Author: Grosse Ruse-Khan, Henning, 1974Title: Introducing the principles for intellectual property provisions in bilateral and regional
agreements
Source: IIC : International Review of Intellectual Property and Competition Law. Vol. 44 No. 8,
December 2013, pp. 873-877.
Summary: Bilateral and regional agreements -- international academic perspective on principles
for intellectual property provisions -- negotiation, interpretation and implementation of IP provisions
-- concept of good faith -- systemic integration -- reflection on existing public international law.
Subject: International intellectual property law
Subject: Intellectual property--treaties
SNIPER No.: 2014/01261
Author: Le Busque, Rob
Title: IP and the cloud (or, a cloudy forecast for IP protection)
Source: Australian Intellectual Property Law Bulletin. Vol. 27 No. 5, June 2014, pp. 138-140.
Summary: Cloud computing -- security challenges for clients in the cloud -- understanding threats
to clients -- keep abreast of new regulations and laws -- considerations for protecting intellectual
property (IP) from theft -- classify data -- monitor to respond -- plug employee data leaks -collaboration should include security -- use credible data to understand past breaches -- Data
Breach Investigations Report (DBIR).
Subject: Computing
Subject: Crime--information technology industry
SNIPER No.: 2014/01723
Author: Shuai, Amanda
Title: IP beyond Asia: when outbound Asian investment reaches Africa and Latin America
Source: Asia IP: Protecting your Intellectual Assets. Vol. 6 No. 4, April 2014, pp. 23-37.
Summary: Asian investors turning outside the region to expand their business -- investing
technology and capital in Africa and Latin America --large investments by Chinese and Indian
companies in Nigeria and Brazil -- discussions IP professionals about IP matters that outbound
Asian investors face in Africa and Latin America -- IP environment and awareness for investment
-- things to do before entering the market -- investments should be assessed on local market
conditions and jurisdiction
Subject: Intellectual property--Latin America
Subject: Intellectual property--Africa
SNIPER Bulletin – October 2014
Page 37 of 76
SNIPER No.: 2014/01843
Author: Towell, Patrick
Author: Keunen, Simone
Added author: Golant Media Ventures
Added author: UK Intellectual Property Office
Title: IP markets and enabling information ecosystems
Source: IP Markets and Enabling Information Ecosystems. September 2014.
General Note: DPS/IP Research-08/14.
General Note: Research commissioned by the UK Intellectual Property Office and carried out by
Golant Media Ventures.
General Note: This report is a follow-up up action to the report 'Banking on IP' published 2013, by
the UK Intellectual Property Office to present an initial review of the key characteristics of markets
in IP which could support efficient trading and main information needs to give potential and actual
traders confidence to monetise assets, through sale or licensing. See also 2013/02576.
Summary: Intangibles not just intellectual property -- IP/intangible markets operating effectively -basic structure of IP-backed debt financing options -- focus on SMEs and High Growth Firms
(HGF) -- logical not technical architecture -- market context -- blueprint -- tax incentives to facilitate
IP valuation -- innovation life cycle -- recommendations for building capabilities in SMEs and
lenders.
Subject: Value of intellectual property--United Kingdom
Subject: Intellectual capital--United Kingdom
SNIPER No.: 2014/00181
Author: Orlova, Valentina
Title: IP rights and competition
Source: World Intellectual Property Review. November-December 2013, p. 95.
Summary: Amendments to part four of the Russian Civil Code will be examined -- these
amendments should affect the relationships connected with virtually all items of intellectual
property (IP) -- some general provisions relating to IP are also likely to undergo substantial change
-- some Federal laws likely to be amended -- Federal Law on Trade Secrets -- discussions over
monopoly rights -- existing rules of Russian law already place limits on monopoly IP rights and
specify the terms for such restrictions -- restrictions included -- plenty of rules that limit the rights to
use IP when these rights are at variance with or contravene public interest -- some provisions
could be improved.
Subject: Competition (Economics)--Russia
Subject: Intellectual property law--reform--Russia
SNIPER No.: 2014/01755
Author: Savage, Luc
Title: IPRs in least developed countries: a progress report
Source: Les Nouvelles. Vol. 49 No. 2, June 2014, pp. 111-115.
Summary: Least developed countries (LDCs) and intellectual property -- intellectual property a
reality in the economic development of LDCs -- fairness the key to sustainable development -intellectual property licences -- practices in search of simplification and effectiveness -- spreading
innovation depends on "local absorption capacity" -- go beyond preconceived ideas and focus
SNIPER Bulletin – October 2014
Page 38 of 76
efforts on promising initiatives – recognising the value of local intellectual property -- simplifying
access to IP protection procedures -- supporting IP development structures under fair licensing
conditions between developed and developing countries.
Subject: Intellectual property rights--developing countries
SNIPER No.: 2014/01663
Author: Heindl, Sabiene
Title: Is Google replacing publishers?
Source: Australian Intellectual Property Law Bulletin. Vol. 27 No. 6, July 2014, pp. 152-156.
Summary: Ongoing copyright dispute between the Authors Guild of America (AGA) and Google -Google's "Library Project" -- goal to scan all English books, including those out of copyright, those
in copyright and in print, and those in copyright but out of publication -- also allows users of its
search engine to access "snippets" of books -- AGA brought a class action suit against Google for
copyright infringement -- authors' class action -- the judgment -- amicus curiae brief -- Google
algorithms replacing editors -- fair use provision.
Subject: Copyright infringement--case law--United States
Subject: Copyright--culture and entertainment industry
SNIPER No.: 2014/01705
Author: Churley, Andy
Title: Is the domain name industry ready for radical innovation?
Source: Trademarks and Brands Online. Vol. 3 No. 2, 2014, pp. 46-47.
Summary: New naming convention where websites can end in almost any letters rather than the
old style .com .net or .org -- known as the generic top-level domain (gTLD) programme -- fresh
thinking and innovation online -- Internet Corporation for Assigned Names and Numbers (ICANN)
regulates domain names -- capacity for innovation as one of the reasons for expanding the number
of gTLDs -- underlying internet is an ultra-stable and resilient technology platform -- allows people
the freedom to innovate on it -- types of innovation -- product innovation -- process innovation -position innovation -- paradigm innovation -- challenge with innovation is as much about timing as it
is about the innovation itself.
Subject: Domain names
Subject: Innovation (Technological)
SNIPER No.: 2014/00157
Author: Biggi, Cristina
Author: Conti, Marco
Title: The Italian question: concerns about the unitary patent
Source: World Intellectual Property Review. November-December 2013, pp. 45-48.
Summary: European countries have felt the need for a common Unitary Patent (UP) system -goal partially met with the establishment of the European Patent Office (EPO) in the 1970s -European patent granted by the EPO is not a unitary title -- yields a bundle of national patents to
be litigated before corresponding national courts -- Unified Patent Court established -- UP system
outlined by the regulations approved through enhanced cooperation -- Italy and Spain appealed
against the Court of Justice of the EU (CJEU) authorising enhanced cooperation -- CJEU
SNIPER Bulletin – October 2014
Page 39 of 76
dismissed the actions of Italy and Spain -- Spain filed another action against the CJEU's decision -Italian parliament has now to make some decisions.
Subject: Patents--law and legislation--Europe
Subject: Patent systems--reform--Europe
SNIPER No.: 2014/01734
Author: Mirandah, Gladys
Title: The Italian storm in a martini glass
Source: Asia IP: Protecting your Intellectual Assets. Vol. 6 No. 5, May-June 2014, p. 63.
Summary: Decision of the Intellectual Property Office of Singapore (IPOS) Bacardi & Company
Limited v. G3 Enterprises Inc [2014] SGIPOS 6 -- revocation action and invalidation action
between two vintage alcoholic beverage makers -- Bacardi-Martini Singapore sought exclusive
right to use the term "Martini" in Singapore, filing an opposition against the Louis M Martini Winery
(owned by G3) -- facts of the case -- analysis of the decision
Subject: Trade marks--case law--Singapore
SNIPER No.: 2014/01520
Author: Meyrick, Tessa
Title: 'It's so good, I put my name on it': the unexpected pitfalls of registering a personal name as a
trade mark
Source: Journal of Intellectual Property Law and Practice. Vol. 9 No. 8, August 2014, pp. 625-626.
Summary: Federal Court of Australia found that the BOB JANE trade marks had been infringed by
the former founder and proprietor of the Bob Jane T-Mart franchise -- Bob Jane Corporation Pty
Ltd v CAN -- Bob Jane surrendered his branding assets when he left the Bob Jane Corporation Pty
Ltd in 2011 after a split with his son Rodney -- conflict history -- Bob Jane established new
companies using the 'Bob Jane' name including Bob Jane Global Tyre Corporation -- Bob Jane
used marks almost identical to the ones owned by Bob Jane Corporation who subsequently sued
for trade mark infringement -- Justice Besanko didn't consider the 'good faith' defence to be
available in this case -- case highlights the importance of planning in case the bearer of the name
and the owner of the mark part.
Subject: Personal names--case law--Australia
Subject: Trade mark infringement--case law--Australia
Subject: Commercial names--case law--Australia
SNIPER No.: 2014/01192
Author: Werra, Jacques de
Title: Keeping the genie of licensing out of the bottle: managing inter-dependence in licensing
transactions
Source: IIC : International Review of Intellectual Property and Competition Law. Vol. 45 No. 3,
May 2014, pp. 253-255.
Summary: Risks resulting from reliance on the continued use of third-party intellectual property
assets -- growing awareness of the dependence which can be generated in intellectual property
licensing transactions, particularly apparent and complex when these transactions have a
transnational scope -- recent court decisions in various jurisdictions -- US Court of Appeal for the
Fourth Circuit decision in Qimonda -- held that the interests of the licensees should prevail over
SNIPER Bulletin – October 2014
Page 40 of 76
those of the licensor -- German Federal Supreme Court decisions -- termination of main licence
does not necessarily affect the continuation of a sublicense -- High Court of Justice of England and
Wales eMarketplace decision -- refused to grant injunction preventing the termination of a licence
agreement for which the ex-licensee had applied -- decisions show the courts see the need to
protect the licensee or sub-licensees in certain circumstances -- concern that licensees extremely
dependent on the use of licensed IP rights owned by a third party -- need for a system to manage
the inter-dependence between the parties to licensing transactions and to balance fairly the
interests of licensees in continuing to use licensed rights and those of licensors in keeping control
of the rights
Subject: Intellectual property licensing--case law
SNIPER No.: 2014/01757
Author: Zhou, Zhongqi
Title: Key amendments to the Chinese trademark law
Source: Les Nouvelles. Vol. 49 No. 2, June 2014, pp. 124-125.
Summary: Draft amendment of the Chinese Trademark Law -- summary of the key amendments -sound mark registrable -- multi-class applications -- office actions -- statutory time-limit for
examinations -- tackling bad faith applications -- reconstruction of opposition procedures -- wellknown mark -- right of prior use -- dilution -- renewal -- co-infringer -- repeat infringer -- misuse of
trade mark -- increased damages.
Subject: Intellectual property law--reform--China
Subject: Intellectual property systems--China
Subject: Trade mark registrability--reform--China
SNIPER No.: 2014/00076
Author: Gisclard, Thibault
Title: Limitations of autonomy of the will in conventions of exploitation of personality rights
Source: IIC : International Review of Intellectual Property and Competition Law. Vol. 45 No. 1,
February 2014, pp. 18-42.
Summary: Personality rights -- right of publicity -- license agreements -- restrictive interpretation -royalties -- comparative law
Subject: Personality rights
Subject: Intellectual property licensing
SNIPER No.: 2014/01522
Author: Bennett, Olivia
Title: Little glee for Twentieth Century Fox
Source: Journal of Intellectual Property Law and Practice. Vol. 9 No. 8, August 2014, pp. 628-629.
Summary: High Court of England and Wales ruled that American television series 'Glee' infringed
claimant's trade mark -- Comic Enterprises Ltd v Twentieth Century Fox Film Corporation -claimant registered series of device marks in class 25 and 41 in 2001 -- marks included the words
'The Glee Club' -- venues used for stand-up comedy -- analysis of case -- marks partially revoked - defendants argument that the marks were descriptive were rejected -- claimant's trade mark
infringed by virtue of ss 10(2)(b) and 10(3) of the Trade Marks Act 1994 -- claim in passing off
SNIPER Bulletin – October 2014
Page 41 of 76
failed however -- defendant will seek to appeal -- if injunction granted then the show may be
prevented from being broadcast in the United Kingdom.
