SNIPER Bulletin
Searchable Networked Intellectual
Property Electronic Resource
July 2014
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ISSN: 2202-753X
SNIPER No.: 2014/00450
Author: Yu, Peter K.
Title: The ACTA/TPP country clubs
Source: Beldiman, Dana (ed.), Access to Information and Knowledge: 21st Century Challenges in
Intellectual Property and Knowledge Governance. Cheltenham, U.K.: Edward Elgar, 2013. pp. 258283.
Summary: Adoption of the Anti-Counterfeiting Trade Agreement (ACTA) -- widely criticised the
ACTA negotiation process for its lack of transparency and accountability -- 'country club' approach
to setting international intellectual property norms and plurilateral agreements -- comparison of
ACTA with TPP -- ACTA country club -- typology of regulatory coordination -- standards for
international financial regulation established by the G-7 and the OECD -- Trans-Pacific-Partnership
-- establishment of the WIPO Development Agenda.
Subject: Anti-Counterfeiting Trade Agreement--Europe
Subject: Draft Trans-Pacific Partnership Agreement
Subject: Intellectual property rights--treaties
Subject: Intellectual property systems
SNIPER No.: 2014/01041
Author: Ferguson, Lisel M.
Author: Cameron, Heather A.
Title: Advice about AdWords: customer confusion is key
Source: Intellectual Property Magazine. May 2014, pp. 63-64.
Summary: Can a trade mark owner prevent others from purchasing AdWords or 'sponsored links'
containing his trade mark? -- Lanham Act gives trade mark owners broad latitude to protect their
trade marks from would-be infringers -- fundamental objective of the Act is to protect US
consumers from fraud -- consumers rely on advertising and marketing of each brand to identify
authentic goods from counterfeits -- whether infringement of a trade mark has occurred is the
determination that a consumer is "likely to be confused" between the trade marked product and the
infringer's use of a trade mark -- Federal courts employ multi-factor tests to determine whether a
likelihood of confusion exists -- advertising with AdWords -- instructive recent cases -- practical
measures for clients and counsel.
Subject: Keyword advertising--United States
Subject: Confusing similarity--United States
SNIPER No.: 2014/01153
Author: Marie, Aurélia
Author: Baklaci, Ezgi
Title: Anticounterfeiting law passed by French Senate
Source: World Intellectual Property Review. March-April 2014, p. 63.
Summary: France's new Regulation (EU) 608/2013, concerning customs control of IP rights in
force since January 1, 2014 -- French Senate second and final reading February 26, 2014 of a
draft law strengthening the fight against counterfeiting also adopted -- tools given to the customs
authorities to fight counterfeiting also strengthened -- law aimed at harmonising national legislation
with Community law.
SNIPER Bulletin – July 2014
Page 1 of 75
Subject: Counterfeiting--law and legislation--France
SNIPER No.: 2014/00689
Author: Moss, Gary
Author: Muncey, Emma
Title: Assessing damages due under a cross-undertaking in damages: more of an art than a
science?
Source: Journal of Intellectual Property Law and Practice. Vol. 9 No. 4, April 2014, pp. 262-263.
Summary: UK Patent Court decision -- AstraZeneca AB & Another v KRKA, DD Novo Mesto &
Another [2014] EWHC 84 (Pat), 24 January 2014, Patents Court, England and Wales -- Krka would
have a substantial 'first mover' advantage -- branded generic pharmaceutical -- case highlight the
difficulties the court faces in trying to put a monetary value on hypothetical scenarios -- analysis
and assessment of damages -- asserting the difficulties in assessing loss.
Subject: Damages--case law--United Kingdom
Subject: Damages--law and legislation--United Kingdom
SNIPER No.: 2014/01112
Author: IP Australia
Added author: Australia. Department of Industry
Title: The Australian food industry: a patent analytics report
Source: Australian Food Industry: a Patent Analytics Report. 2014.
Summary: Patents as indicators of research performance -- patent analysis to assess the scope,
quality and impact of innovative activity within the food sector -- definition of Australian food
patents -- Australia ranks 14th in food patenting globally -- this performance is comparable with
Canada and Sweden -- localisation of inventive activity in food patenting -- patenting scale and
intensity -- inventive activity in the food industry by Australian state and territories -- types of food
technologies originating from Australia -- analysis by type of food production -- national and
regional relative specialisation (RSIs) -- key patent applicants -- collaboration measured through
co-applicants -- patent citation frequency.
Subject: Patents--trends--Australia
Subject: Patents--agriculture industry--Australia
Subject: Innovation (Technological)--economics--Australia
Subject: Agriculture industry--Australia
SNIPER No.: 2014/00687
Author: Ventose, Eddy D. (Eddy David), 1976Title: Australian High Court rules on patentability of methods of medical treatment
Source: Journal of Intellectual Property Law and Practice. Vol. 9 No. 4, April 2014, pp. 258-260.
Summary: High Court of Australia decision -- Apotex Proprietary Limited v Sanofi-Aventis
Australia Proprietary Limited [2013] HCR 50, 4 December 2013 -- decided that methods of medical
treatment are patentable under the section 18(1)(a) of the 1990 Patents -- legal context -- previous
Australian authorities -- practical significance -- interest awaits over the answer to whether genetic
diagnostic methods are patentable in Australia.
SNIPER Bulletin – July 2014
Page 2 of 75
Subject: Medical procedures--patentability--Australia
SNIPER No.: 2014/01123
Author: Aktekin, Uǧur
Author: Hançer, Hande
Title: Bad faith trademark applications in Turkey: the crackdown begins?
Source: Asia IP: Protecting your Intellectual Assets. Vol. 6 No. 2, February 2014, pp. 41-42.
Summary: Bad faith trade mark registrant in Turkey has trade mark cancelled -- ordered to
compensate a trade mark owner for damages -- decision of the Turkish Court of Appeal -- the
claimant, a Chinese motorbike manufacturer, discovered illicit registration of its "Regal Raptor
Pagsta Dadwy and device" trade mark filed by one if its former customers -- genuine products
manufactured by the claimant were detained at customs after a complaint from the defendant -facts of the case -- analysis of the decision -- significant precedent established -- first time in 13
years where a 'bad faith' registrant has been ordered to compensate trade mark owner for
damages incurred by their infringement
Subject: Trade mark ownership--case law--Turkey
Subject: Trade mark cancellation--case law--Turkey
SNIPER No.: 2014/00868
Author: Chapman, Simon
Author: Watson, Oliver
Title: A bad foam call for Amazon
Source: Intellectual Property Magazine. April 2014, p. 65.
Summary: Lush succeeded in a claim for trade mark infringement against Amazon -- concerning
Amazon's use of the LUSH trade mark to advertise and sell non-Lush products on the Amazon
website -- Amazon's use of the LUSH mark in the text of sponsored advertisements within search
engine results fall foul of the Google France standard -- use of Lush on the amazon.co.uk website - responsibility for the operation of the amazon.co.uk website -- impact of the judgment.
Subject: Keyword advertising--case law--United Kingdom
Subject: Trade mark infringement--liability--United Kingdom
SNIPER No.: 2014/01197
Author: Desforges, Maxime
Title: A bad year for copyright infringers
Source: World Intellectual Property Review. January-February 2014, pp. 61.
Summary: Supreme Court of Canada landmark decision -- Cinar Corporation v Robinson -important precedent in many fundamental areas of Canadian copyright law -- test for determining a
"substantial part" of a work has been copied -- copyright infringement -- Federal Court of Canada
copyright infringement decision -- Fox v Hernandez -- online pirating of Family Guy and The
Simpsons -- statutory damages not enough to punish the defendants misconduct and serve as a
deterrent.
Subject: Copyright infringement--case law--Canada
SNIPER Bulletin – July 2014
Page 3 of 75
SNIPER No.: 2014/01067
Author: King, Kelvin
Title: Banking on IP: a major UK government report
Source: CIPA: the journal, incorporating the 'Transactions', of the Chartered Institute of Patent
Agents. Vol. 43 No. 4, April 2014, pp. 225-226.
Summary: Valuation Consulting Co (VCC) commissioned by the Intellectual Property Office (IPO)
to investigate whether those who created or owned lP assets could use them to secure the
financing needed for company growth -- the final report, Banking on IP -- included key
recommendations, a resource toolkit for SMEs, lenders and other financiers to facilitate the lending
opportunity -- build on existing initiatives and Government interventions to assist SMEs -- IPO's
response to the report, Banking on IP: an active response -- key action points the IPO to actively
promote.
Subject: Intellectual capital--United Kingdom
Subject: Intellectual property awareness--United Kingdom
SNIPER No.: 2014/00698
Author: Marten, Günter
Title: Belated evidence of proof of use: Court of Justice of the European Union case reviewed
Source: Journal of Intellectual Property Law and Practice. Vol. 9 No. 4, April 2014, pp. 287-291.
Summary: Community trade mark system -- Office for Harmonisation in the Internal Market
(OHIM) to streamline Community trade mark (CTM) proceedings -- legal provisions -- relevant case
law -- no evidence presented within the time limit set by OHIM -- other case law -- recent Fishbone
case decided by CJEU -- Case C-621/11 New Yorker SHK Jeans v OHIM ('Fishbone') -- clarifies
certain notions and indicates a more coherent approach to the balance between the principles of
procedural efficiency, legal certainty and sound administration -- assessment -- recent case law
bought some certainty to the extent to which OHIM is obliged to take belated evidence into
account.