Subject: Trade mark infringement--case law--United Kingdom
Subject: Passing-off--case law--United Kingdom
Subject: Trade mark series--United Kingdom
SNIPER No.: 2014/01515
Author: Rosati, Eleonora
Title: Luxembourg, we have a problem: where have the Advocates General gone?
Source: Journal of Intellectual Property Law and Practice. Vol. 9 No. 8, August 2014, p. 619.
Summary: Recent reluctance of the Court of Justice of the European Union (CJEU) to use the
findings or to even consult the Advocate General in copyright cases -- CJEU rulings in recent
copyright cases -- Opinions of Advocates General are not binding on the CJEU -- reason for this
trend is not because these cases are straightforward -- the likely reason may be that Advocates
General are not IP and copyright specialists -- having more IP specialists in the future amongst the
judges of the court may also have some influence on these trends -- question mark over the role of
the Advocates General.
Subject: Legal procedure--Europe
Subject: Copyright--case law--Europe
SNIPER No.: 2014/00170
Author: Pilar López, María del
Author: Monge, Esteban
Title: The luxury of fashion law
Source: World Intellectual Property Review. November-December 2013, p. 83.
Summary: Fashion industry to face challenges that were not common in past decades -- fashion
law has become a brand new legal specialty -- involves several issues of intellectual property (IP)
rights -- trade mark law, copyright law and it can also include patents and trade secrets -protecting the designer's brand or identity and the designs themselves -- protected with the
application of trade mark law -- involves other legal practices -- corporate law, employment law,
supply chain of goods, marketing strategies and public relations -- major issue the fashion industry
faces is the damage caused by the counterfeiting of goods and unfair competition -- damage done
by counterfeit goods is far reaching -- government loses tax revenue -- incur costs due to IP
protection and enforcement efforts -- organised criminal and terrorist organisations are involved in
counterfeiting and piracy.
Subject: Counterfeiting--fashion and design industry
Subject: Industrial design owners' rights--fashion and design industry
SNIPER No.: 2014/01253
Author: Gardiner, Ben
Title: Madden v Seafolly: Full Court appeal
Source: Australian Intellectual Property Law Bulletin. Vol. 27 No. 4, May 2014, pp. 101-103.
Summary: Swimwear designer Madden found to have breached sections 52 and 53 of the Trade
Practices Act 1974 (Cth) -- comments on Facebook and emails to media suggesting some of her
designs had been copied by Seafolly -- a reminder of the facts -- procedural history -- Seafolly's
SNIPER Bulletin – October 2014
Page 42 of 76
TPA claim -- damage to reputation -- Madden's cross-claims -- defamation -- costs -- need for
traders to be careful that comments on social media are not misleading or defamatory
Subject: Fashion and design industry
Subject: Industrial designs--case law
SNIPER No.: 2014/00178
Author: Adames, Victor M.
Title: The Madrid System: Mexico in numbers
Source: World Intellectual Property Review. November-December 2013, p. 92.
Summary: In 2012 Mexican Senate approved the accession of Mexico to the Madrid Protocol -expectations have not been fulfilled -- at the time of signing there were several limitations and big
challenges for the Mexican Institute of Industrial Property (IMPI) -- keeping the timeframes for a
straightforward application, while receiving international applications -- the opposition system -opposition system has not been enabled -- discussions on how to implement the system are
continuing -- international applications have not met with expectations -- too soon to make a
judgment on whether the Madrid Protocol has been an advantage for trade mark owners -- many
people still unfamiliar with it -- reluctant to use it.
Subject: Madrid Agreement Concerning the International Registration of Marks (1891 April 14).
Protocols, etc., 1989 June 27--Mexico
SNIPER No.: 2014/00177
Author: Chew, Kherk Ying
Author: Chen, Hong Sze
Title: Maestro Swiss: a geographical indication?
Source: World Intellectual Property Review. November-December 2013, p. 91.
Summary: First Malaysian appellant court decision on geographical indications -- recent appeal by
Chocosuisse Union des Fabricants Suisses de Chocolat, Kraft Foods Schweiz AG and Nestle
Suisse SA against a decision of the High Court which found in favour of the Maestro Swiss group
of companies -- appellants' suit initiated against Maestro Swiss Chocolate, Maestro Swiss
Products, Maestro Swiss Corporation and Maestro Swiss Holdings for the respondents' to use the
words 'Maestro Swiss' in relation to chocolate and chocolate related products -- respondents'
products were manufactured in Malaysia -- appellants' objection to the use of the words was on the
premise that a significant section of the Malaysian public would see the words as being indicative
of the products being manufactured in Switzerland or by a Swiss manufacturer -- continued use of
the words was calculated to misappropriate the goodwill and reputation and/or commercial
advantage enjoyed by the appellants -- was use as a geographical indication -- High Court
considered the purposes performed by geographical indications -- disagreed that the word "Swiss"
was sufficient to indicate that the products came from Switzerland -- Court of Appeal however held
that 'Maestro Swiss'' qualifies as a geographical indication -- conscious use to give the impression
of a link with Switzerland or a Swiss company -- Court of Appeal allowed the appeal in relation to
the tort of extended passing off.
Subject: Geographical indicators--case law--Malaysia
Subject: Passing-off--case law--Malaysia
SNIPER No.: 2014/01662
Author: Webb, Timothy
SNIPER Bulletin – October 2014
Page 43 of 76
Author: Haq, Sophia
Title: Mascots are a protected species too: the Major Sporting Events (Indicia and Images)
Protection Act 2014
Source: Australian Intellectual Property Law Bulletin. Vol. 27 No. 6, July 2014, pp. 149-151.
Summary: Practical implications of the Major Sporting Events (Indicia and Images) Protection Act
2014 (Cth) -- to provide for the regulation of the use for commercial purposes of indicia and images
associated with certain major sporting events -- prohibition for protected indicia and images -- Act
sets out a clear test for "commercial purposes" -- register of authorised persons -- framework for
the seizure of goods -- remedies.
Subject: Sporting insignia--law and legislation--Australia
Subject: Major sporting events--Australia
SNIPER No.: 2014/01614
Author: Serio, John
Title: Maybe it's not the real thing
Source: Intellectual Property Magazine. July-August 2014, pp. 91-92.
Summary: United States Supreme Court -- Pom Wonderful v Coca-Cola Co -- implications for
companies producing products that are regulated by the Food and Drug Administration (FDA) -ruling that Pom can sue Coca-Cola over an allegedly mislabelled juice drink -- Coca-Cola's Minute
Maid Division markets a pomegranate blueberry juice blend, which despite having trace amounts
of pomegranate, was prominently labelled as a pomegranate product -- Pom used Coca-Cola
alleging that the appearance and wording of the "Pomegranate Blueberry" label was deceptive and
misleading -- should have been more aptly characterised as an apple grape juice under the
relevant FDA labelling regulations -- US Court of Appeals for the Ninth Circuit sided with CocaCola and rejected Pom's suit -- Supreme Court held otherwise and agreed that Pom could sue its
competitor under the federal Lanham Act -- The Lanham Act.
Subject: Branding--manufacturing and processing industry--United States
Subject: Branding--case law--United States
SNIPER No.: 2014/01243
Author: Samuelson, Bob
Title: Measuring success in the new internet domains
Source: Trademarks and Brands Online. Vol. 3 No. 1, 2014, pp. 30-32.
Summary: Generic top-level domains (gTLD) -- innovation for the internet's global addressing
system -- case study of Donuts -- launched its Domains Protected Marks List (DPML) -- a tool that
allows rights holders to protect marks across the entire universe of Donuts's TLDs with a single,
inexpensive service -- branding in the digital age -- unique identifiers -- key for the new gTLD
community will be establishing trust with trade mark owners.
Subject: Domain name registration
Subject: Brand management
SNIPER No.: 2014/01316
Author: Gardner, Nick
Title: Mediation and its relevance to intellectual property disputes
Source: Journal of Intellectual Property Law and Practice. Vol. 9 No. 7, July 2014, pp. 565-574.
SNIPER Bulletin – October 2014
Page 44 of 76
Summary: Mediation in intellectual property (IP) disputes in the context of English civil litigation
rules and procedures -- mediation defined -- when is mediation appropriate -- arranging mediation - preparing for mediation -- low cost of mediation and if successful its benefits to the parties
involved and the often strained judicial system -- parties are encouraged to consider mediation by
the courts but it is not mandatory -- procedural rules -- mediation and IP disputes -- benefits of
mediation in IP disputes -- how courts deal with situations where parties are reluctant to mediate
an IP case -- given the confidential nature of mediation collecting evidence of its effectiveness is
difficult -- the 'threats' action and IP cases.
Subject: Dispute resolution--United Kingdom
Subject: Intellectual property litigation--United Kingdom
SNIPER No.: 2014/01731
Author: Chan, Johnny
Title: Meeting the president: INTA
Source: Asia IP: Protecting your Intellectual Assets. Vol. 6 No. 5, May-June 2014, pp. 54-56.
Summary: Interview with Mei-lan Stark, senior vice president of intellectual property for Fox
Entertainment Group and president of the International Trademark Association (INTA) -- INTA's
present and future -- perspective on China's trade mark developments
Subject: Stark, Mei-lan--interviews
Subject: Intellectual property industry--interviews
SNIPER No.: 2014/01833
Author: Turnbull, Fraser
Title: The morality of mashups: moral rights and Canada's non-commercial user-generated
content exception
Source: Intellectual Property Journal (Carswell). Vol. 26 No. 2, July 2014, pp. 217-236.
Summary: Copyright Modernization Act -- introduced an unprecedented exception into copyright
law -- the non-commercial user-generated content exception -- provision does not exempt users
from infringing the author's moral rights -- the role moral rights could play under the new exception
-- may be used to constrain the transformative expression of users, which is contrary to the
purpose of the exception -- considers whether creators of user-generated content have moral
rights in their new works -- explore the practical difficulties of enforcing moral rights in the digital
era.
Subject: User-generated content--Canada
Subject: Moral rights
SNIPER No.: 2014/01604
Author: Adamo, Kenneth R.
Author: Higer, David W.
Author: Goryunov, Eugene
Author: Kieffer, Mishele
Title: Motion to amend: focus on detail or face denial
Source: Intellectual Property Magazine. July-August 2014, pp. 67-70.
SNIPER Bulletin – October 2014
Page 45 of 76
Summary: Only one patent owner has been able to amend a claim subject to inter partes review
(IPR) or covered business method review (CBMR) at the United States patent and Trademark
Office (USPTO) -- US Patent Act, USPTO Rules, and the decisions of the Patent Trial and Appeal
Board (PTAB) provide guidance on the requirements for motions to amend -- requirements for
motions to amend mandated by the Patent Act and USPTO Rules -- PTAB's current guidance on
how the USPTO Rules are to be interpreted -- focus is to identify and analyse deficiencies that
have doomed all but one motion to amend to date -- patent owners must be careful to heed
scrupulously the letter of the PTAB guidance.
Subject: Patent amendment--United States
Subject: Patent validity--United States
SNIPER No.: 2014/01707
Author: Chatterton, Edward
Title: A new era for China
Source: Trademarks and Brands Online. Vol. 3 No. 2, 2014, pp. 54-56.
Summary: Amendments to China's Trademark Law -- Chinese authorities have issued new draft
Trademark Review and Adjudication Board (TRAB) rules -- discussing revisions to the Trademark
Law implementing regulations -- applications must follow principles of 'honesty' and 'good faith' -an unsuccessful opponent will no longer be able to appeal against the China Trademark Office's
(CTMO) decision -- instead must file a cancellation action at the TRAB -- the trade mark applicant
will continue to have a right to appeal against the CTMO's decision to the TRAB -- rationale behind
the removal of an opponent's right to appeal -- practical implications of the amendment -- only the
owner of a pre-existing right or an 'interested party' can file an opposition -- higher penalties for
infringers -- multiclass applications and e-filing -- splitting trade mark applications -- streamlined
time-frame -- supplemental evidence -- trade mark licences.