Subject: Community trade mark
Subject: Trade mark owners' rights--case law--Europe
SNIPER No.: 2014/00691
Author: Muyldermans, Jeroen
Title: The Belgian beer battle: the scope of protection afforded to colour marks
Source: Journal of Intellectual Property Law and Practice. Vol. 9 No. 4, April 2014, pp. 265-267.
Summary: Court of Appeal of Brussels -- first instance decision -- - InBev Belgium v Brouwerijen
Alken-Maes, Court of Appeal of Brussels, 2012/AR/1999, 21 October 2013 -- validity of the
abstract Benelux colour mark blue owned by Belgian beer brewer Alken-Maes -- infringed mark -decision clarifies the scope of protection afforded to colour marks against use of identical or similar
signs -- ruling is the latest in a series of decisions in which Belgian courts have ruled in favour of
trade mark owners.
Subject: Colour marks--case law--Belgium
SNIPER No.: 2014/00974
Author: Aktekin, Uǧur
SNIPER Bulletin – July 2014
Page 4 of 75
Author: Alkan, Güldeniz Doǧan
Author: Koçak, Tenzile
Title: Better protection for genuine right owners against trade mark squatters: compensation for
damages for bad faith
Source: Journal of Intellectual Property Law and Practice. Vol. 9 No. 5, May 2014, pp. 361-363.
Summary: The Turkish Court of Appeals (CoA) ruled that a party that files an application in bad
faith and uses that right aggressively may face a compensation claim for damages incurred by the
counterparty during the period the right was used -- Article 42 and 44 of the Decree Law 556 on
the Protection of Trade Marks -- despite these provisions CoA precedent suggested that it was not
possible to claim damages based on bad faith -- registration for a design for PVC clips -- the
plaintiff obtained a decision in its favour during the court proceedings but had suffered financial
loss -- history of case -- the CoA has provided a deterrent for bad faith applications.
Subject: Trade mark entitlement--case law--Turkey
Subject: Trade mark ownership--case law--Turkey
SNIPER No.: 2014/01109
Author: La Belle, Megan M.
Author: Schooner, Heidi Mandanis
Title: Big banks and business method patents
Source: CUA Columbus School of Law Legal Studies Research Paper. No. 4, 2014.
General Note: Also forthcoming in University of Pennsylvania Journal of Business Law, Vol. 16,
2014.
Summary: Trade secrecy, first mover advantage, other business mechanisms to protect and
monetise their intellectual property, not patents -- a shift began when the Federal Circuit decided
that business method patents issues by the United States Patent and Trademark Office (PTO) -financial patents in the America Invents Act -- potential implications of growing bank involvement in
our patent system -- warns of possible harms if big banks use their political and economic power to
disproportionately influence patent reform and innovation policy in the future.
Subject: Business methods--United States
Subject: Intellectual property systems--reform--United States
Subject: Computer-related inventions--financial services industry
SNIPER No.: 2014/01128
Title: A big moment: regulating personal genome services
Source: World Intellectual Property Review. Life Sciences Intellectual Property Review, Vol. 1 No.
2, 2014, pp. 20-23.
Summary: Technology of genetic screening -- direct-to-consumer genetic testing companies -identifies sections of genome to determine risks of developing certain disease -- 23andMe -- DNA
ancestry service -- online application -- offers report on more than 250 diseases and conditions -allows customers to decide whether to take preventative measures or not -- US Food and Drug
Administration (FDA) concerned over how consumers may "manage" their results -- 23andMe
compliant with clinical laboratory improvement amendments (CLIA) -- consistent with laboratory
testing -- FDA working on draft guidance specifically outlining policies for direct-to-consumer
genetic tests -- preserving the privacy of individual donors -- U.S. privacy laws.
Subject: Patenting of life forms--United States
SNIPER Bulletin – July 2014
Page 5 of 75
Subject: Ethics
SNIPER No.: 2014/01056
Author: Allan, Michael J.
Title: Brand protection outside the box
Source: Managing Intellectual Property. No. 238, April 2014, pp. 28-32.
Summary: International Trade Commission (ITC)-- excellent alternative to district court for trade
mark enforcement matters -- only logical place to bring a trade mark case such as for brands with
big infringement problems originating in foreign jurisdictions -- to be a complainant in an ITC
investigation for trade mark infringement one must prove importation of respondent's products in
the US -- establish that it has a domestic industry that either exists in the US or is in the process of
being established -- reasons the ITC is an attractive forum for trade mark owners -- jurisdiction
over foreign entities -- speed which ITC investigations proceed -- availability of foreign discovery
without the need to go through the Hague Convention -- ITC can grant broad injunctive relief that
can be used to deter future infringers -- general exclusion orders can be important for brand
owners in stopping new infringements from importation -- deterring infringers facing an importation
proceeding.
Subject: Trade mark enforcement--United States
Subject: Forum shopping--United States
SNIPER No.: 2014/01140
Author: Bellingall, Andrew John
Title: Brazil prepares for IP battle
Source: World Intellectual Property Review. March-April 2014, pp. 36-39.
Summary: Brazil's preparations for the World Cup 2014 -- protecting FIFA's and the sponsors IP
rights -- Brazil's acceptance of terms and conditions dictated by Fédération Internationale de
Football Association (FIFA) in relation to time for consideration of FIFA related trademarks by the
Brazilian Patent and Trademark Office (INPI) -- preferential treatment in relation to the timeframe
for all other applicants/companies -- ambush marketing by association -- ambush marketing by
intrusion -- FIFA's total exclusion zone -- products from the official sponsors within 2km of each
World Cup venue only -- registration of FIFA's trade marks in Brazil.
Subject: Ambush marketing--tourism and recreation industry--Brazil
Subject: Intellectual property law--tourism and recreation industry
SNIPER No.: 2014/00865
Author: Gosain, Rana
Title: Brazil's pharma saga
Source: Intellectual Property Magazine. April 2014, pp. 59-60.
Summary: Reforms for the Brazilian patent and trademark office (PTO) -- objective of harmonising
its intellectual property (IP) practice with that of developed countries -- hurdles -- pharmaceutical IP
law and practice has been subject to changes -- National Health Surveillance Agency (ANVISA)
empowered to conduct a mandatory review of pharmaceutical patent applications, with the purpose
of conceding or not prior approval -- conflicting opinions on patentability issues between the PTO
and ANVISA -- PTO aims to reduce the time it takes to render a decision on a patent application -increase the number of examiners -- low-cost generic drugs being launched much earlier than they
should in Brazil -- regulation of biological drugs/biosimilars -- biological resources.
SNIPER Bulletin – July 2014
Page 6 of 75
Subject: Patents--pharmaceutical industry--Brazil
Subject: Pharmaceuticals--reviews--Brazil
SNIPER No.: 2014/00696
Author: Callue, Claire
Title: Breach of confidence: polar approaches to the assessment of damages
Source: Journal of Intellectual Property Law and Practice. Vol. 9 No. 4, April 2014, pp. 273-275.
Summary: Patent Court decision -- Flogas Britain Limited v Calor Gas Limited [2013] EWHC 3060
(Ch), England and Wales -- damages for breach of confidence have been awarded against Calor
Gas Limited -- misuse of customer information contained in a database owned by Flogas Britain
Limited -- practical significance -- database owners will be disappointed that Flogas was only
awarded damages with respect to breach of confidence -- not also for infringement of database
rights -- case reinforces the principle that a claimant cannot recover twice for the same loss in the
absence of additional grounds.
Subject: Damages--case law--United Kingdom
Subject: Damages--law and legislation--United Kingdom
SNIPER No.: 2014/01130
Author: Nielsen, Matthew C.
Title: Burden of proof: US Supreme Court backs licensees
Source: World Intellectual Property Review. Life Sciences Intellectual Property Review, Vol. 1 No.
2, 2014, pp. 28-31.
Summary: US Supreme Court reversed Federal Circuit decision -- burden of proof -- Medronic Inc
v Mirowski Family Ventures -- patent litigation in the U.S. -- procedural history -- Supreme Court's
decision -- where does this leave patent owners and licensees -- direction of the Supreme Court -patent owners always bear the burden of proving infringement, even when raised in a declaratory
judgment action -- Medtronic decision may provide licensees with more incentive.
Subject: Intellectual property licensing--United States
Subject: Patent infringement--case law--United States
SNIPER No.: 2014/00699
Author: Roland, Nicolas
Title: Calculating damages in copyright infringement actions under Belgian law
Source: Journal of Intellectual Property Law and Practice. Vol. 9 No. 4, April 2014, pp. 292-297.
Summary: General principles applicable to copyright claims under Belgian law -- manner in which
damages are calculated by the courts in copyright infringement cases generally -- the applicability
of punitive damages and some procedural issues -- damages based on 'lost profits' -- an
alternative compensation based on 'royalty' -- evidence -- court and party appointed experts.
Subject: Damages--law and legislation--Belgium
Subject: Copyright infringement--Belgium
SNIPER No.: 2014/01129
Author: Carling, David
SNIPER Bulletin – July 2014
Page 7 of 75
Author: Pears, Michael
Title: A call for clarity
Source: World Intellectual Property Review. Life Sciences Intellectual Property Review, Vol. 1 No.
2, 2014, pp. 24-27.
Summary: Supplementary protection certificates (SPC) in Europe -- extend patent protection for
medicinal and plant protection products -- SPC Regulation (EC 469/2009) -- Court of Justice of the
European Union (CJEU) rulings in Medeva (C-322/10) -- issues concerning the allowability of
SPCs have arisen -- whether multiple SPCs can be granted, based on the same basic patent,
under Article 3 (c)-- -- C-484/12 (Georgetown University v Octrooicentrum Nederland) -- C-443/12
(Actavis v Sanofi) -- C-493/12 (Lilly v HGS) -- Lilly and Actavis cases both considered the meaning
of 'protected' by the basic patent under Article 3(a) -- CJEU's judgments -- commentary -decisions provide some clarity.
Subject: Patent extension--Europe
SNIPER No.: 2014/00690
Author: Smyth, Darren
Title: Can springboard injunctions be awarded in respect of non-infringing acts?
Source: Journal of Intellectual Property Law and Practice. Vol. 9 No. 4, April 2014, pp. 263-265.
Summary: UK Patents Court decision -- Smith & Nephew plc v Convatec Technologies Inc &
Another No 2 [2013] EWHC 3955 (Pat) Patents Court, England and Wales, 12 December 2013 -Court found that the process for preparing silverised wound dressings did not infringe Convatec's
patent -- several experiments from Smith & Nephew's earlier development work, which were used
to obtain regulatory (CE) authorization, did infringe the patent -- Court was capable of granting final
springboard injunctions to restrain non-infringing acts, this case did not justify the grant of such
relief -- legal context -- significant figure approach -- development experiments -- springboard relief
-- in the absence of evidence or a patent specification, rounding to the number of significant figures
expressed in the patent claim -- an approach likely to be adopted by the Court in interpreting
numerical values.
Subject: Injunctions--United Kingdom
SNIPER No.: 2014/01025
Author: Taylor, David
Author: Klinger, Thorsten
Title: Canyon Bicycles wins first new gTLD UDRP case
Source: Intellectual Property Magazine. May 2014, pp. 30-31.
Summary: First Uniform Domain Name Dispute Resolution Policy (UDRP) proceedings -- generic
Top Level Domains (gTLDs) -- Canyon Bicycles recovered the domain name canyon.bike, which
had been registered by an individual based in the Netherlands -- Internet Corporation for Assigned
Names and Numbers (ICANN) -- launched the application process for new gTLDs -unprecedented expansion of the Domain Name System (DNS) -- background to the case -- the
decision -- identity or confusing similarity -- lack of legitimate interests or rights of the respondent -registration and use in bad faith.
Subject: Domain name dispute resolution--case law
Subject: Brand management
SNIPER No.: 2014/01268
SNIPER Bulletin – July 2014
Page 8 of 75
Author: Smith, Joel
Author: Burke, Sarah
Author: Sheikh, Sana
Title: Changes in the treatment of colour trade marks at OHIM and UKIPO
Source: World Intellectual Property Report. Vol. 28 No. 6, June 2014, pp. 43-44.
Summary: United Kingdom's Intellectual Property Office (UKIPO) issued guidance on the
circumstances in which use of a mark in colour taken into account when assessing the likelihood of
confusion with an earlier registration for a black and white mark -- Office for Harmonization in the
Internal Market (OHIM) also signals changes for the treatment of colour marks -- difference in
colour must be significant -- Tribunal Practice Note (TPN) -- scope of protection for black and white
marks -- genuine use -- priority claims and relative grounds for refusal -- business impact.
Subject: Colour marks--United Kingdom
Subject: Colour marks--Europe
SNIPER No.: 2014/01204
Author: Hari, Hiroshi
Title: Changing Japan's patent law
Source: World Intellectual Property Review. January-February 2014, pp. 68.
Summary: Discussions surrounding reform of Japan's patent systems -- report entitled Toward
Early Acquisition of Strong and Stable Patent Rights and Improvement of User-Friendliness -changes to Japan's patent law -- summary of the subcommittees report -- introduction of the postgrant review system -- introduction of relief systems complying with the Patent Law Treaty (PLT) -improving the competitive power of Japanese industries -- Japanese Patent Office (JPO) intends to
take measures to enhance the stability of IP rights -- considerations of international harmonisation
for Japan.
Subject: Intellectual property systems--reform--Japan
SNIPER No.: 2014/01156
Author: Hari, Hiroshi
Title: Changing the design law
Source: World Intellectual Property Review. March-April 2014, p. 66.
Summary: Japan's patent law -- possible revisions to design law -- Design system subcommittee
of the Japan Patent Office -- subcommittee recognised the advantages to Japanese companies in
general of Japan signing the Locarno Agreement -- would provide an effective prior-art search tool
for Japanese companies conducting global business activities -- also proposed to introduce into
Japan's classification of designs a new category - information technology(IT) equipment- to include
personal computers, smartphones and other such IT-related equipment and devices of all types.
Subject: Industrial design systems--reform--Japan
SNIPER No.: 2014/01043
Author: Davies, Mark Simon
Author: Daybell, Donald
Title: Circuit training
SNIPER Bulletin – July 2014
Page 9 of 75
Source: Intellectual Property Magazine. May 2014, pp. 67-68.
Summary: Federal Circuit turning its attention to a set of cases arising from new procedure
introduced by the America Invents Act -- several new mechanisms by which parties can ask the US
Patent and Trademark Office (USPTO) to reconsider the validity of granted patents -- inter partes
review -- any issued patent can be challenged on the basis of prior art -- another new USPTO
proceeding is called "covered business method review" -- mechanism by which certain "business
method" patents can be challenged on a variety of bases -- both proceedings involve a 'mini-trial'
before three Administrative Patent Judges (APJ) of the Patent Trial and Appeal Board (PTAB) -APJs are technically trained -- proceedings are faster and more streamlined than district court
litigation -- eliminating some of the restrictions that hampered challenges to patents under prior
USPTO processes -- party disappointed with a PTAB ruling can appeal the result to the Federal
Circuit -- Federal Circuit's approach to assessing claimed innovations.
Subject: Patent validity--United States
Subject: Patents--law and legislation--United States
SNIPER No.: 2014/01045
Author: Shapiro, Ted
Title: CJEU backs blocking orders for infringing sites
Source: Intellectual Property Magazine. May 2014, pp. 72-73.
Summary: Court of Justice of the European Union (CJEU) -- decision confirming that EU law
permits the granting of site-blocking injunctions against internet access providers (IAPs) -- subject
to safeguards for rightsholders, intermediaries and internet users -- courts have to ensure that such
injunctions are proportionate and grounded in a balanced approach to relevant fundamental rights - remedies against other internet intermediaries are possible -- UPC Telekabel Wien GmbH v
Constantin Film Verleih GmbH, Wega Filmproduktionsgesellschaft mbH -- use of the intermediary's
services by kino.to -- IAP's subscribers' use of its services to infringe -- fundamental rights, general
orders -- fundamental rights, specific orders.
Subject: Carriage service providers--Europe
Subject: Copyright infringement--case law--Europe
SNIPER No.: 2014/00692
Author: Batty, Robert
Title: Coca-Cola contour bottle trade mark infringement claim rejected
Source: Journal of Intellectual Property Law and Practice. Vol. 9 No. 4, April 2014, pp. 267-269.
Summary: New Zealand High Court decision -- The Coca-Cola Company v Frucor Soft Drinks Ltd
[2013] NZHC 3282 (New Zealand High Court), 10 December 2013 -- (Coca Cola v Frucor) -registered shape trade marks -- not infringed by Frucor Soft Drinks Limited -- Pepsi Co Inc. (the
defendants) sale of soft drinks packaged in 300 ml glass bottles -- Court held that the actions of the
defendants did not amount to passing off -- nor a breach of the Fair Trading Act 1986 -- primary
similarity between Pepsi's Carolina bottle and TCCC's contour bottle was the silhouette -- the
silhouette was not the mark as registered -- highlights it may be prudent for trade mark owners to
ensure the precise form of registrations obtained, or applied for, match their actual use or planned
use in the marketplace.
Subject: Trade mark infringement--case law--New Zealand
Subject: Shape marks--case law--New Zealand
SNIPER Bulletin – July 2014
Page 10 of 75
SNIPER No.: 2014/01198
Author: Xiang, Gao
Title: Colour combinations in China
Source: World Intellectual Property Review. January-February 2014, pp. 62.
Summary: Deere and Company, registrant of colour combination marks in China for tractors,
harvesting machines and related goods -- infringement by JOTEC International Heavy Industry -first court ruling on infringement on an exclusive right to use a registered colour combination mark - included in the scope of protection by the current Trademark Law in China -- Supreme People's
Court of China Judicial Rulings promulgated Regulations of Publications of Judicial Rulings on the
Internet came into effect in 2014.
Subject: Colour marks--case law--China
Subject: Intellectual property law--reform--China
SNIPER No.: 2014/01265
Author: Polikarpov, Anton
Author: Slabko, Tatyana
Title: Combatting the rise of patent trolls in Ukraine
Source: World Intellectual Property Report. Vol. 28 No. 6, June 2014, pp. 36-39.