Subject: Trade marks--law and legislation--China
Subject: Trade marks--reform--China
SNIPER No.: 2014/00154
Title: A new frontier: IP in Saudi Arabia
Source: World Intellectual Property Review. November-December 2013, pp. 32-34.
Summary: Interview with Saleh M S AIKhaliwi, director general of Saudi Customs -- main
responsibilities of Saudi Customs in terms of intellectual property (IP) -- current focus of efforts -trends in import/export of counterfeit goods from/into Saudi Arabia in recent years -- where the
imported goods primarily come from/get sent to -- most common counterfeit/fake items to pass
through Saudi borders -- scale of the problem -- industries targeted -- successes in the battle
against counterfeits.
Subject: AIKhaliwi, Saleh M. S.--interviews
Subject: Customs--Saudi Arabia
Subject: Counterfeiting--Saudi Arabia
SNIPER No.: 2014/00160
Author: Mełgieś, Katarzyna
Author: Piwowar, Jaromir
Title: New tools: patent enforcement proceedings in Poland
SNIPER Bulletin – October 2014
Page 46 of 76
Source: World Intellectual Property Review. November-December 2013, pp. 60-62.
Summary: Patent enforcement proceedings -- legal framework -- patent holders rights -- scope of
protection -- enforcement options -- granting customs protection -- customs seizure -- new
regulation concerning customs -- provides patent holders with new instruments which should
enable more efficient actions against patent infringement -- obligatory use of the so-called
'simplified' procedure by the customs authorities.
Subject: Patent enforcement--Poland
Subject: Customs--Poland
SNIPER No.: 2014/00174
Author: Künzel, Jens
Title: No change of court venue for unfair competition cases
Source: World Intellectual Property Review. November-December 2013, p. 87.
Summary: German federal administration had planned to change the well-established law on the
judicial court venue for unfair competition cases -- criticism from some of Germany's legal
practitioners ensured that the proposed changes did not become law -- story began with a draft act
against "disreputable business practices" -- according to the provision the court in which the
incriminated act has been committed was supposed to be the competent venue only if the
defendant had no place of business in Germany -- justified criticism of this draft act emphasised
two aspects -- cases which the administration had used as justification present only a minor part of
unfair competition cases -- by focusing on a minor problem, the administration was obviously
prepared to change a well-established court venue system that led to specialised courts and
produced good results in the past -- new Act Against Disreputable Business Practices does not
include any of the changes to the court venue the administration proposed.
Subject: Competition law--reform--Germany
Subject: Legal procedure--Germany
SNIPER No.: 2014/01326
Author: Liu, Deming
Title: Of originality: originality in English copyright law: past and present
Source: European Intellectual Property Review. Vol. 36 No. 6, 2014, pp. 376-389.
Summary: New requirement of originality -- author's own intellectual creation -- traditional test of
originality in English copyright law replaced with the new test -- requirement of originality under
prior English law -- CJEU'S test of the author's own intellectual creation as originality -- old English
cases decided in light of the new test of originality -- Walter v Lane.
Subject: Copyright--law and legislation--United Kingdom
Subject: Copyright--case law--United Kingdom
SNIPER No.: 2014/01664
Author: Heindl, Sabiene
Title: An oily battle: Moroccanoil v Aldi's Miracle Oil
Source: Australian Intellectual Property Law Bulletin. Vol. 27 No. 6, July 2014, pp. 157-159.
Summary: Morroccanoil Israel Ltd (MIL) v Aldi Stores Ltd -- Moroccanoil is the manufacturer of the
highly successful Moroccanoil hair oil sold in a distinctive brown bottle with blue labelling -- Aldi
commenced selling Miracle Oil, a hair oil product in allegedly similar packaging and "get-up" -- MIL
SNIPER Bulletin – October 2014
Page 47 of 76
commenced legal action against Aldi n the High Court of Justice Chancery Division, Intellectual
Property Enterprise Court, alleging passing off -- the judgment -- Australian parallels.
Subject: Passing-off--case law--United Kingdom
Subject: Trade dress--case law--United Kingdom
SNIPER No.: 2014/00158
Author: Dahlen, Garth
Title: On solid ground: double patenting safe harbour applies to election of species
Source: World Intellectual Property Review. November-December 2013, pp. 48-50.
Summary: US Court of Appeals for the Federal Circuit -- reversed the district court's ruling that
claims in a first sibling patent (Janzen patent) were protected under the safe-harbour provision
from invalidity due to double patenting over claims in a related second sibling patent -- case is
important in areas such as biotechnology -- when the safe-harbour provision can be invoked -- four
related patents owned by St Jude Medical Inc and St Jude Medical Puerto Rico discussed in the
opinion -- defendants at trial Access Closure, Inc -- facts of the case -- determination of the line of
demarcation between independent and distinct inventions -- Federal Circuit looked to see if the
requirement of consonance was met -- how the results of this case will affect prosecution practice - concerns.
Subject: Patent litigation--United States
Subject: patents--case law--United States
SNIPER No.: 2014/01805
Author: Bell, Victoria
Title: Opening "Pandora's box": ACIP's review of the Australian designs system
Source: Australian Intellectual Property Law Bulletin. Vol. 27 No. 7, August 2014, pp. 174-178.
Summary: Australian Council on Intellectual Property (ACIP) -- undertaking a comprehensive
review of the designs system in Australia -- to see if it can be enhanced -- whether there are any
deficiencies or unintended consequences that have arisen from its implementation -- ACIP's initial
Issues Paper -- results of the initial consultation -- lack of consensus in some areas -- the Issues
Paper and the submissions in response -- adoption of grace period -- statement of newness and
distinctiveness (SoND) -- deferred publication -- unregistered design rights (UDRs) -- border
protection measures -- design/copyright overlap -- registration/publication and examination process
-- potential impact of new technologies -- 3D printing -- protection of graphical user interfaces
(GUIs).
Subject: Industrial design systems--reviews--Australia
Subject: Industrial designs--law and legislation--Australia
SNIPER No.: 2014/01724
Author: Hechanova, Editha R.
Author: Barredo, Chrissie Ann L.
Author: Lara, Maria Leah R.
Title: Optimizing trademark enforcement budgets
Source: Asia IP: Protecting your Intellectual Assets. Vol. 6 No. 4, April 2014, pp. 39-42.
Summary: Litigation for enforcement can be a costly and time-consuming process -- trade mark
owners could look at alternatives of actively enforcing trade marks rights -- Philippines -SNIPER Bulletin – October 2014
Page 48 of 76
registration of trade mark with the Intellectual Property Office of the Philippines (IPOPHL) makes
enforcement of rights easier and faster -- border control measures -- Philippines IP code prohibits
entry of counterfeit goods -- Bureau of Customs (BOC) recordation system for registered trade
marks and other IP -- BOC's seizure power may be applied outside the customs zone -- visitorial
powers of the IPOPHL -- can visit an establishment and find out whether it is violating the IP Code
on its own initiative or upon complaint of a trade mark owner -- IPOPHL can only issue warnings or
notices of violation -- BOC can issue warrants of seizure -- cost of destruction of counterfeit goods
-- IPOPHL success in enforcement has led to removal of the Philippines from the US Trade
Representative's Special 301 list of countries with inadequate IP laws.
Subject: Trade mark enforcement--Philippines
Subject: Customs--Philippines
SNIPER No.: 2013/02825
Author: Perez, Eugene T.
Title: Options open: third party proceedings under the AIA
Source: World Intellectual Property Review. September-October 2013, pp. 98-101.
Summary: Leahy-Smith America Invents Act -- ex parte reexamination -- trial before a three judge
panel -- inter partes reexamination and post grant review -- considerations for the third party
Subject: Patent opposition--United States
Subject: Patent examination--United States
SNIPER No.: 2014/00185
Author: Sutton, Paul J., 1939Title: Patent joint defence agreements: hidden pitfalls
Source: World Intellectual Property Review. November-December 2013, p. 99.
Summary: Not unusual for several companies within an industry to be named as co-defendants
within a patent infringement lawsuit -- complaint will include allegations of infringement of the same
patent or patents -- natural impulse of defendants' managements is to want to share information,
resources and strategies -- communications will in most cases not be privileged -- will open
individuals up to examinations under oath in oral depositions -- joint defence strategy among
defendants -- hidden perils and pitfalls of such arrangements -- unnecessary and duplicative work
should be limited or eliminated by allowing co-defendants to cooperate -- defendants may wish to
interpret the claims and meaning of a patent in markedly different ways -- whether co-defendants
want the court or the jury at trial to become aware of the existence of a joint defence agreement -a co-defendant whose conduct has been admirable will not want to be tainted by poor conduct of
others -- hazards associated with joint defence agreements.
Subject: Legal defences--United States
Subject: Patent litigation--United States
SNIPER No.: 2014/00877
Author: Sikorski, Rafal
Title: Patent law at the centre of today's IP debate
Source: IIC : International Review of Intellectual Property and Competition Law. Vol. 45 No. 2,
March 2014, pp. 125-127.
SNIPER Bulletin – October 2014
Page 49 of 76
Summary: Discussion of a report titled, "Patent Assertion and US Innovation", released in June
2013 by the US President's Council of Economic Advisers, the National Economic Council, and the
Office of Science & Technology Policy -- summary of the main points -- highlights threats posed by
Patent Assertion Entities (PAEs) or "patent trolls" or "patent sharks" -- abuse of patents -- business
model based on using aggressive and costly litigation strategies to claim excessive royalties -negative impact of PAEs -- threat from operations of PAEs -- consequences of PAEs aggressive
strategies for individual companies and the economy -- suggested measures to address concerns
raised by the activities of the PAEs -- reform of patent law -- standards of novelty and nonobviousness should be raised to reduce number of patents granted
Subject: Non-practicing entities--reviews--United States
SNIPER No.: 2014/01405
Author: Chan, Albert Wai-Kit
Author: Yuen-Ting, Alice
Author: Lee, Hon-Man
Title: A patent perspective on US stem cell research
Source: Nature Biotechnology. Vol. 32 No. 7, July 2014, pp. 633-637.
Summary: Implications of the US Supreme Court decisions on the patent eligibility of stem cells -Mayo v Prometheus -- analysis of the three individual steps of Prometheus's claim -- Association
for Molecular Pathology v. USPTO and Myriad Genetics -- summary of Myriad's claims challenged
by AMP -- summary of opinions on Myriad's claims from various authorities -- impact of the Mayo
and Myriad decisions on various aspects of society -- incentives for research entities, loss of patent
rights for current patent holders, benefit to patients -- advice to inventors to facilitate patent
procurement and enforcement -- changes likely to US patent policy in relation to biotech inventions
Subject: Research on life forms--case law--United States
Subject: Patentability--case law--United States
SNIPER No.: 2014/01285
Author: Heath, Christopher
Title: Patent rights and the "specific mechanism" to prevent parallel imports
Source: IIC : International Review of Intellectual Property and Competition Law. Vol. 45 No. 4,
June 2014, pp. 399-408.
Summary: The "specific mechanism" as part of the accession of new Member States to the EC
limits the free movement of goods between new and old Member States regarding certain
pharmaceuticals that could not find patent protection in the new Member States prior to accession - Specific Mechanism does not change the rules of domestic patent law applicable in the
respective Member States -- can only have an effect where domestic patent law gives the patentee
the right to prevent parallel importation from other Member States or third countries -- situation in
the United Kingdom -- Merck Sigma case -- free movement of goods -- notification -- legal nature of
the SM -- domestic patent rights and exhaustion rules
Subject: Parallel importing--pharmaceutical industry--Europe
Subject: Parallel importing--pharmaceutical industry--United Kingdom
SNIPER No.: 2014/01736
Author: Young, Timothy
Title: The patentability of GUIs: moving goalposts at the EPO
SNIPER Bulletin – October 2014
Page 50 of 76
Source: European Intellectual Property Review. Vol. 36 No. 7, 2014, pp. 409-412.
Summary: Graphical user interfaces (GUIs) -- GUIs based on technical considerations -- GUIs that
are non-technical -- evolution of EPO case law -- review of some decisions of the Boards of Appeal
in the field of GUIs -- 2012 Guidelines for Examination at the EPO offered pointers as to what
would represent an allowable GUI-related patent -- guidelines ignored -- 2013 Guidelines will make
it more difficult to obtain GUI-related patents.