Summary: Ukrainian patent trolls -- use of popular and well-known devices such as seizure of
goodwill, brand-raiding and cybersquatting -- industrial designs targeted -- simplicity of obtaining
registration -- double growth rates of industrial designs registrations in Ukraine in the period 20092014 -- number of issues which allows patent trolling to flourish in Ukraine -- lack of definition of an
industrial design -- misuse of Customs Register of Objects of Intellectual Property Rights -obtaining a patent for unoriginal object of industrial democracy -- dealing with patent trolls -invoking right of prior use -- prevention measures for businesses.
Subject: Non-practising entities--Ukraine
Subject: Intellectual property systems--Ukraine
SNIPER No.: 2014/00695
Author: Sousa e Silva, Nuno de Anaújo
Title: Communication to the public or 'freedom to receive'?: a Portuguese bitter-sweet symphony
Source: Journal of Intellectual Property Law and Practice. Vol. 9 No. 4, April 2014, pp. 272-273.
Summary: Portuguese Supreme Court -- Judgment no 15/2013 of the Portuguese Supreme Court,
Diário da República, 1a series, No 243 6821), 16 December 2013 -- decision established that the
use of loudspeakers to amplify a television broadcast is covered by the freedom to receive -- does
not amount to communication to the public -- Portuguese collecting society to respond in all
possible ways against the decision -- blatantly contradicts EU law -- decision establishes a quasibinding precedent -- usual that a national Supreme Court issued this unanimous decision -contradicts European Directives and case law.
Subject: Electronic copyright--Portugal
Subject: Neighbouring rights—Portugal
SNIPER No.: 2014/00976
Author: Folliard-Monguiral, Arnaud
SNIPER Bulletin – July 2014
Page 11 of 75
Author: Rogers, David
Title: Community trade mark round-up 2013
Source: Journal of Intellectual Property Law and Practice. Vol. 9 No. 5, May 2014, pp. 365-382.
Summary: Overview of the most important trade mark cases settled in 2013 by the Court of
Justice of the European Union (CJEU) and the General Court (GC) -- cases concern the
application of the following regulations and directives -- application of Council Regulation 207/2009
on the Community trade mark (CTMR) -- Commission Regulation 2868/95 implementing the CTMR
(CTMIR) -- Directive 2008/95 -- procedural issues -- absolute grounds for refusal -- relative
grounds for refusal.
Subject: Trade marks--case law--Europe
Subject: Trade marks--law and legislation--Europe
SNIPER No.: 2014/01066
Author: Mirandah, Gladys
Author: Cubilla, Juvelyn
Title: Comparison of design practices in ASEAN countries
Source: CIPA: the journal, incorporating the 'Transactions', of the Chartered Institute of Patent
Agents. Vol. 43 No. 4, April 2014, pp. 216-217.
Summary: Variation of design laws in ASEAN countries -- some classifieds as patents, other
separate "registered designs" or "industrial design" systems -- comparison of primary features of
design laws in ASEAN countries -- Indonesia -- Malaysia -- Philippines -- Singapore -- Thailand -Vietnam -- IP professionals to be aware of the different requirements -- work with their agents in
each country to obtain the most efficient and cost effective route to registration.
Subject: Industrial design systems--Southeast Asia
SNIPER No.: 2014/01229
Author: Berger, Tyrone
Title: Compulsory licensing of patents in Australia: reforming the landscape or fencing us in?
Source: Monash University Law Review. Vol. 39 No. 3, 2014, pp. ??.
General Note: Published on Social Science Research Network (SSRN).
General Note: Forthcoming in Monash University Law Review.
General Note: See related SNIPER articles: Australian Productivity Commission's Issues Paper
2013/03006a, Draft Report 2013/03006b and Report 2013/03006.
Summary: Australian Productivity Commission released final report to government into the
compulsory licensing provisions in the patents Act 1990 (Cth) on 28 March 2013 -- background and
calls for patent reform in Australia -- motivations for the inquiry -- significant barriers for potential
applicants -- issues paper -- what the submissions say -- draft report -- final report and
recommendations -- reforming the landscape or fencing Australia in -- postscript -- Intellectual
Property Laws Amendment Bill 2013 (Cth) introduced to Parliament 30th May 2013 -- judicious for
Federal Government to ensure that the short term interests of the public do not detract from the
long-term objectives of the patent system.
Subject: Intellectual property systems--reform--Australia
Subject: Compulsory licensing--reviews--Australia
Subject: Intellectual property law--reform--Australia
SNIPER Bulletin – July 2014
Page 12 of 75
SNIPER No.: 2014/00651
Author: Smith, Joel
Author: Montagnon, Rachel
Author: Deacon, Laura
Title: Concurrent use of retail marks: a not ideal situation: IPC Media Ltd v Media 10 Ltd
Source: European Intellectual Property Review. Vol. 36 No. 4, 2014, pp. 261-262.
Summary: IPC Media Ltd v Media 10 Ltd -- enforce trade mark rights following longstanding
concurrent use -- accepting in some instances encouraging low levels of confusion -- reputation,
blurring and dilution -- confusion between the online retail businesses of the two parties -distinctiveness and prior rights -- identical brands in similar markets.
Subject: Trade marks--retail industry
Subject: Trade mark distinctiveness
Subject: Trade mark infringement--case law
SNIPER No.: 2014/01031
Author: Lingard, Tom
Author: Stoker, Joe
Title: Copyright and the art of leadership
Source: Intellectual Property Magazine. May 2014, pp. 41-42.
Summary: Former United States President George W. Bush exhibited paintings of world leaders -pictures attracted attention for the striking similarity they bear to photographs that appear at the top
of the search results when the leaders' names are put into search engines -- photographs are
works capable of protection under copyright -- copyright can subsist if the photograph is the
author's own "intellectual creation" -- aspects in which a photograph can be original -- establishing
who owns copyright in an image is not straightforward -- creative commons licences -- Bush would
be free to adapt the photographs and copy, distribute and transmit any derivative works, provided
that he attributed the original work in the appropriate manner -- do any of the owners of copyright in
the photographs have a claim for infringement against Bush?
Subject: Electronic copyright--United States
Subject: Moral rights--United States
SNIPER No.: 2014/01061
Title: Copyright survey 2014
Source: Managing Intellectual Property. No. 238, April 2014, pp. 46-58.
General Note: Third article in a series of three. See also: 2014/00398 for Patent survey 2014;
2014/00801 for Trade mark survey 2014.
Summary: Rankings of leading firms for copyright work in more than 80 jurisdictions -- ranked in
tiers for prosecution work and contentious work -- Africa, Middle East, Americas, Asia, and Europe.
Subject: Copyright--statistics
Subject: Intellectual property industry--statistics
SNIPER Bulletin – July 2014
Page 13 of 75
SNIPER No.: 2014/01119
Author: Chan, Johnny
Title: Copyrighters v. imitators
Source: Asia IP: Protecting your Intellectual Assets. Vol. 6 No. 2, February 2014, pp. 24-28.
Summary: Increase in parodies of copyrighted content -- Hong Kong government initiated public
consultation in July 2013 to obtain views on treatment of parody under copyright laws -- views on
parody from other jurisdictions -- 'parody' difficult to define -- three proposed options -- clarifying
existing provisions in Hong Kong for criminal sanction -- option of exempting parody from criminal
liability -- launching a fair deal exception -- non-commercial user-generated content -- whether the
options should cover all works -- no consensus reached but fair dealing exception is the most
favoured option.
Subject: Copyright--law and legislation--Hong Kong
Subject: Fair use (Copyright)--Hong Kong
SNIPER No.: 2014/00862
Author: Hall, Susan
Title: Counterfeit road block
Source: Intellectual Property Magazine. April 2014, p. 55.
Summary: Aston Martin recalling 17,590 cars -- automobile parts are a classic area for
counterfeiting -- may cause serious injury or death -- garages fitting counterfeit parts risk product
liability claims -- principal cost of counterfeiting is normally reckoned to be brand and reputational
damage -- Aston Martin recall shows how counterfeiting can give rise to massive direct costs too -flourishing domestic counterfeit manufacturing sector -- vast majority of counterfeit goods come
from overseas -- points to assist in combating counterfeiting.
Subject: Counterfeiting--manufacturing and processing industry
Subject: Brand management
SNIPER No.: 2014/00688
Author: Jones, Matthew
Title: Court of Appeal confirms messaging patents invalidity and re-emphasizes limitation of newlyraised arguments
Source: Journal of Intellectual Property Law and Practice. Vol. 9 No. 4, April 2014, pp. 260-261.
Summary: High Court (United Kingdom) decision -- unanimous agreement -- Microsoft
Corporation v Motorola Mobility LLC [2013] EWCA Civ 1613, England and Wales, 11 December
2013 -- validity of Motorola's patent for synchronization of electronic message statuses -- legal
context -- co-pending German litigation -- purposive construction -- interpreting claims in light of the
description -- extent the UK court is influenced by other courts around Europe.
Subject: Patent validity--information technology industry
Subject: Patent validity--law and legislation--United Kingdom
SNIPER No.: 2014/01064
Author: Coldham, John
Title: Court of Appeal reverses Trunki's High Court design success
SNIPER Bulletin – July 2014
Page 14 of 75
Source: CIPA: the journal, incorporating the 'Transactions', of the Chartered Institute of Patent
Agents. Vol. 43 No. 4, April 2014, pp. 209-211.
Summary: Appeal to the High Court (UK) in the decision of Magmatic Ltd v PMS International Ltd - allowed an appeal by PMS International Limited of a High Court finding -- dispute concerned rideon children's suitcases, PMS's "Kiddee Case", designed as a cheaper version of Magmatic
Limited's "Trunki" range -- whether PMS infringed Magmatic's registered Community Design (RCD)
-- Court found that the overall impression created by the two designs was very different -- decision
to reassess -- error identified in the appeal judgment -- failure to carry out a global comparison -failure to consider the colour contrast between the wheels and the body of the RCD -- lessons for
IP practitioners.
Subject: Community Design--case law--United Kingdom
Subject: Industrial design infringement--case law--United Kingdom
SNIPER No.: 2014/00967
Author: Strath, Janet
Author: Harris, Paul
Title: Courts have no general power of review over EPO grant procedure decisions
Source: Journal of Intellectual Property Law and Practice. Vol. 9 No. 5, May 2014, pp. 349-351.
Summary: Court of Appeal upheld judge's earlier decision in relation to validity and noninfringement and concluded that the Court did not have the authority to review European Patent
Office (EPO) grant procedure decisions -- Virgin Atlantic Airways Ltd v Jet Airways (India) Ltd and
others -- Virgin filed a Patent Cooperation Treaty (PCT) application for a folding seat bed -- EPO
error in including the United Kingdom (UK) as a designated state -- history of case -- analysis of
decision -- Article 6 of the European Convention on Human Rights (ECHR) -- practical significance.
Subject: Patent revocation--case law--United Kingdom
Subject: Patent granting--case law--United Kingdom
Subject: Legal procedure--Europe
Subject: Legal jurisdiction--Europe
SNIPER No.: 2014/00848
Author: Rudgard, Nick
Author: Armitage, Emma
Title: Criminal gains: the growth of UK private prosecutions
Source: Intellectual Property Magazine. April 2014, pp. 28-29.
Summary: Private prosecutions as an alternative to civil proceedings are becoming more common
-- trend likely to continue given reduced funding for criminal enforcement by public authorities -differences between criminal and civil proceedings -- benefits and disadvantages of private
prosecutions -- recent private prosecution cases -- how these actions and consequent confiscation
orders under the Proceeds of Crime Act 2002 (POCA) can be used as part of an intellectual
property enforcement strategy.
Subject: Copyright infringement--case law
Subject: Criminal law
SNIPER No.: 2014/00697
SNIPER Bulletin – July 2014
Page 15 of 75
Author: Deutsch, Askan, 1973Author: Zimmerman, Robert
Title: Customs seizure proceedings in the European Union and United States
Source: Journal of Intellectual Property Law and Practice. Vol. 9 No. 4, April 2014, pp. 276-286.
Summary: Practical legal measures for owners of intellectual property rights in pursuing their
claims -- in regular civil or criminal proceedings -- very first point of contact during import at the
borders of the European Union as well as the United States -- comprehensive and comparative
overview of the specific measures to be taken in order to engage the existing legal and practical
powers of local customs authorities to detect and detain infringing goods -- recent changes brought
about by European Council Directive No 608/2013, entered into force on 1 January 2014 -European customs seizure -- exemptions -- application procedure -- seizure procedure
Subject: Intellectual property enforcement--Europe
Subject: Customs--Europe
SNIPER No.: 2014/01032
Author: Prinsley, Mark
Title: Data protection reform
Source: Intellectual Property Magazine. May 2014, pp. 43-44.
Summary: European Parliament voted in favour of adopting in its entirety the report of its Civil
Liberties, Justices and Home Affairs (LIBE) Committee on the text of the proposed new Data
Protection Regulation -- key proposed changes -- a regulation, not a directive -- territorial scope of
regulation -- greater clarity as to the processing being undertaken -- "right to data portability" -processor liability -- data breach -- compliance -- remedies, liability and sanctions -- implications of
the EP vote and way forward.
Subject: Information technology industry--law and legislation--Europe
Subject: Privacy--Europe
SNIPER No.: 2014/01210
Author: Özdoǧan, Işik
Author: Baklaci, Ezgi
Title: Design registrations and bad faith
Source: World Intellectual Property Review. January-February 2014, pp. 74.
Summary: A decision invoking the exercising rights arising from a registration certificate is not
always lawful -- Council of Appellate Circuits of the Turkish Court of Appeals awarded damages to
a party on the basis of another party registering an industrial design with the Turkish Patent
Institute (TPI) in bad faith -- background to the case -- PVC clips used in conjunction with rainwater
downpipes -- legal actions leading up to the decision -- criminal action -- invalidation action -further action -- Design Degree Law -- applicants to think twice about misusing a registered design
and inappropriately taking advantage of the TPI's design registration system.
Subject: Industrial designs--case law--Turkey
Subject: Industrial design systems--Turkey
SNIPER No.: 2014/00854
Author: Cormack, Jim
SNIPER Bulletin – July 2014
Page 16 of 75
Title: Devolution won't derail Scotland's UPC
Source: Intellectual Property Magazine. April 2014, p. 40.
Summary: Solicitors and counsel in Scotland -- actively promoting the idea of having a local
division of the Unified Patent Court (UPC) -- taken place in the context of the Intellectual Property
Bill currently before the UK Parliament -- deals with giving effect to the UPC Agreement in the UK - amendments have been sought to the Bill to secure the establishment of divisions of the UPC in
each of the distinct UK legal systems of England & Wales, Scotland and Northern Ireland -- one of
the UK's local divisions would be in Scotland, in the form of the Court of Session, provided there is
demand for the services of a local division -- arguments advanced in support of a Scottish local
division -- core concern -- issue of equality of powers among the UK legal systems.
Subject: Unified Patent Court
Subject: Regional patents--Europe
SNIPER No.: 2014/00400
Author: Leonard, Michael J.
Author: Brant, Edward
Title: Do not be afraid of designating the United States
Source: Managing Intellectual Property. No. 236, February 2014, pp. 112-115.
Summary: In the United States 10% of applications come via the Madrid Protocol -- international
trade mark owners face challenges at the United States Patent and Trademark Office (USPTO) -just a small percentage of applications approved without objection -- simple steps to take to ensure
your application is successful -- paying careful attention to the intent-to-use requirements -- being
prepared for the relatively strict US requirements on designating goods and services -- making
sure the entity of the owner is clear -- identify all relevant prior registrations -- applicants can
increase their success rate by being prepared in advance of entering the US.
Subject: Madrid Agreement Concerning the International Registration of Marks (1891 April 14).
Protocols, etc., 1989 June 27
Subject: International trade mark applications--United States
SNIPER No.: 2014/01162
Author: Le Roux, Marius
Author: Verster, Dale
Title: Does the patent system need to change?
Source: World Intellectual Property Review. March-April 2014, p. 72.
Summary: Growing lobby in South Africa for the Patent Act to be reviewed and possibly amended
-- draft national policy on IP was prepared and advertised by the government for comment in
September 2013 -- possible for the South African system to allow for 'weak' patents to be granted - South Africa lacking a substantive examination system -- depository versus substantive -- interest
of patent owners to maintain only valid and enforceable patents on the patents register -- current
system places the validity, maintenance and costs burden on the patentee rather than the patents
office -- cost savings in the present system lower the barrier to entry for small and medium-sized
enterprises (SMEs) seeking protection.
Subject: Intellectual property systems--reform--South Africa
SNIPER No.: 2014/01121
SNIPER Bulletin – July 2014
Page 17 of 75
Author: Hung, Tranh Manh
Author: Mills, Jessica
Title: Domain names regulatory framework in Vietnam
Source: Asia IP: Protecting your Intellectual Assets. Vol. 6 No. 2, February 2014, pp. 33-34.
Summary: Vietnam not yet adopted the Uniform Domain-Name Dispute Resolution (UDRP) policy
to resolve disputes -- disputes governed by domestic law -- Vietnam's Intellectual Property Law
and the Information Technology Law both regulate the resolution of .vn domain name disputes -registration and use of a domain name that is confusingly similar to another's trade mark to
promote competitive products may be considered an act of unfair competition -- claim dealt with by
the courts or the Ministry of Information and Communications -- the IT aw provides criteria for
resolution of domain name disputes -- only courts and arbitration have jurisdiction over domain
name disputes under the IT law -- comparison with procedures under UDRP -- under current
Vietnamese law, more difficult to protect trade mark holders from cybersquatting and other domain
name abuse than under UDRP -- need to strengthen dispute resolution regime in Vietnam
Subject: Domain names
Subject: Fair use (Copyright)--Hong Kong
SNIPER No.: 2014/01115
Author: Reardon, Sara
Title: Don't feed the trolls
Source: Nature. Vol. 510 No. 7503, 5 June 2014, p. 7.
Summary: Patent abuse slows down research and innovation -- needs be controlled as a priority -US attempts to tackle trolls -- Court decisions -- measures to counteract the problem -- proposed
legislative changes in the bill for an 'Innovation Act' -- bill taken off the Senate Judiciary
Committee's agenda -- unlikely to be resurrected in 2014 -- difficulties in producing legislation that
would reduce the impact of trolls without harming genuine patent holders
Subject: Patent trolls--United States
Subject: Patents--law and legislation--United States
SNIPER No.: 2014/00871
Author: Smee, Nick
Title: Don't stop believing: comic club beats TV giant
Source: Intellectual Property Magazine. April 2014, p. 69.