Subject: Industrial designs--law and legislation--Europe
Subject: Computer-related inventions--patentability--Europe
Subject: Computer-related inventions--law and legislation--Europe
SNIPER No.: 2014/01603
Author: Hagel, Francis
Title: Patently strategic
Source: Intellectual Property Magazine. July-August 2014, pp. 64-66.
Summary: Drafting of a patent application -- freedom for shaping its content within the constraints
set by patent law -- a myriad of decisions to be made -- justifies a strategic approach to drafting -applicant's motivations and strategic objectives -- technical field -- value chain and claimed subject
matter -- user-oriented approach to claim drafting -- interaction with other protection options.
Subject: Patent applications--procedure
Subject: Patent claims--procedure
SNIPER No.: 2014/01728
Author: Mirandah, Gladys
Title: Patents as collateral for Singapore companies
Source: Asia IP: Protecting your Intellectual Assets. Vol. 6 No. 4, April 2014, p. 55.
Summary: On April 8 2014, Singapore announced new financing scheme to help local businesses
secure bank loans by using their patents as collateral -- agency implementing the scheme is the
Intellectual Property Office of Singapore (IPOS) -- eligibility requirements for the scheme -- how it
works -- two-year plan -- Singapore government shares the default risk with the three participating
banks -- advantages to using IP as collateral -- more secure than other forms of collateral -- lower
risk of default because of consistent source of cash flow from royalties -- increased return that the
owner of the IP earns -- owner's return increased through increased leveraging -- main
disadvantage is risk but can be minimised through proper loan structure.
Subject: Value of intellectual property--Singapore
Subject: Financial services industry--Singapore
SNIPER No.: 2014/00179
Author: Rijsdijk, Michiel
Title: Plain tobacco packaging in the EU
Source: World Intellectual Property Review. November-December 2013, p. 93.
Summary: Australia has mandatory plain packaging for tobacco products -- European parliament
has proposed similar rules in revisions to the Tobacco Products Directive -- one of the proposed
revisions was that cigarette packs should contain large pictorial health warnings -- tobacco
companies operating in Europe are still allowed to brand their packs -- European Commission (EC)
provides member states with a library of health warning pictures -- trade mark owners will have to
SNIPER Bulletin – October 2014
Page 51 of 76
use one of the pictures to cover their products -- tobacco brands considering the effect it would
have on their business and their trade mark rights -- European parliament voted against the
proposed revisions -- rejected plain packaging for tobacco products -- tobacco packs should
contain health warning labels -- opted for a 65 percent mandatory coverage instead of 75 percent - trade mark owners are not allowed to use their trade mark rights to the full extent -- whether these
restrictions are justifiable -- proposed revisions are restrictions on the use of a trade mark -- trade
mark is still able to fulfil its core function -- identifying the origin of the marked products to the
consumer -- negotiations will have to lead to a compromise.
Subject: Trade dress--manufacturing and processing industry--Europe
Subject: Trade mark owners' rights--Europe
SNIPER No.: 2014/00164
Title: Planning for the UPC
Source: World Intellectual Property Review. November-December 2013, pp. 74-75.
Summary: 18th annual congress of the Chartered Institute of Patent Attorneys (CIPA) -- unitary
patent and the United Kingdom's preparation for the impending launch -- debate surrounding 3D
printing -- UK's position on the Unified Patent Court (UPC) -- costs -- UPC could produce a surge
in the numbers of non-practising entities (NPEs) -- elements of the negotiations could also deter
"troll-type litigation".
Subject: Patent systems--Europe
Subject: Non-practicing entities--Europe
SNIPER No.: 2014/01726
Author: Miles, Lee
Title: A positive change for the Singapore patent system
Source: Asia IP: Protecting your Intellectual Assets. Vol. 6 No. 4, April 2014, pp. 47-51.
Summary: Legislative changes to the Singapore Patents Act and Patent Rules came into force on
14 February 2014 -- key changes -- Singapore's shift from a "self-assessment" to a positive-grant
patent system -- brings it more in line with patent office practices in other major jurisdictions -examination procedure under the positive grant system -- may request conventional or
supplementary examination -- voluntary amendments cannot be filed after a Request for
Examination has been filed with the Intellectual Property Office of Singapore (IPOS) -- re-opening
of prosecution post-grant no longer possible -- other changes -- liberalization of the patent agent
regime -- now possible for foreign-registered patent agents/attorneys to undertake offshore patent
agency work from Singapore -- integration and streamlining of the IT systems and procedures of
the different Registries of IPOS -- easier for customers to execute transactions and access
information related to their different IP rights
Subject: Patent systems--Singapore
Subject: Patent examination--Singapore
SNIPER No.: 2014/01254
Author: Wheelahan, Frances
Author: Fixler, David
Title: Post-patent royalties in Australia
Source: Australian Intellectual Property Law Bulletin. Vol. 27 No. 4, May 2014, pp. 104-107.
SNIPER Bulletin – October 2014
Page 52 of 76
Summary: Considerations when drafting patent licenses - broad or narrow definition for the
invention, separate agreements for each invention and for Australian and non-Australian patents -MPEG v Regency Media -- Patent Portfolio License Agreement -- certain Australian patents
expired and Regency wished to terminate the agreement under section 145 of the Patents Act -"Patented invention" -- drafting techniques -- separate agreements for separate inventions -bundling Australian and foreign patents -- other jurisdictions -- projected sales -- does s 145 have a
place in the world of "patent pooling"? -- mixed messages.
Subject: Intellectual property licensing--Australia
Subject: Patent licensing--case law--Australia
SNIPER No.: 2014/01799
Author: Li, Phoebe H.
Author: Lim, Pheh Hoon
Title: A precautionary approach to compulsory licensing of medicines: tempering data exclusivity
as an obstacle to access
Source: Intellectual Property Quarterly. No. 3, 2014, pp. 241-255.
Summary: Framework developed for a precautionary approach which developing countries should
adopt for granting compulsory licences in a national health emergency -- an interpretation of the
data exclusivity regime to temper the obstacle for access to medicines after a compulsory licence
is granted -- precautionary approach to compulsory licensing is based on the proposal that a
margin of safety is necessary when harm has crossed a significant threshold and scientific
evidence has yet to be established -- proposal that a precautionary approach, adopted in
conjunction with a super-stewardship model, will allow for a coherent interpretation of the
flexibilities under the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS)
to help bridge the gap in the public health dilemma.
Subject: Compulsory licensing
Subject: Data exclusivity--pharmaceutical industry
Subject: Human rights
Subject: Patents--pharmaceutical industry
SNIPER No.: 2014/01832
Author: Blom, Joost
Title: Private international law aspect of user-generated content
Source: Intellectual Property Journal (Carswell). Vol. 26 No. 2, July 2014, pp. 205-215.
Summary: Canada's new provision in section 29.21 of the Copyright Act -- creates a right to use
existing works to make user-generated content -- right has no counterpart elsewhere -- potentially
creates issues of private international law -- explores the different national laws that can apply to
particular acts of infringement -- national courts in which these laws may be enforced -- the
practical implications of this legal pattern for those who make user-generated content -- focus on
Canada.
Subject: User-generated content--Canada
Subject: International law--Canada
SNIPER No.: 2014/01257
Author: Miller, Lester
SNIPER Bulletin – October 2014
Page 53 of 76
Title: Protecting designs in the age of 3D printing
Source: Australian Intellectual Property Law Bulletin. Vol. 27 No. 5, June 2014, pp. 118-122.
Summary: 3D printing -- Designs Act 2003 in potential state of flux pending an Advisory Council
on Intellectual Property (ACIP) review -- possible ways in which the Act could be strengthened -The Maker Movement -- what is 3D printing? -- creating model data -- importing an stereo
lithographic (STL) file of a registered design -- protecting designs in Australia -- Designs Act 2003 - authorisation -- joint tortfeasor -- take-down requests -- offer to make -- potential actions under a
potential Designs Act -- "product" redefined -- contributory infringement -- ACIP designs review.
Subject: Industrial designs--law and legislation--Australia
Subject: Three dimensional printing--Australia
SNIPER No.: 2014/01826
Author: Samson, Robert Nero B.
Author: Go, Gonzalo
Title: Protecting traditional knowledge as cardinal technology in the Philippines
Source: Les Nouvelles. Vol. 49 No. 3, September 2014, pp. 192-201.
Summary: Legal framework of traditional knowledge (TK) in the Philippines -- how the
contemporary Philippine intellectual property system protects it -- definition and criteria for
protection eligibility -- concerns of indigenous people in availing of such protection -- legal
framework under International Law -- TK through the lens of Philippine laws -- National Cultural
Heritage Act -- Traditional and Alternative Medicine Act -- option to exclusively appropriate or share
to public -- enabling laws must nurture and strengthen the roots of TK.
Subject: Traditional knowledge--Philippines
Subject: Environmental issues in intellectual property--statistics
SNIPER No.: 2014/01247
Author: Austin, Scott
Author: Barrett, Thomas
Author: Payosova, Tetyana
Title: Protective measures
Source: Trademarks and Brands Online. Vol. 3 No. 1, 2014, pp. 40-41.
Summary: Generic top-level domains (gTLDs) -- brand and trade mark owners -- protecting their
rights and their consumers -- in the expanded domain name system -- rights protection measures
(RPMs) -- effectiveness of the RPMs -- legal rights objections (LROs) -- 'dot' brand applications -evolving constituency groups -- expansion of the gTLD space has also increased the range of new
stakeholders that have an interest in ICANN's structure and operation -- brand owners may have
opted to use the Donuts Protected Marks List (DPML).
Subject: Domain names
Subject: Trade mark enforcement
SNIPER No.: 2013/02824
Author: Fütman, Özlem
Title: Proving dilution: the situation in Turkey
Source: World Intellectual Property Review. September-October 2013, pp. 96-97.
SNIPER Bulletin – October 2014
Page 54 of 76
Summary: Article 8/4 of Turkish Trademark Decree Law no. 556 -- examination process of dilution
cases by the Turkish Patent Institute -- earlier application or registration by opponent for the trade
mark -- whether opponent's mark is well known -- confusing similarity -- possible harm to the
reputation of the earlier mark
Subject: Trade mark dilution
Subject: Trade mark distinctiveness
SNIPER No.: 2014/00176
Author: Maruyama, Ryo
Author: Hari, Hiroshi
Title: Recent changes in JPO's examination guidelines
Source: World Intellectual Property Review. November-December 2013, p. 90.
Summary: Japan Patent Office (JPO) revised its examination guidelines concerning -- unity
requirement -- amendment that changes a specific technical feature (STF) of an invention (ACSTF)
-- examination procedure relating to said unity requirement and ACSTFs.
Subject: Patent examination--procedure--Japan
Subject: Patent examination--reform--Japan
SNIPER No.: 2014/01517
Author: Smith, Nathan
Title: Red Bull v The Bull Dog: 'due cause' in trade mark infringement
Source: Journal of Intellectual Property Law and Practice. Vol. 9 No. 8, August 2014, pp. 621-623.
Summary: Court of Justice of the European Union (CJEU) decision suggests that 'due cause'
should be interpreted more widely in scope than in the past -- Leidseplein Beheer BV and
Hendrikus de Vries v Red Bull GmbH and Red Bull Nederland BV -- 'due cause' (under Article 5(2)
of Directive 89/104 (replaced by Directive 2008/95) -- Mr de Vries had been using 'The Bulldog' as
a trade name for hotel, restaurant and cafe services since 1975 -Red Bull registered the word and figurative mark 'Red Bull Krating-Daeng' in 1983 -- Mr de Vries
sold energy drinks under the sign 'Bull Dog' after the Red Bull marks registration and its reputation
had been acquired -- legal history -- analysis of CJEU decision -- Interflora decision -- welcome
decision for small local brand owners aiming to expand their range of goods but who were reluctant
due to the registered rights of global corporations who arrived in the market at a later date.
Subject: Trade mark infringement--case law--Europe
Subject: Prior use (Trade marks)
SNIPER No.: 2014/01725
Author: Beconcini, Paolo
Title: Reflections on the status of trademark protection in China: why we cannot always blame it on
China
Source: Asia IP: Protecting your Intellectual Assets. Vol. 6 No. 4, April 2014, pp. 43-45.