Summary: Comic Enterprises Ltd v Twentieth Century Fox Film Corp -- England and Wales High
Court -- Twentieth Century Fox's hit TV show glee has been found to infringe Comic Enterprise's
registered trade mark for a device that includes the words "the Glee Club" -- how to approach
series marks -- the relevance of "wrong way round" confusion -- evidence required to establish
dilution and tarnishment.
Subject: Confusing similarity--United Kingdom
Subject: Trade mark infringement--case law--United Kingdom
SNIPER No.: 2014/00700
Author: Kretzschmar, Marcus D.
SNIPER Bulletin – July 2014
Page 18 of 75
Title: Drug safe harbour provisions in the USA and Europe: implications for the emerging
biosimilars industry
Source: Journal of Intellectual Property Law and Practice. Vol. 9 No. 4, April 2014, pp. 298-311.
Summary: Patent law in the United States and in Europe contain a Bolar provision -- provides a
safe harbour from patent infringement for certain activities related to obtaining marketing
authorization for a drug product -- whether a small molecule or a biologic drug -- court decisions
and legislative initiatives on both sides of the Atlantic affect the drug safe harbour -- invites critical
analysis of the Bolar provisions in the various jurisdictions -- safe harbour provision in the USA
differs significantly in scope from the corresponding provision in the relevant EU Directive -discussed issues affect drug or medical device companies' decisions on aspects of patent
infringement litigation strategy -- best location for pre- and postmarketing approval activities.
Subject: Experimental use (Patents)--pharmaceutical industry--Europe
Subject: Experimental use (Patents)--pharmaceutical industry--United States
Subject: Patent infringement--pharmaceutical industry--Europe
Subject: Patent infringement--pharmaceutical industry--United States
SNIPER No.: 2014/01207
Author: Rijsdijk, Michiel
Title: Dutch anti-piracy foundation walks the plank
Source: World Intellectual Property Review. January-February 2014, pp. 71.
Summary: Digital piracy -- copyrighted material available on the Internet -- use of 'torrents' -- Ziggo
& XS4All v BREIN -- Court of Appeal of The Hague was faced with the question of whether to limit
services that provided access to TPB (The Pirate Bay) -- services that provided access to The
Pirate Bay facilitated copyright infringement -- appealed on the grounds that the measure wasn't
proportional to the resulting effect -- High Court ruled the measure to be disproportionate and lifted
the block -- BREIN (Dutch anti-piracy foundation of authors, artists, publishers, producers and
distributors of music, films, games, interactive software and books) considering appeal to the
Supreme Court -- block considered an ineffective measure against digital piracy.
Subject: Electronic copyright--case law--Europe
Subject: Carriage service providers--liability--Europe
SNIPER No.: 2014/01122
Author: Vincent, Mark
Author: Crooks, Katrina
Title: The era of big data
Source: Asia IP: Protecting your Intellectual Assets. Vol. 6 No. 2, February 2014, pp. 35-40.
Summary: Copyright usually extends to cover original compilations of data -- courts make clear
that such protection does not cover the data itself but just the particular collection of it -- how
copyright laws may apply to Big Data collections.
Subject: Copyright
Subject: Database rights
SNIPER No.: 2014/00975
Author: Banerjee, Someshwar
SNIPER Bulletin – July 2014
Page 19 of 75
Title: Ericsson faces FRANDly fire in India
Source: Journal of Intellectual Property Law and Practice. Vol. 9 No. 5, May 2014, pp. 363-364.
Summary: The Competition Commission of India (CCI) concluded that Ericsson was taking part in
anti-competitive practices -- Micromax Informatics Limited v Telefonaktiebolaget LM Ericsson and
Intex Technologies (India) v Telefonaktiebolaget LM Ericsson -- claim that royalties for standard
essential patents (SEPs) were unfair -- GSM technology -- Ericsson claim for patent infringement -complaint filed with CCI under s 19 (1)(a) of the Competition Act 2002 -- Ericsson has complete
dominance over its present and prospective licensee in the relevant product market -- the Director
General to conduct an investigation into Ericsson's practices -- practical significance.
Subject: Standards (Technical)--case law--India
Subject: Patent licensing--case law--India
Subject: Competition (Economics)
SNIPER No.: 2014/00872
Author: Llewellyn, Gavin
Title: EU design law: shop around and keep records
Source: Intellectual Property Magazine. April 2014, pp. 70-71.
Summary: H Gautzsch Groẞhandel GmbH & Co KG v Münchener Boulevard Möbel Joseph Duna
GmbH -- Court of Justice of the European Union (CJEU) -- damages for the infringement of
intellectual property rights are usually a key factor in most cases which come before the courts -obtaining information from the defendant to enable damages to be assessed is therefore crucial -in a case involving a community-wide law, whose law applies to the assessment of damages? -key points in the decision -- damages -- disclosure and novelty -- proof of copying.
Subject: Industrial design infringement--case law--Europe
Subject: Damages--Europe
SNIPER No.: 2014/01057
Author: Ghafele, Roya
Title: Europe's missed royalty opportunity
Source: Managing Intellectual Property. No. 238, April 2014, pp. 34-36.
Summary: Is Europe capitalising on the royalty revenue opportunities of the continuously growing
market for digital music consumption? -- Oxfirst valued the 2012 digital copyright market and
compared it to the existing online revenues collecting societies had in the same year -- results
revealed that less than 1% of this burgeoning market is being captured -- new EU Directive on
Collective Rights Management is an important step in the right direction -- more needs to be done
to pave the way for institutions that are born out of the internet, rather than in relation to it.
Subject: Copyright licensing societies--culture and entertainment industry--Europe
Subject: Electronic rights management--law and legislation—Europe
SNIPER No.: 2014/01030
Author: Treacy, Pat
Author: George, David
Title: Europe's tech transfer regime: headaches for IP licensees and licensors?
SNIPER Bulletin – July 2014
Page 20 of 75
Source: Intellectual Property Magazine. May 2014, pp. 39-40.
Summary: European Commission has revamped the competition law regime applicable to
technology transfer agreements -- Commission hopes the new rules will facilitate the sharing of
intellectual property (IP) -- embodying a "prudent" approach towards clauses which might harm
competition and innovation -- new rules are likely to alter the dynamics of IP licensing negotiations
-- making agreement harder to reach and IP disputes more common -- revised technology transfer
block exemption regulation and technology transfer guidelines -- termination on challenge -exclusive grant-backs -- passive selling -- settlement agreements -- revision has led to some more
minor clarifications -- guidelines are now more user-friendly -- every key substantive change has
increased uncertainty for IP owners.
Subject: Technology transfer--law and legislation--Europe
Subject: Technology transfer--reform--Europe
SNIPER No.: 2014/01117
Author: Plewa, Carolin
Author: Korff, Nisha
Author: Johnson, Claire
Author: Macpherson, Gregory
Author: Baaken, Thomas
Author: Rampersad, Giselle Camille
Title: The evolution of university-industry linkages: a framework
Source: Journal of Engineering and Technology Management. Vol. 30 No. 1, January-March
2013, pp. 21-44.
Summary: Literature on research commercialization -- qualitative study -- examines the dynamic
nature of university-industry linkages (UIL) -- 38 in-depth interviews conducted in Australia and
Germany/the Netherlands -- evidence of the different phases through which UILs evolve and
respective measures of success -- communication, understanding, trust, and people are universal
drivers -- managers involved in technology transfer, innovation, and commercialization must
consider the variations in the nature of these factors to ensure successful UILs -- study equips
managers with critical insights into developing effective relationships -- proposed conceptual
framework also uncovers notable theoretical and managerial implications and offers some key
research directions
Subject: Technology transfer
Subject: Innovation (Technological)
Subject: Intellectual property rights
SNIPER No.: 2014/01127
Title: Expiring soon: products up for grabs
Source: World Intellectual Property Review. Life Sciences Intellectual Property Review, Vol. 1 No.
2, 2014, pp. 16-19.
Summary: World's ten top-selling drugs lose exclusivity in 2014 -- products -- Copaxone
(glatiramer acetate) -- Nexium (esomeprazole magnesium) -- Cymbalta (duloxetine hydrochloride) - Evista (raloxifene hydrochloride) -- Micardis (telmisartan) -- Restasis (cyclosporine) -- Nasonex
(mometasone furoate monohydrate) -- major competitors -- manufacturer's strategies for keeping
market share in each case.
SNIPER Bulletin – July 2014
Page 21 of 75
Subject: Patent expiry--pharmaceutical industry
SNIPER No.: 2014/01120
Author: Bird, Richard
Author: White, Victoria
Title: False and misleading?: advertising on social media in China and Hong Kong
Source: Asia IP: Protecting your Intellectual Assets. Vol. 6 No. 2, February 2014, pp. 29-32.
Summary: Contrasting approaches to the regulation of false and misleading advertising on social
media in Hong Kong and China
Subject: Copyright--law and legislation--Hong Kong
Subject: Fair use (Copyright)--Hong Kong
SNIPER No.: 2014/00851
Author: Bitan, Oren
Title: Five tips for film distributors and other licensees
Source: Intellectual Property Magazine. April 2014, pp. 31-32.
Summary: United States Copyright Act does not discriminate between two or more joint infringers
-- distributors of copyright works must take special care to contract with reliable licensees to ensure
they are not held liable for the entirety of a successful plaintiff's copyright infringement damages -can include the total value of copyrighted work -- perils of joint and several liability are magnified
when a co-defendant becomes insolvent or "judgment proof" -- protective measures a distributor
can employ -- verifying chain of title -- securing Errors and Omissions insurance (E&O) -adequately vetting the financial strength of its licensor -- if protective measures are not taken
distributor can find itself exclusively liable for a large copyright infringement damages award and
the accompanying attorneys' fees without any practical recourse against its licensor -- Randles
Films v Quantum Releasing -- extraterritoriality of copyright damages -- joint and several liability.
Subject: Copyright infringement--liability--United States
Subject: Copyright infringement--case law--United States
SNIPER No.: 2014/01164
Author: Özdoǧan, Iǧsik
Author: Baklaci, Ezgi
Title: Foreign language trade names permitted
Source: World Intellectual Property Review. March-April 2014, p. 74.
Summary: Turkish Ministry of Customs and Commerce notified in February 14 intention to
introduce guidelines for the substance of company trade names and for individual tradespeople
operating commercial enterprises -- basic principles for selecting and registering a trade name are
defined in the Turkish Commercial Code (TCC) -- guidelines to clarify the TCC principles and
requirements for trade names -- clarifies cases of confusion -- opens the way for the use of nonTurkish words within the name element of trade names -- expands the available scope for trade
names in Turkey for foreign companies.
Subject: Commercial names--Turkey
Subject: International trade marks--reform--Turkey
SNIPER Bulletin – July 2014
Page 22 of 75
SNIPER No.: 2014/00448
Author: Schneider, Ingrid
Title: Framing and explaining the politicization of intellectual property rights in the knowledge
society
Source: Beldiman, Dana (ed.), Access to Information and Knowledge: 21st Century Challenges in
Intellectual Property and Knowledge Governance. Cheltenham, U.K. : Edward Elgar, 2013. pp.
208-234.
Summary: Anti-Counterfeiting Trade Agreement (ACTA) -- frame theory-based analysis of the
anti-ACTA protests in Europe -- frame analytical research in political science -- emphasis on action
conceptualizes 'collective action frames' as tools for 'signifying work' and 'meaning construction' -formulating claims resulting from these frames -- proponents and opponents -- succession of
protests in Europe -- observations -- ACTA has been framed by protesters as it relates to civil
rights, such as freedom of speech, privacy, and due process -- censorship -- claims for
transparency -- interim conclusions -- outcome of the protests in Europe -- intellectual property as a
generic term -- structural driving forces -- ambiguities and dialectics of TRIPS -- conflicts within the
community of IP holders -- law scholars and economists views -- civil society challenging IP rights.
Subject: Anti-Counterfeiting Trade Agreement--Europe
Subject: Intellectual property--social aspects
SNIPER No.: 2014/01034
Author: Ruffin, Nathalie
Title: France reinforces its fight against fakes
Source: Intellectual Property Magazine. May 2014, pp. 47-48.
Summary: France has just passed a new law reinforcing the fight against counterfeiting -- five
main objectives -- improving indemnification of intellectual property (IP) rightsholders -- facilitating
the proof of infringement for right owners, the victims' right to information strengthened -harmonising procedural rules applicable to different intellectual property rights -- harmonisation of
intellectual property seizure procedures -- harmonisation of the limitation periods -- strengthening
the means made available to customs -- standardisation of customs offences -- harmonisation of
national customs detention procedures with Community detention procedures -- obligation to
disclose data concerning small parcels -- improvements in customs detention procedures -encouraging rights owners to file criminal complaints.
Subject: Counterfeiting--law and legislation--France
Subject: Customs—France
SNIPER No.: 2014/00966
Author: Prud'homme, Dan
Title: FRAND and other requirements in China's Announcement on Releasing (Provisional)
Administration Regulations of National Standards Involving Patents
Source: Journal of Intellectual Property Law and Practice. Vol. 9 No. 5, May 2014, pp. 346-349.
Summary: New measures regulating national standards involving patents in China -- China's State
Intellectual Property Office and the National Standardization Administration Announcement on
Releasing (Provisional) Administration Regulations of National Standards Involving Patents -- took
effect as of 1 January 2014 and are binding -- reporting requirements -- patent licensing
requirements -- fair, reasonable, and non-discriminatory (FRAND) terms for voluntary national
SNIPER Bulletin – July 2014
Page 23 of 75
standards -- suspension and revision of voluntary national standards -- patent licensing for
compulsory national standards -- national standards development and reporting -- analysis -Regulations seen as a step forward but more work is required to the legal framework regulating
standards and patents in China.
Subject: Standards (Technical)--China
Subject: Patents--law and legislation--China
Subject: Competition law--China
SNIPER No.: 2014/01106
Author: Daly, Angela
Title: Free software and the law: out of the frying pan and into the fire: how shaking up intellectual
property suits competition just fine
Source: Journal of Peer Production. Vol. 3, [2013], pp. 1-6.
General Note: Published on Social Science Research Network (SSRN).
Summary: Competition law has approached free software by examining instances in which courts
have had to deal with such initiatives -- Oracle Sun Systems merger -- implications these decisions
have on free software initiatives -- presence or absence of corporate involvement in initiatives -'commons-based peer production' -- laws beyond intellectual property -- asserting copyright over
specific parts of code in software development -- clash between free software and competition law
-- competition law and free software in practice.
Subject: Competition law--intellectual property industry
Subject: Competition (Economics)--case law--Europe
Subject: Mergers and takeovers--information technology industry--Europe
SNIPER No.: 2014/00449
Author: Kampf, Roger
Title: From data to wisdom: the contribution of intellectual property rights to the knowledge
pyramid
Source: Beldiman, Dana (ed.), Access to Information and Knowledge: 21st Century Challenges in
Intellectual Property and Knowledge Governance. Cheltenham, U.K.: Edward Elgar, 2013. pp. 235257.
Summary: Defines 'access to knowledge' in the context of intellectual property rights (IPRs) -- the
TRIPS Agreement seventeen years after -- what it can tell us about access to knowledge -initiatives and reflections -- World Intellectual Property Organisation (WIPO) -- World Health
Organization (WHO) -- European Union -- sound knowledge governance.
Subject: Innovation (Technological)
SNIPER No.: 2014/00972
Author: Schnepper, Esther B.
Title: From pillar to post: Volvo's road-trip in the opposition against Solvo
Source: Journal of Intellectual Property Law and Practice. Vol. 9 No. 5, May 2014, pp. 358-359.
Summary: General Court of the European Union (GC) annulled the decision of the Board of
Appeal of the Office for Harmonisation in the Internal Market (OHIM) with regard to the opposition
of Volvo against registration of the trade mark SOLVO -- Elena Grebenshikova v OHIM -- Article
SNIPER Bulletin – July 2014
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8(1)(b) of Regulation 207/2009 on the Community trade mark -- likelihood of confusion takes into
account many factors relevant to the case -- history of case -- First Board of Appeal upheld
opposition -- analysis of GC decision -- interpretation of the relevant public -- only phonetic
similarity between the signs -- likelihood of confusion -- more than ten years have passed since the
application was filed -- this case shows of the complexity of assessing likelihood of confusion -Volvo can still appeal to the Court of Justice of the European Union.
Subject: Confusing similarity--case law--Europe
SNIPER No.: 2014/00870
Author: Dine, Jeffrey M.
Title: Full surrender: Fullscreen settles music lawsuit
Source: Intellectual Property Magazine. April 2014, pp. 67-68.
Summary: National Music Publishers Association (NMPA) v Fullscreen, Inc -- US District Court for
the Southern District of New York -- settled a lawsuit brought by certain NMPA members against
the online service and its principal, George Strompolos -- Fullscreen is a 'multi-channel network'
that provides a range of services for content creators on YouTube -- NMPA's members brought
suit, alleging Fullscreen had "engaged in widespread and wilful copyright infringement" in
connection with videos using musical compositions owned by plaintiff music publishers -- multichannel networks and YouTube -- multi-channel networks -- NMPA member's complaint -- how to
solve a problem like YouTube? -- a second front in the war on YouTube infringement.
Subject: Copyright infringement--case law--United States
Subject: Copyright infringement--culture and entertainment industry--United States
SNIPER No.: 2014/01132
Author: Kumar, Jitesh
Title: The Glivec case: getting beyond efficacy
Source: World Intellectual Property Review. Life Sciences Intellectual Property Review, Vol. 1 No.
2, 2014, pp. 36-39.
Summary: Indian Supreme Court Glivec decision in Novartis v Union of India -- scope of Section
3(d) in the Indian Patent Act-- efficacy as "therapeutic efficacy" -- new form -- judgment fails to
provide clarity for practitioners on Section 3(d) -- patentability of pharmaceuticals in India
Subject: Patents--pharmaceutical industry--India
Subject: Pharmaceuticals--India
SNIPER No.: 2014/01141
Author: Gómez, Jorge
Author: Rangel, Jonathan
Title: Good news for IP in Mexico?
Source: World Intellectual Property Review. March-April 2014, pp. 40-43.