Summary: Perception by foreign brand owners that the Chinese trade mark system is inadequate
to protect foreign brands -- not all alleged shortcomings of trade mark protection in China
attributable to malicious political will -- becomes excuse for managers to divert attention from their
own responsibilities -- foreign company may be unprepared -- actions in China ill-considered -China's new trade mark law -- introduced new interpretations of the law which seem to provide
SNIPER Bulletin – October 2014
Page 55 of 76
remedies against trade mark grabbing -- knowledge and education key factor in improving
performance of foreign companies -- need to develop and share knowledge among foreign
companies.
Subject: Trade marks--China
Subject: Trade marks--law and legislation--China
SNIPER No.: 2014/01230
Author: Sexton, Christopher
Title: Reforming Australian copyright law in the age of the digital economy
Source: Intellectual Property Forum. No. 97, June 2014, pp. 2-5.
Summary: Australian Law Reform Commission's (ALRC) "Final Report on Copyright and the
Digital Economy" report tabled in Federal Parliament on 13 February 2014 -- ALRC was asked to
review the adequacy and appropriateness of current copyright exceptions and statutory licences,
with particular reference to the digital environment -- key recommendations -- the fair use
exception -- alternative fair dealing exception -- other recommendations -- key opinions expressed
on the report.
Subject: Copyright--reform--Australia
Subject: Fair use (Copyright)--law and legislation--Australia
SNIPER No.: 2014/01245
Author: Anderson, Ben
Title: The reluctance of rights owners
Source: Trademarks and Brands Online. Vol. 3 No. 1, 2014, pp. 36-37.
Summary: Generic top-level domains (gTLDs) -- trade mark owners largely avoiding sunrise
periods in the first new generic top-level domains to go live -- lack of a well-defined strategy by
some owners -- decision to ignore the gTLD programme proving costly to some brands -- highprofile cybersquatting taking place -- companies need to find a balance between registering
everything and ignoring the opportunities offered by the scheme.
Subject: Domain name registration
Subject: Brand management
SNIPER No.: 2013/02829
Author: Pfleghar, Udo
Title: A remarkable success story: the registered community design
Source: World Intellectual Property Review. September-October 2013, pp. 108-111.
Summary: First applications for registered community designs filed April 2003 -- 40,500
applications filed in 12 months -- more than 690,000 filed in the last 10 years -- "grant an exclusive
right in the external appearance of a product or part of it" -- RCDs can be protected for up to 25
years -- value of design rights -- Apple v Samsung battle -- Designview database launched in 2012
-- internet platform allowing users to search national offices for design registrations -- rise of 3D
printers may bring the possibility of design rights infringement
Subject: Industrial designs
Subject: Industrial design owners' rights
SNIPER Bulletin – October 2014
Page 56 of 76
SNIPER No.: 2014/01844
Author: Helm, Sarah
Author: Tannock, Quentin
Author: Iliev, Ilian
Added author: CambridgeIP
Added author: World Intellectual Property Organization
Title: Renewable energy technology: evolution and policy implications: evidence from patent
literature
Source: Renewable Energy Technology: Evolution and Policy Implications: Evidence from Patent
Literature. 2014.
General Note: Prepared by CambridgeIP for WIPO.
General Note: WIPO Global Challenges Report.
Summary: Patent landscapes of four Climate Change Mitigation Technologies (CCMTs) to inform
policy discussions by providing empirical evidence of innovation trends and technology ownership - four CCMTs are biofuels, solar thermal, solar photovoltaic (PV) and wind energy -- broad market
analysis of renewables and their policy frameworks -- range of patent activity -- patent filing trends
-- top technology owners -- patent concentrations and market trends -- data from 1975-2011 -- key
implications and considerations for policy and policy makers.
Subject: Patents--utilities supply industry
Subject: Environmental issues in intellectual property
Subject: Patents--trends
SNIPER No.: 2014/01236
Author: Lazeanu, Edgar
Title: Repealing the parallel importation restrictions for books: the case of an "author offset"
Source: Intellectual Property Forum. No. 97, June 2014, pp. 49-62.
Summary: Parallel importation restrictions (PIRs) -- detrimental effects that PIRs generally have
on market efficiencies -- relationship between parallel importation and the concept of "exhaustion" - in the Australian context, "international exhaustion" is preferred to "national exhaustion" -- the
anticompetitive effects on intra-brand competition created by PIRs outweigh the pro-competitive
effects on inter-brand competition -- effects that technology has had on products embodying
copyright works -- inadequacies of PIRs in maintaining discrete markets based on geographical
territories.
Subject: Parallel importing--culture and entertainment industry--Australia
Subject: Parallel importing--law and legislation--Australia
SNIPER No.: 2014/01661
Author: Atacador, Joy
Title: Reputation trumps registration rights in NAPPYLAND trade mark dispute
Source: Australian Intellectual Property Law Bulletin. Vol. 27 No. 6, July 2014, pp. 146-148.
Summary: Federal Court of Australia confirmed in the Nappyland case unregistered common law
rights in a trade mark may be sustained against the registered owner of the same or a deceptively
similar trade mark -- CI JI Family Pty Ltd v National Australian Nappies (NAN) Pty Ltd -- statutory
SNIPER Bulletin – October 2014
Page 57 of 76
framework -- background to the case -- reconciling the function of a registered trade marks system
with reputation-based unregistered rights.
Subject: Trade mark infringement--case law--Australia
Subject: Trade mark registration--Australia
SNIPER No.: 2014/00074
Author: Lim, Daryl
Title: Reverse payments: life after Actavis
Source: IIC : International Review of Intellectual Property and Competition Law. Vol. 45 No. 1,
February 2014, pp. 1-5.
Summary: United States Supreme Court's opinion in Federal Trade Commission (FTS) v. Actavis
-- facts of the case -- analysis of the decision -- practical significance
Subject: Competition (Economics)--pharmaceutical industry--United States
Subject: Pharmaceuticals--case law--United States
SNIPER No.: 2014/01798
Author: Matulionyt, Rita
Title: A revival of rental right to software?: Microsoft's new controversial licensing practices
Source: Intellectual Property Quarterly. No. 3, 2014, pp. 227-240.
Summary: Rental right licences as newly introduced by Microsoft -- Microsoft is "testing"
enforcement of these licences in Korea -- likely to initiate similar claims in Europe -- relationship
between Microsoft's rental right licences and exclusive rental rights to software as granted under
international and EU copyright laws.
Subject: Agreement on Trade-Related Aspects of Intellectual Property Rights (1994 April 15)
Subject: Computer-related inventions
Subject: Intellectual property licensing
Subject: International law
SNIPER No.: 2014/01701
Author: Kinder, Lieve de
Author: Mortelmans, Bart
Title: Right first time
Source: Trademarks and Brands Online. Vol. 3 No. 2, 2014, pp. 38-39.
Summary: New generic top-level domains (gTLDs) launching -- registering a trade mark under
every extension is no longer a feasible solution for protecting rights -- ignoring all the new
extensions is not a good idea -- pick the extensions that are significant for the trade mark owner
and its business -- registration in the Trademark Clearinghouse (TMCH) is needed -- once
registered with the TMCH a trade mark owner can enforce its trade mark -- sunrise period -'claims service' -- 'extended claims service' -- most trade mark owners and even trade mark offices
prefer to use a registered TMCH agent to perform their request to register a mark -- rights owners
must provide a 'proof of use' to the TMCH before participating in a sunrise period -- providing
evidence of use -- TMCH being abused -- defensive registrations.
Subject: Domain name registration
SNIPER Bulletin – October 2014
Page 58 of 76
Subject: Trade mark registration
SNIPER No.: 2014/01697
Title: A rock and a hard place?: the post-NTIA era
Source: Trademarks and Brands Online. Vol. 3 No. 2, 2014, pp. 28-29.
Summary: Internet Corporation for Assigned Names and Numbers (ICANN) -- Governmental
Advisory Committee (GAC) -- voted to kill off the e-commerce company's application for the
.amazon generic top-level domain (gTLD) -- term clashed with the name of the Amazon region -final ICANN decision yet to arrive -- brand owners feel the ruling was highly unfair -- GAC's ruling
made it abundantly clear how powerful the body has become -- United States government walking
away from the contract that allows it to oversee ICANN -- National Telecommunications and
Information Administration (NTIA) said its oversight of several internet functions will be transferred
to the "global multi-stakeholder community" -- process for deciding what should replace the NTIA.
Subject: Domain name registration
SNIPER No.: 2014/00156
Title: Root cause: protecting traditional knowledge
Source: World Intellectual Property Review. November-December 2013, pp. 40-43.
Summary: Maasai name has been used in the branding of many different consumer items -Maasai Intellectual Property Initiative founded -- to allow the Maasai people of Kenya and Tanzania
greater control over their 'brand' -- assert intellectual property (IP) rights to strengthen their
economy -- founded by a non-governmental organisation (NGO) -- focused on realising the value
of IP to support communities in developing countries in Africa -- using a combination of methods is
best for protecting traditional knowledge -- library of traditional knowledge -- some indigenous
communities in the US are embracing a more established legal route -- Navajo nation sued Urban
Outfitters for trade mark infringement, trade mark dilutions, unfair competition and commercial
practice law violations, and for violations of the Indian Arts and Crafts Act (IACA) -- South African
solutions -- draft Traditional Knowledge Bill -- keeps traditional knowledge outside IP statutes -creates a brand new property right called Traditional Knowledge.
Subject: Traditional knowledge
Subject: Traditional cultural expressions
SNIPER No.: 2014/01259
Author: Sadleir, Rebecca
Title: Royalties and licence payments: a practical focus
Source: Australian Intellectual Property Law Bulletin. Vol. 27 No. 5, June 2014, pp. 127-129.
Summary: Royalties and other payments -- what is "net sales value" and why use it to calculate
royalties? -- arm's length sales and sublicensing -- what should the royalty rate be? -- the "25%
rule" of thumb -- minimum royalties -- royalty stacking -- taxes -- other clauses in licence
agreements.
Subject: Intellectual property licensing--management
Subject: Finance
SNIPER No.: 2014/00165
Title: Saving the best for last
SNIPER Bulletin – October 2014
Page 59 of 76
Source: World Intellectual Property Review. November-December
2013, p. 76.
Summary: Marques annual trade mark conference -- pros and cons of crowdsourcing and social
media for brands -- "brand jacking" -- new generic top-level domains (gTLDs) -- trade marks and
free speech.
Subject: Social networking
Subject: Domain name registration
SNIPER No.: 2014/01814
Author: Australia. Office of the Chief Scientist
Title: Science, technology, engineering and mathematics: Australia's future
Source: Science, Technology, Engineering and Mathematics: Australia's Future. 2014.
Summary: Long-term strategic view of STEM's pivotal role in securing a stronger Australia -Australian competitiveness -- education and training -- research -- international engagement -Australia is now the only country in the OECD not to have a current national strategy that bears on
science and/or technology and/or innovation -- Australia paying the price for lagging behind
overseas competitors on key performance measures.
Subject: Research and development--Australia
Subject: Innovation (Technological)--statistics--Australia
SNIPER No.: 2014/01516
Author: Snedden, Susan
Title: Scottish Court of Session considers whether patent can be interpreted without expert
evidence
Source: Journal of Intellectual Property Law and Practice. Vol. 9 No. 8, August 2014, pp. 620-621.
Summary: Court of Session rules that while the present trial involved first hearing expert
witnesses in a patent interpretation case, the court can in fact make a decision without hearing
expert witnesses -- Total Containment Engineering Limited v Total Waste Management Alliance
Limited -- in Scottish proceedings preliminary pleas are considered at debate before the trial -- a
patent infringement brought against Total Waste Management Alliance Limited -- technology for
handling and transferring oil well drill cuttings -- analysis of pursuer's pleading -- defender able to
see pursuer's evidence before supplying its own expert evidence -- tactical advantages highlighted
-- impact of the amendment to Scottish IP court rules in 2012 -- case could proceed to a proof
(trial).
Subject: Patent infringement--case law--Scotland
Subject: Patent litigation--Scotland
Subject: Expert witnesses--case law--Scotland
Subject: Legal procedure--reform--Scotland
SNIPER No.: 2014/01700
Author: Alzapiedi, Kate
Title: Sharing knowledge lawfully
Source: Trademarks and Brands Online. Vol. 3 No. 2, 2014, pp. 36-37.
SNIPER Bulletin – October 2014
Page 60 of 76
Summary: Whether employees have the right to store or share externally-published content
across the organisation -- 'knowledge' workers tend to copy and forward information at will -- little
regard for the copyright
regulations that apply to the reuse of those materials -- obtaining permission from rights holders is
complicated by copyright laws that differ from country to country -- many workers unaware for the
risks of using copyrighted material in unauthorised ways -- 2013 Information Consumption and Use
Survey commissioned by the Copyright Clearance Center, independent research and advisory firm
Outsell -- not many respondents knew there might be risks and limits associated with sharing
content -- subscriptions and article purchases do not automatically include the right to re-use, store
and share content across an organisation -- free online content downloads may still be restricted
from re-use for commercial purposes -- programmes to educate and guide employees on copyright
compliance -- awareness of copyright policy tends to vary considerably among employees -potential consequences of copyright violation -- options for sharing content lawfully.
Subject: Intellectual property licensing
Subject: Copyright infringement
SNIPER No.: 2014/01796
Author: Nielsen, Jane
Author: Nicol, Dianne
Author: Liddicoat, John
Title: Sharing the burden in Australian drug discovery and development: collaborative trends in
translational research
Source: Intellectual Property Quarterly. No. 3, 2014, pp. 181-209.
Summary: Biotechnology has important implications for drug discovery and development -translation of the patented research results of the genomic era offers an opportunity to permanently
revolutionise the way we develop drug technology -- not seeing as much effective translation of
drug targets as might be expected -- results of a study into collaborative strategies in Australian
biotechnology -- undertaken to assess their efficacy for enhancing the delivery of market-ready
products -- supports earlier findings that formalised strategies such as patent pooling and
clearinghouses currently provide little advantage -- high degree of fragmentation of the technology,
and a low degree of fragmentation of the intellectual property landscape -- less structured
arrangements continue to predominate -- questionable whether these models are currently being
optimally utilised -- policy implications of encouraging particular models of co-operation in drugbased research.
Subject: Business collaboration--biotechnology industry--Australia
Subject: Research and development--Australia
SNIPER No.: 2014/01327
Author: Hitchcock, Julian
Author: Brito, Clara Sattler de Sousa e
Title: Should patents determine when life begins?
Source: European Intellectual Property Review. Vol. 36 No. 6, 2014, pp. 390-398.
Summary: Patentability of inventions derived from fertilised human eggs -- importance of human
embryonic stem cells (hESCs) -- Biotechnology Directive -- Brüstle v Greenpeace -- controversial
CJEU decision -- hESC products should be unpatentable on the principle of human dignity -dignity under the Charter of Fundamental Rights of the European Union -- EU Member States that
follows the decision may breach European human rights law and international trade agreements.
SNIPER Bulletin – October 2014
Page 61 of 76
Subject: Patenting of life forms--case law--Germany
Subject: Ethics
Subject: Biotechnology--patentability--Europe
Subject: Research on life forms--law and legislation--Europe
SNIPER No.: 2014/01251
Author: Wilkinson, Genevieve
Title: Simple and flexible? Considering the proposed changes to fair dealing
Source: Australian Intellectual Property Law Bulletin. Vol. 27 No. 4, May 2014, pp. 92-95.
Summary: Australian Law Reform Commission released 'Copyright and the digital economy: final
report' in November 2013 proposing reform to streamline and simplify aspects of the Copyright Act
1968 -- fair dealing defences replaced with a flexible fair use defence -- more closely align
Australian copyright law with the United States -- Flexible fair use defence -- protection for
quotation and the significance of freedom of expression rights -- opposition -- new fair dealing
exception -- when will fair dealing change?
Subject: Copyright--law and legislation
Subject: Fair use (Copyright)
SNIPER No.: 2014/01241
Title: Six seconds of fame
Source: Trademarks and Brands Online. Vol. 3 No. 1, 2014, pp. 18-20.
Summary: Social media tool -- Vine -- allows users to upload a looping six-second video of choice
-- assess the copyright implications -- associated IP concerns -- rights holders -- brief views
permissible under the Copyright Act -- sentiment that rights holders can be too aggressive when
protecting their rights -- questions surrounding who to target and infringement -- the service or the
person who uploaded the video -- cross promotion of Vine videos shared across Twitter, Facebook
and YouTube.
Subject: User-generated content
Subject: Information technology industry
Subject: Social networking
SNIPER No.: 2014/01248
Title: Snapshot: webtrate
Source: Trademarks and Brands Online. Vol. 3 No. 1, 2014, p. 42.
Summary: Internet blocking software program Webtrate -- promotion of the browsing tool for
writers -- why the program is different from other blocking programs -- intellectual property
protection of the product -- types of channels used to promote -- challenges in protecting the brand.
Subject: Internet
Subject: Carriage service providers
SNIPER No.: 2014/01694
Title: Should registries be the internet police?
Source: Trademarks and Brands Online. Vol. 3 No. 2, 2014, pp. 16-18.
SNIPER Bulletin – October 2014
Page 62 of 76
Summary: Domain name registry provides access to a web address -- when a website is found to
infringe intellectual property rights, how much blame can be levied on the registry? -- question
posed by a dispute between Cartier and Nominet, the registry for .uk domain names -- Cartier filed
a lawsuit against Nominet, having taken issue with 12 websites which, it said, were selling
counterfeit watches that infringed the Cartier trade mark -- Cartier sought an order, which if
granted, will give brand owners the power to bypass standard procedures for determining who
owns a domain -- force registries to take down suspected IP infringing websites following a court
order -- legal action continuing despite Nominet suspending the websites -- Nominet being labelled
an "intermediary" -- registries provide a crucial piece of infrastructure that allows the user to view
the website -- victory for Cartier would require registries to police the contents of websites under
their control -- questions about the future for registries, which may have to act on domains that
don't incorporate trade marks -- questions about the reliability of the Whois system for establishing
who is behind a website.
Subject: Domain name registries--liability--United Kingdom
Subject: Trade mark infringement--liability--United Kingdom
SNIPER No.: 2014/01237
Author: Li, Jiang
Author: Shi, Wei
Title: Space for flexibility: lessons from the European Union harmonisation model in human
embryonic stem cell regulation
Source: Intellectual Property Forum. No. 97, June 2014, pp. 63-68.
Summary: Human embryonic stem cells enormous potential for therapeutic medicine -- lack of
common technical standards and uniform patent criteria have hampered further technological
progress -- for human embryonic stem cell research in the European Union (EU), divergent
regulations among member states have generated unequal access to treatment and an imbalance
in distribution of benefits and duties -- Biotechnology Directive -- step toward harmonising
European patent law on biotechnology -- no uniform moral definition nor a uniform legal status for
human embryos -- uniform concept of human embryos and the ban on patenting inventions that
involve the destruction of human embryos -- attempt at infusing moral control with patent
regulations.
Subject: Standards (Technical)
Subject: Research on life forms
Subject: Harmonisation of laws
SNIPER No.: 2014/01252
Author: Olsen, Marina
Title: "Standard essential patents" hit the spotlight in Apple v Samsung fight
Source: Australian Intellectual Property Law Bulletin. Vol. 27 No. 4, May 2014, pp. 96-100.
Summary: Long running global battle raises the untested legal issue of what limitations will be
placed on the owner of a patent that has been declared 'essential' -- the Apple v Samsung
proceedings generally -- the standard essential patent (SEP) issue -- Apple's defence and crossclaim -- standards and standards-setting organisations -- the European Telecommunications
Standards Institute -- SEPs and FRAND licensing obligations -- FRAND terms under Australian law
-- SEPs and injunctive relief -- SEPs and competition law
Subject: Patent infringement--case law
Subject: Standards (Technical)
SNIPER Bulletin – October 2014
Page 63 of 76
SNIPER No.: 2014/01695
Title: Status update: 'feeling copied'
Source: Trademarks and Brands Online. Vol. 3 No. 2, 2014, pp. 20-22.
Summary: Twitter and Facebook -- content via tweets and status updates can be shared far
beyond the scope of immediate friends and followers -- what can be protected by intellectual
property on these platforms? -- rights can be waived -- terms of service (ToS) of a social media
platform often say that by posting a photograph you are giving the website the permission to copy
or share it -- Facebook ToS -- less clear what the rules are on Twitter -- what happens when third
parties use photographs that have been taken from another person's social media page? -- dispute
involving a freelance photographer Daniel Morel -- protecting tweets under copyright law -concerns for trade mark owners -- misusing a trade mark -- policing brand misuse can be time
consuming -- right holders are moving towards interacting more with their consumers -- need to
balance the damage to their brand with the possible adverse publicity that may result from taking
action -- trade mark owners using social media to create brand loyalty -- unauthorised fan or tribute
pages -- brand owners need to think carefully before deciding whether to take action.
Subject: User-generated content
Subject: Social networking
Subject: Intellectual property enforcement
SNIPER No.: 2014/01262
Author: Berger, Tyrone
Title: Statutory termination rights in patent licence agreements: a bridge too far?
Source: Australian Intellectual Property Law Bulletin. Vol. 27 No. 5, June 2014, pp. 141-142.
Summary: Federal Court of Australia decision -- MPEG LA, LLC v Regency Media Pty Ltd -recently ruled that no notice of termination will be effective until all of the patents in respect of the
patented inventions identified in the patent licence have ceased to be in force -- background and
facts -- the decision -- practical significance.
Subject: Intellectual property licensing--case law--Australia
Subject: Patents--case law--Australia
SNIPER No.: 2014/01810
Author: Heindl, Sabiene
Title: Steve Madden accused of copycatting, again
Source: Australian Intellectual Property Law Bulletin. Vol. 27 No. 7, August 2014, pp. 196-197.
Summary: World famous Balenciaga Motorcycle Bag -- Balenciaga is alleging trade mark
infringement against footwear company Steve Madden Ltd in New York over its "copycat"
Balenciaga Motorcycle Bag -- allege infringement of a trade dress regulation filed by the French
fashion house -- protects the overall commercial image of a product -- Steve Madden's wholesale
copying of Balenciaga's designs is likely to deceive consumers into believing that the infringing
[hand-bag] is associated with or authorized by Balenciaga -- Balenciaga would need to prove that
the trade dress distinguishes its Motorcycle Bag from others in the market.
Subject: Trade mark infringement--case law--United States
Subject: Trade dress--case law--United States
SNIPER Bulletin – October 2014
Page 64 of 76
SNIPER No.: 2014/01240
Title: Streaming ahead in the music industry
Source: Trademarks and Brands Online. Vol. 3 No. 1, 2014, pp. 14-16.
Summary: Viability of streaming services -- impact on copyright owners -- music streaming
service Spotify -- personalised radio service Pandora -- how licensing works -- compulsory
statutory licences -- rules of the Digital Millennium Act -- licensing music for online platforms -existing royalties structure.
Subject: Electronic copyright--United States
Subject: Copyright licensing--United States
SNIPER No.: 2014/01607
Author: Shield, Christopher
Author: Spivey, Jonathan
Author: Ayers, Robert
Title: The Supreme Court continues to rein in the Federal Circuit
Source: Intellectual Property Magazine. July-August 2014, pp. 76-77.
Summary: In four unanimous opinions the Supreme Court repeatedly overturned the Federal
Circuit -- redefined patent law regarding induced infringement, indefiniteness, and exceptional case
status -- Limelight Networks, Inc v Akamai Technologies, Inc, the court's opinion delivered by
Justice Alito overturned an en banc Federal Circuit decision -- had previously expanded liability for
induced infringement to include defendants that only performed some of the claimed method steps
of an asserted claim -- Muniauction, Inc v Thomson Corp -- Nautilus, Inc v Biosig Instruments, Inc - Octane Fitness, LLC v ICON Health & Fitness, Inc -- court's recent opinions signal a movement
toward reining in vague and overly broad infringement allegations -- represent a significant shift in
law governing exceptional case
determinations.
Subject: Patents--case law--United States
Subject: Patents--law and legislation--United States
SNIPER No.: 2014/01608
Author: Sammi, P. Anthony
Author: Tulin, Edward L.
Author: Gish, Andrew
Title: Supreme Court relaxes standard for patent indefiniteness
Source: Intellectual Property Magazine. July-August 2014, pp. 78-80.
Summary: Supreme Court of the United States -- Nautilus Inc v Biosig Instruments, Inc -- lowering
the bar for parties arguing patent indefiniteness -- opinion rejected the standard set forth by the US
Court of Appeals for the Federal Circuit -- that a patent claim is indefinite '"only when it is 'not
amenable to construction' or 'insolubly ambiguous" -- Supreme Court ruled that a patent claim is
indefinite where it fails to 'inform those skilled in the art about the scope of the invention with
reasonable certainty' -- will allow parties to more easily challenge the validity of vague or
ambiguous patent claims -- may also recast indefiniteness as a question of fact and law subject to
the demanding clear and convincing evidentiary burden.
Subject: Patents--case law--United States
Subject: Patent validity--United States
SNIPER Bulletin – October 2014
Page 65 of 76
SNIPER No.: 2014/01321
Author: Lehr, Claire
Author: Engels, Gabriele
Title: Taking a position
Source: Journal of Intellectual Property Law and Practice. Vol. 9 No. 7, July 2014, pp. 607-614.
Summary: Standpoint of the German Patent and Trademark Office (GPTO), United Kingdom
Intellectual Property Office (UKIPO) and Office of Harmonisation for the Internal Market (OHIM)
with respect to position marks -- placement of an element or sign on a specific location on a
product -- position marks have a long history but haven't always been referred to as "position
marks" -- the UK stance -- the German stance -- the OHIM stance -- the stance of the General
Court -- the "Steiff" cases -- "orange socks" case -- General Court has hardly recognised any
position marks -- German practice is the most favourable for registering position marks -- advice to
applicants applying for position marks
Subject: Trade mark distinctiveness--case law--Europe
Subject: Non-traditional marks--case law--Europe
Subject: Non-traditional marks--registrability--Europe
SNIPER No.: 2014/01730
Author: Shuai, Amanda
Title: Tax in China: optimizing tax in IP transactions
Source: Asia IP: Protecting your Intellectual Assets. Vol. 6 No. 5, May-June 2014, pp. 47-53.
Summary: Intellectual property commercialization in China -- need for IP rights owners to be
aware of tax matters when they license or transfer these intangible assets in China -- design IP
transactions and tax planning schemes efficiently -- may be subject to enterprise income tax (EIT),
value-added tax (VAT) business tax, local levies and stamp duty -- calculating the tax -transferors: residual enterprise -- transferors: non-resident Chinese enterprise -- transacting
agreement -- contracting parties should be careful about the terms and underlying tax liabilities in
the IP transaction contract -- tax treatment of settlement payment for breach of an IP contract -transfer pricing -- conflict between tax incentives and minimizing tax -- litigation and settlement -court and tax authorities - -cooperation between IP and tax attorneys -- tax structures.
Subject: Business taxation--China
Subject: Intellectual property licensing--China
SNIPER No.: 2014/00163
Title: Tech issues and copyright in the spotlight
Source: World Intellectual Property Review. November-December 2013, pp. 72-73.
Summary: Association for the Protection of Intellectual Property (AIPPI's) biannual Forum and
Executive Committee Conference -- focus on the relationship between technology and intellectual
property (IP) -- new generic top-level-domains (gTLD) programme -- Angry Birds model had been
the target of copycat imitations on its brand and game-play method -- Europe's unitary patent and
the Unified Patent Court -- issue of language barriers at the courts -- AIPPI's Executive Committee
conference (ExCo) -- outline recommended reforms to IP legislation -- harmonised year-long grace
period for patents -- imposing a maximum term of 70 years on copyright protection.
Subject: Intellectual property--Information technology industry
SNIPER Bulletin – October 2014
Page 66 of 76
Subject: Copyright terms
SNIPER No.: 2014/01719
Author: Zhang, Weijun
Author: Wei, Lizhou
Author: Li, Yanbing
Title: The Third Revision of Chinese Trademark law: analysis and comment
Source: IIC : International Review of Intellectual Property and Competition Law. Vol. 45 No. 5,
August 2014, pp. 556-586.
Summary: China's new Trademark Law and its implementing Regulations officially took effect
from May1, 2014 -- this third amendment of Chinese Trademark Law contains substantial revisions
-- principal revisions and problems -- subject matter of trade mark protection -- distinctiveness -application and examination procedures -- renewal of registration -- recording licensing -- simplified
opposition procedure -- bad faith applications -- well-known marks -- enforcement of trade mark
rights -- damages -- genuine use
Subject: Trade marks--law and legislation--China
Subject: Trade mark enforcement--China
SNIPER No.: 2014/01319
Author: Snodin, Mike
Title: Three CJEU decisions that answer some questions but pose many more
Source: Journal of Intellectual Property Law and Practice. Vol. 9 No. 7, July 2014, pp. 599-604.
Summary: Guidance provided by Court of Justice of the European Union (CJEU) on
supplementary protection certificates (SPCs) -- more questions raised than answers -- Actavis v
Sanofi -- Georgetown University v Octrooicentrum Nederland -- Eli Lilly v HGS -- possibility of
using one patent to support more than one SPC -- Article 3(a) of Regulation 469/2009 -- Article
3(c) of Regulation 469/2009 -- CJEU's rulings may be difficult to apply to cases with different fact
patterns -- further questions will probably be referred to the CJEU -- it may be better to modify the
SPC legislation itself.
Subject: Patent extension--case law--Europe
Subject: Pharmaceutical industry--case law--Europe
Subject: Patent extension--law and legislation--Europe
SNIPER No.: 2014/00879
Author: Kennedy, Matthew
Title: The "three-step test" and the burden of proof in disputes under the TRIPS Agreement
Source: IIC : International Review of Intellectual Property and Competition Law. Vol. 45 No. 2,
March 2014, pp. 161-177.
Summary: Agreement on Trade-related Aspects on Intellectual Property Rights (TRIPS) -- World
Trade Organisation (WTO) dispute settlement -- three step test -- burden of proof
Subject: Agreement on Trade-Related Aspects of Intellectual Property Rights (1994 April 15)
Subject: Intellectual property rights
Subject: Dispute resolution
SNIPER Bulletin – October 2014
Page 67 of 76
SNIPER No.: 2014/01239
Title: Throwing your weight around
Source: Trademarks and Brands Online. Vol. 3 No. 1, 2014, pp. 10-13.
Summary: Trade mark bullying -- United States Patent and Trade Mark Office (USPTO) definition
-- conditions of trade mark owners under US law -- use of cease and desist letters -- policing of
third party use -- what rights owners can do to avoid being branded bullies -- singling out bullying
online is much easier -- ICANN's Uniform Domain Name Dispute Resolution Policy (UDRP) -governs cybersquatting disputes -- provides for an offence of reverse domain name hijacking -bad faith -- consumer perception -- interest of brand owners to resolve disputes quickly and
cheaply -- Jack Daniels look and feel used on the cover of the novel Broken Piano For President
example.
Subject: Trade mark litigation--United States
Subject: Trade mark infringement
Subject: Intellectual property abuse
SNIPER No.: 2014/01287
Author: Kur, Annette
Title: Trade marks function, don't they?: CJEU jurisprudence and unfair competition principles
Source: IIC : International Review of Intellectual Property and Competition Law. Vol. 45 No. 4,
June 2014, pp. 434-454.
Summary: Controversial case law of the Court of Justice of the European Union (CJEU) on trade
mark functions -- EU Commission intervened by filing a brief with the CJEU and proposing
legislation to provide that protection under the double identity clause will be available only for use
of a sign that affects or is likely to affect the origin function -- much opposition to this proposal -unlikely to succeed -- trade mark functions and their place in determining the scope of protection -how trade mark law absorbs ways of reasoning typically found in unfair competition law
Subject: Trade marks--case law--Europe
Subject: Competition (Economics)--Europe
Subject: Trade mark exhaustion--Europe
SNIPER No.: 2014/01842
Author: Brant, Jennifer
Author: Lohse, Sebastian
Added author: International Chamber of Commerce
Title: Trade secrets: tools for innovation and collaboration
Source: ICC Innovation and Intellectual Property series research paper. No. 3, 2014.
General Note: Publication number: 450/1081-3.
Summary: Contribution of trade secrets to knowledge diffusion and collaborative innovation -aims to inform policy makers about shortcomings in existing frameworks for trade secret protection
-- frameworks can undermine cross-border collaboration -- what is a trade secret -- relationship
between trade secrets and patents -- why trade secrets an important business and public policy
topic -- how trade secrets used by firms -- challenges firms face in managing and protecting trade
secrets.
Subject: Trade secrets
SNIPER Bulletin – October 2014
Page 68 of 76
Subject: Intellectual property management
Subject: Business collaboration
SNIPER No.: 2014/00184
Author: Özdoǧan, Işik
Author: Baklaci, Ezgi
Title: Trademark infringement on the internet
Source: World Intellectual Property Review. November-December 2013, p. 98.
Summary: Law protecting intellectual property (IP) rights in Turkey has not developed fast enough
to protect trade mark holders' rights in every aspect of life -- Trademark Decree Law provides the
same protection to trade marks in cyberspace -- no specific measures defined in law apply in order
to prevent infringing acts in a short period of time -- neither civil nor the criminal provisions provide
an immediate solution to cease the illegal use of a trade mark on the internet -- trade mark owners
need to start a criminal or civil lawsuit and wait until the end of the judgment to have illegal use
ceased -- request a preliminary injunction within the scope of a civil action -- nature of online
infringement cases does not always comply with the principles of the Civil Procedural Law -- no
governmental authority to apply in cases of online trade mark infringement in Turkey -- Turkish
legal system does not provide any option for an expeditious and even temporary order for blocking
access to a website -- Internet Law no 5651 provides a limited list of crimes which can result in
taking down the website -- broad range of crimes can be considered within this scope -considerable number of websites have been taken down based on this law.
Subject: Trade mark infringement--Turkey
Subject: Internet--law and legislation--Turkey
SNIPER No.: 2014/01317
Author: Tilmann, Winfried, 1938Title: The Transitional Period of the Agreement on a Unified Patent Court
Source: Journal of Intellectual Property Law and Practice. Vol. 9 No. 7, July 2014, pp. 575-584.
Summary: National jurisdiction exception and rules regarding the jurisdiction of the Unified Patent
Court (UPC) during the changeover period -- Article 83(1) UPCA: the national jurisdiction exception
-- UPCA law and national courts -- Article 83(3) UPCA: the opt-out exception -- Article 83(4) UPCA:
the opt-in chance -- rules provide a mixed blessing for the transitional period -- new system will
have impressive advantages but users should avoid employing Article 83(1) and (3) UPCA.
Subject: Unified Patent Court
Subject: Patents--law and legislation--Europe
Subject: Legal procedure--reform--Europe
Subject: Patent litigation--Europe
SNIPER No.: 2014/00153
Title: Two sides to every story
Source: World Intellectual Property Review. November-December 2013, pp. 28-31.
Summary: Brazilian Patent and Trademark Office (INPI) filed lawsuits seeking to cut the terms of
more than 170 patents -- introduction of the Trade-Related Aspects of Intellectual Property Rights
(TRIPS) Agreement -- patents covering pharmaceutical and agrichemical products were banned in
Brazil -- until Brazil's laws became TRIPS compliant, the INIP accepted patent applications but
SNIPER Bulletin – October 2014
Page 69 of 76
stored them in a "mailbox" -- Brazilian law states that "mailbox" patents can be protected for a
minimum of 20 years from their filing date and at least 10 years after their grant date -- INPI argued
that the 10-year provision should not apply to the patents, because they were given special
treatment under Brazilian IP law -- latest example of "anti-patent" behaviour by the INPI -- agency
has sought to reduce the backlog of patents, and has had some success -- plans to hire more
patent examiners -- introduced an online patent filing system -- measures aimed at reducing
waiting times for pharma patents -- Brazil's trade mark scene -- established a standalone
procedure for requesting "famous" status.
Subject: Intellectual property systems--Brazil
Subject: Patents--law and legislation--Brazil
SNIPER No.: 2014/01834
Author: Hebb, Marian D.
Title: UGC and fan fiction: rethinking Section 29.21
Source: Intellectual Property Journal (Carswell). Vol. 26 No. 2, July 2014, pp. 237-248.
Summary: New exception in section 29.2I of the Canadian Copyright Act for user-generated
content (UGC) -- considerable revision needed to give protection to both economic and moral
rights of authors of existing works used in the creation of fan fiction and other UGC works -- failing
dealing section of the Act should be expanded to provide scope for creation and publication of
derivative works by professional writers and creators -- collective societies could play a role in
facilitating payment to authors of existing works for the use of their works in UGC disseminated to
the public by a commercial distributor under section 29.2I.
Subject: User-generated content--Canada
Subject: Copyright ownership
Subject: Copyright--law and legislation--Canada
SNIPER No.: 2014/01194
Author: Savola, Pekka
Title: The ultimate copyright shopping opportunity: jurisdiction and choice of law in website
blocking injunctions
Source: IIC : International Review of Intellectual Property and Competition Law. Vol. 45 No. 3,
May 2014, pp. 287-315.
Summary: Injunctions issued to Internet service providers (ISPs) to block access to websites to
reduce online copyright infringement -- parties and infringing acts may be in different states -questions about which court has jurisdiction to try the case and to what extent -- which laws apply - forum-shopping and choice of law in proceedings against website operator and then against the
ISP -- website blocking injunctions against the ISPs -- situation in the EU for jurisdiction and choice
of law -- analysis of various scenarios
Subject: Copyright infringement
Subject: Forum shopping
Subject: Carriage service providers
SNIPER No.: 2014/01829
Author: Tak, Hester
Author: Smailes, Bob
SNIPER Bulletin – October 2014
Page 70 of 76
Title: UniLink: a new model for increasing academic and industry partnerships
Source: Les Nouvelles. Vol. 49 No. 3, September 2014, pp. 215-223.
Summary: Three types of tech transfer models for university-industry licensing -- classical model
used by the majority of universities -- research agreements, publication clauses and licenses for IP
are heavily negotiated -- economic model -- focussed on developing the regional economy -technology push model focussed on developing spinouts and/or start ups -- Easy Access IP model
-- relatively new business model -- also focussed on technology push -- technologies offered free
to industry using standard license agreements in exchange for "anticipated future engagements" -advantages and disadvantages of models discussed -- problems in the classical technology
transfer model -- trends -- alternative model offered called UniLink -- basis of UniLink, developed in
the Netherlands to overcome problems in the classical model -- platform -- express licensing -industry community -- industry days -- express research -- student link -- potential pitfalls -flexibility -- benefits to both institution and the companies.
Subject: Intellectual property licensing--policy
Subject: Technology transfer--policy
SNIPER No.: 2014/01825
Author: Cordes, Christoph
Title: The Unitary Patent and the Unified Patent Court
Source: Les Nouvelles. Vol. 49 No. 3, September 2014, pp. 184-191.
Summary: Major change to the existing patent system in the European Union -- uniform patent
protection throughout the European Union proposed -- existing patent protection -- creation of the
Unitary Patent -- legal basis "the Patent Package" -- application procedure of the unitary patent -the languages regime -- unitary effect -- Unified Patent Court System -- jurisdiction -- rules of
procedure -- entry into force and transitional procedures -- strategic considerations -- court
proceedings.
Subject: Unified Patent Court
Subject: Patent systems--harmonisation--Europe
Subject: Regional patents--Europe
Subject: Patents--reform--Europe
SNIPER No.: 2014/01284
Author: Zawadzka, Zofia
Title: The Unitary patent protection: a voice in the discussion from the Polish perspective
Source: IIC : International Review of Intellectual Property and Competition Law. Vol. 45 No. 4,
June 2014, pp. 383-398.
Summary: Unitary patent system created within the framework of the European Union, with
centralized judicial system -- Poland among the initiators but did not sign the Agreement on the
Unified Patent Court -- assessment of the European patent with unitary effect from the Polish
perspective -- main issues -- expenses connected with obtaining the Unitary Patent protection -the issue of translations -- questions over its legitimacy and potential economic effects on Poland
Subject: Unified Patent Court
Subject: Regional patents--Europe
Subject: Patent systems--Poland
SNIPER Bulletin – October 2014
Page 71 of 76
SNIPER No.: 2014/00077
Author: Calboli, Irene
Title: The United States Supreme Court's decision in Kirtsaeng v. Wiley & Sons: an "inevitable"
step in which direction?
Source: IIC : International Review of Intellectual Property and Competition Law. Vol. 45 No. 1,
February 2014, pp. 75-90.
Summary: Copyright exhaustion -- copyright first sale -- parallel imports -- grey market goods -international trade
Subject: Copyright exhaustion--case law--United States
Subject: Copyright infringement--case law--United States
Subject: Parallel importing--United States
SNIPER No.: 2013/02822
Author: Daniel-Shores, Robert
Title: Up for the cup: ambush marketing in Brazil
Source: World Intellectual Property Review. September-October 2013, pp. 92-93.
Summary: Preparation for the FIFA 2014 World Cup -- concerns about attempts to draw attention
to unofficial trade marks -- Brazilian World Cup Law No. 12.663 introduces strict rules to protect
rights holders -- if applied unreasonably, the rules may prevent the right to free enterprise and
competition
Subject: Ambush marketing
Subject: Trade mark owners' rights
Subject: Major sporting events
SNIPER No.: 2014/01525
Author: Bonwick, Jenny
Title: US Second Circuit clarifies the statute of limitations for copyright infringement claims
Source: Journal of Intellectual Property Law and Practice. Vol. 9 No. 8, August 2014, pp. 634-635.
Summary: The US Court of Appeals for the Second Circuit rules that the Three year statute of
limitations for copyright infringement claims runs from the date that the plaintiff is aware of the
infringing use -- Louis Psihoyos v John Wiley & Sons -- US Copyright Act 1976 -- the injury rule -the discovery rule -- uncertainty over which accrual rule applies -- photographs by Louis Psihoyos
that Wiley published without his permission -- analysis of the decision -- decision provides welcome
clarification.
Subject: Copyright infringement--case law--United States
Subject: Artistic works--case law--United States
SNIPER No.: 2014/01839
Author: Ramos Gil de la Haza, Andy
Title: Video games: computer programs or creative works?
Source: WIPO Magazine. No. 4, August 2014, pp. 25-28.
Summary: Modern video games contain multiple creative elements -- computer programs or
audiovisual works --- how are video games classified under the law -- wide ranging legal
SNIPER Bulletin – October 2014
Page 72 of 76
approaches -- some countries classified as functional software with a graphical interface -- other
countries treat video games as audiovisual works -- further countries take a more pragmatic
approach, recognising the complexity of video games and favouring a ?distributive classification? -each creative element of a game is protected separately according to its specific nature -- industry
moves towards self-regulation -- IP awareness within the industry is critical -- difficult to
conceptualise an appropriate set of rules for the legal treatment of video games -- creative
elements of video games -- international agreement needed.
Subject: Multimedia works--United States
Subject: Intellectual property ownership--information technology industry
SNIPER No.: 2013/02831
Author: Pilka, Joanna
Title: War over a yoghurt pot: a 3D trademark dispute
Source: World Intellectual Property Review. September-October 2013, pp. 116-119.
Summary: Bakoma v Danone -- bicapsular container for yoghurt -- trade mark infringement claims
by Danone against Bakoma -- lack of distinctiveness -- bad faith
Subject: Trade mark infringement--case law--Poland
Subject: Trade mark distinctiveness
Subject: Shape marks
SNIPER No.: 2014/01809
Author: Lu, Tracy
Title: Watching what you eat: recent issues in Australian food labelling law
Source: Australian Intellectual Property Law Bulletin. Vol. 27 No. 7, August 2014, pp. 192-195.
Summary: Increased consumer demand in Australia for genuinely better quality produce -consumers willing to pay a premium -- top priority of the Australian Competition and Consumer
Commission (ACCC) has been to crack down on misleading or deceptive conduct involving the
misuse of certain descriptive terms in food labelling -- "free range" poultry raising systems -- ACCC
has notably taken misleading or deceptive conduct actions for the use of expressions such as "free
to roam" -- what is "organic" anyway? -- statement identifying either the country where the food
was made, produced or grown, or where the food was manufactured or packaged -- "place of
origin" claims -- understanding genetically modified (GM) food.
Subject: Trade dress--agriculture industry--Australia
Subject: Trade dress--law and legislation--Australia
SNIPER No.: 2014/01258
Author: Terjesen-Søm, Jennifer
Author: Cox, Julie
Title: What's in a name?: the impact of the Bob Jane case on the world of fashion
Source: Australian Intellectual Property Law Bulletin. Vol. 27 No. 5, June 2014, pp. 123-126.
Summary: Federal Court decision in Bob Jane Corp Pty Ltd v ACN 149 801 141 Pty Ltd -- your
own name may not always be yours to use freely -- use of a name as a trade mark -- Bob Jane
decision -- implications for the fashion industry -- ongoing use made of a designer's name following
the sale of business -- issues around control of the name and mark -- lessons for designers.
SNIPER Bulletin – October 2014
Page 73 of 76
Subject: Personal names--case law--Australia
Subject: Personal names--fashion and design industry--Australia
SNIPER No.: 2014/01246
Author: Fischer, Mark A.
Title: Why do bad deals happen to good artists?
Source: Trademarks and Brands Online. Vol. 3 No. 1, 2014, pp. 38-39.
Summary: Music artists and contracts -- balance between protecting revenue and allowing the fan
base to express devotion -- artists have little leverage in the early stages of their careers -companies and musicians get bad advice -- changing digital media environment -- Lennon,
McCartney and Springsteen all found themselves fighting long, bitter and costly legal battles to
regain what they believes was rightfully theirs -- intelligent use of data can lead to effective
implementation of variable pricing -- defining terms clearly, acknowledging the dynamic nature of
the industry.
Subject: Copyright licensing--culture and entertainment industry
Subject: Brand management
SNIPER No.: 2013/02826
Author: Fuller, Stuart
Title: Winning hearts and minds of brand owners
Source: World Intellectual Property Review. September-October 2013, pp. 102-103.
Summary: ICANN gTLD (generic top level domain) programme is almost ready to start -Trademark Clearinghouse has only received 5,900 records from 800 trade mark holders -- possibly
a 'wait-and-see' approach by owners wanting to protect digital assets and marks -- objective for
business owners to have more control over their online brand assets
Subject: Domain names
Subject: Brand management
SNIPER No.: 2014/01330
Author: Bicknell, Paul
Title: "Without due cause": use of the defendant's sign before the claimant's mark is filed:
Leidseplein Beheer and de Vries v Red Bull GmbH and Red Bull Nederland BV (C-65/12)
Source: European Intellectual Property Review. Vol. 36 No. 6, 2014, pp. 402-404.
Summary: Leidseplein Beheer and de Vries v Red Bull GmbH and Red Bull Nederland BV - CJEU
ruling -- meaning of "without due cause" considered under art.5(2) of Directive 2008/95 -- if the
defendant's use of a sign in good faith predated the filing date of the claimant's mark, then the
claimant may have to "tolerate" the defendants use -- Lucas Bols case from another jurisdiction.
Subject: Trade mark infringement--case law--Europe
Subject: Prior use (Trade marks)
SNIPER No.: 2014/01797
Author: Spencer, Elizabeth Crawford
Author: Cantatore, Francina
SNIPER Bulletin – October 2014
Page 74 of 76
Title: Yours, mine, and ours: the development, management and protection of intellectual property
in third-sector enterprise
Source: Intellectual Property Quarterly. No. 3, 2014, pp. 210-226.
Summary: Effective intellectual property (IP) management is an important aspect of good
governance -- little research on IP management in the third sector and the challenges faced by
these enterprises in developing, managing and protecting IP -- the landscape of IP in third-sector
enterprise -- challenges in developing and managing IP -- reasons why IP may be under-managed.
Subject: Intellectual property management--Australia
Subject: Brand management--Australia
SNIPER Bulletin – October 2014
Page 75 of 76
© Commonwealth of Australia 2014
Published by: IP Australia
Discovery House, 47 Bowes Street, Phillip, ACT 2606
1300 65 10 10
www.ipaustralia.gov.au