Summary: Trans-Pacific Partnership (TPP) multilateral agreement -- Mexico in negotiation -implications for IP practice in Mexico -- secret negotiations lacking transparency for stakeholders
other than the contracting parties -- legal requirements -- amendments to local Mexican IP
legislation -- extending the term of a patent -- extending the terms of copyright -- use of the 'threestrikes test' -- increase the penalties derived from copyright and patent infringement -- whether
SNIPER Bulletin – July 2014
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these measures can be used as an effective tool to pursue the objectives of the TPP -- at what
cost.
Subject: Draft Trans-Pacific Partnership Agreement
Subject: International trade--treaties
Subject: Intellectual property systems--Mexico
SNIPER No.: 2014/00857
Author: McConchie, Connor
Title: Graphene: the technology on the cusp of maturity
Source: Intellectual Property Magazine. April 2014, pp. 45-46.
Summary: Legal monopoly provided by patents offers compensation for the investment and risk
associated with performing the research -- genuinely new areas of technology can be on the wrong
side of the academic/commercial divide in terms of their suitability for patent protection -technology may not yet have a defined commercial application -- considered to be at an 'immature'
stage of their lifecycle -- progressing the technology to the next stage of its lifecycle is often where
the patent system can prove most effective -- patent system may not be the initial driver for
innovation, it adds fuel to the fire -- moving from infancy to adolescence -- graphene could be
viewed as a technology emerging from relative commercial infancy and into adolescence -- Patent
Box could help push the UK graphene industry into maturity -- Patent Box is a tax incentive for
intellectual property rights to be held by UK companies -- pitfalls in filing early.
Subject: Innovation (Technological)--United Kingdom
Subject: Taxation--United Kingdom
SNIPER No.: 2014/01209
Author: Chen, Candy K. Y.
Author: Chen, Crystal J.
Title: Graphic image design protection
Source: World Intellectual Property Review. January-February 2014, pp. 73.
Summary: Added design protection for computer-generated graphic images to meet industrial
needs and international trends -- patentable graphic images include computer-generated icons and
graphical user interfaces (GUis) -- reform to the Taiwan Patent Act enforced in 2013 -- any virtual
graphical interfaces that are generated from electronic devices, computers or information
technology products, and are displayed through such a device, may be deemed graphic images -icons -- GUIs -- other graphical images -- drawings -- specifications -- graphic image design must
be applied to an article to be patentable, such as a screen, a monitor, a display panel, or a display
apparatus.
Subject: Industrial designs--law and legislation--Taiwan
Subject: Computer-related inventions--Taiwan
SNIPER No.: 2014/01163
Author: Chen, Crystal J.
Title: Green technologies eligible for accelerated examination programme
Source: World Intellectual Property Review. March-April 2014, p. 73.
SNIPER Bulletin – July 2014
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Summary: Applicants in Taiwan wishing to patent their inventions can benefit from the Taiwan
Intellectual Property Office's (TIPO) accelerated examination programme (AEP) -- programme now
extended to include green technologies -- China, Japan, the UK and the US have launched AEP of
green energy technologies -- AEP-eligible applications -- AEP examination -- no official fee is
required for filing an AEP request under some conditions -- TIPO will not acknowledge receipt of
the AEP request -- plans to issue a Notice of Allowance or an Office Action notifying reasons of
rejection.
Subject: Environmental issues in intellectual property
Subject: Intellectual property systems--Taiwan
SNIPER No.: 2014/00850
Author: Mostert, Frederick W.
Author: Chan, Lianna
Title: Hacked off: protecting intellectual property online
Source: Intellectual Property Magazine. April 2014, pp. 33-34.
Summary: Counterfeiting on the internet is rife -- market across Europe is expanding daily -- not a
standalone problem as there is an increasing convergence between counterfeiting and hacking -methods intellectual property owners can deploy to defend themselves -- hacking back into a
hacker's computer to retrieve the stolen designs and potentially disable the hacker's computer or
network -- hacking back can be carried out in many forms -- active or passive hacking -- each
different type of hack back involves different considerations and complications and a wide range of
eventual outcomes -- arguments for and against the hack back theory -- legal basis for the theory
is uncertain -- further considerations -- effect on innocent bystanders -- manner of hacking back is
unclear -- procedural aspects of permitting a hack back are uncertain.
Subject: Counterfeiting
Subject: Intellectual property enforcement
SNIPER No.: 2014/00867
Author: Johnson, Daniel J.
Title: Hefty damages for cochlear implant patents
Source: Intellectual Property Magazine. April 2014, p. 64.
Summary: Alfred E Mann Foundation (AMF) for Scientific Research v Cochlear Corp -- US District
Court for the Central District of California --AMF created a revolutionary cochlear implant -- AMF
found Cochlear had infringed two of its patents -- they sued and the court has now ruled in AMF's
favour -- case underlines key issues that companies on both sides of an infringement suit must
remember -- inadequate risk evaluation -- award for damages -- Cochlear's defence -- aesthetic
dissimilarities in the design of the company's implants and AMF's products -- changes were merely
cosmetic and "novelty" requirements weren't met -- judges and juries commonly perceived to be
hostile to technical arguments -- case highlighted how misguided this perception can be -- case
also underlined the dangers of overreliance on technological arguments -- Cochlear has indicated
it will seek a reconsideration of the damages awarded.
Subject: Patent infringement--case law--United States
Subject: Damages--United States
SNIPER No.: 2014/00869
Author: Massimei, Gianluca
SNIPER Bulletin – July 2014
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Title: Hot to trot: Ferrari wins 'Prancing Horse' case
Source: Intellectual Property Magazine. April 2014, p. 66.
Summary: Regional Court of Düsseldorf -- Ferrari v KiK -- Ferrari became aware that KiK had sold
on a national scale, low-cost model toys of red Formula 1 cars reproducing a trade mark bearing
the sign of a black lion inside a yellow shield -- the dispute -- the decision -- sign surreptitiously
resembling the original Ferrari 'Prancing Horse' logo -- use could not be justified by any reason
other than piggybacking on Ferrari's reputation and appeal to the public.
Subject: Counterfeiting--case law--Germany
Subject: Trade mark infringement--case law--Germany
SNIPER No.: 2014/01085
Author: He, Jing
Author: Xia, Jerry
Title: How Chinese courts are ratcheting up damages awards for wilful infringement
Source: World Trademark Review. No. 49, June-July 2014, pp. 76-79.
Summary: China's newly amended Trademark Law -- increase in damages in trade mark
infringement cases -- recognise punitive damages -- easing the burden of proof for brand owners in
establishing damages -- relevant binding rules -- current court precedents and judicial policies -practical tips for obtaining and collecting damages against infringers -- predictions of future trends - implications of the pending judicial reforms on damage awards in China.
Subject: Damages--China
Subject: Trade mark infringement--China
SNIPER No.: 2014/01087
Author: Dahan, Véronique
Title: How design patents complement trademarks in the fashion brands armoury
Source: World Trademark Review. No. 49, June-July 2014, pp. 83-86.
Summary: Key players in the fashion industry -- counterfeiting of these brands has become a very
lucrative industry -- logos, trade marks and designs of clothing and accessories are being copied -World Customs Organisation (WCO) reported that approximately 10% of the fashion trade is now
counterfeit -- explains why the luxury brands take counterfeiting extremely seriously and engage in
campaigns against illegal copying -- must be complemented by comprehensive intellectual
property (IP) strategies -- fashion designers are increasingly turning to design patents to improve
protection -- registering design patents -- protects the way that an article looks -- configuration or
shape, surface ornamentation or both -- registered Community designs in the European Union -international protection is afforded by registration at the World Intellectual Property Organisation
(WIPO) -- full potential of design patent law has not yet been fully exploited by the fashion industry
-- arguments raised against registering design patents -- advantages of strong design patent
protection -- requirements to obtain strong design patent protection -- other IP rights that can be
used strategically by fashion companies -- utility patents -- 3D trade marks.
Subject: Industrial designs--fashion and design industry
Subject: Counterfeiting--fashion and design industry
SNIPER No.: 2014/00393
Title: How do the top US filers choose their firms?
SNIPER Bulletin – July 2014
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Source: Managing Intellectual Property. No. 236, February 2014, pp. 29-31.
Summary: IMB files a lot of patents in-house -- also uses outside lawyers for some of its
prosecution work, depending on what is likely to be more efficient -- level of investment that IBM
wants to make in it -- IBM selects outside firms based on cost and the quality of their work -expertise with particular technologies -- Google almost entirely relies on outside firms for patent
prosecution -- Google generally prefers negotiation and cross-licensing arrangements to litigation -potential threat to US patents, is the outcome of Alice v CLS Bank at the Supreme Court.
Subject: Patent filing--information technology industry--United States
Subject: Patent attorneys--United States
SNIPER No.: 2014/00395
Author: Nurton, James
Title: How will patent firms respond to the UPC?
Source: Managing Intellectual Property. No. 236, February 2014, p. 34.
Summary: Unitary Patent and Unified Patent Court (UPC) -- a lot of scepticism and even
opposition to the EU's patent plans -- widely accepted that the new system will probably come into
effect by 2016 -- patent firms need to prepare now -- no-one can be sure how they will be affected - development that seems likely is that more firms will open offices in different countries -- three
locations of the UPC central division (Paris, London and Munich) becoming particularly important -another trend in the combination of legal and patent services -- biggest unknown is how US firms
will fare -- struggled to make an impact on patent work in Europe -- Unitary Patent and UPC may
provide a new opportunity to provide pan-European advice for US clients.
Subject: Unified Patent Court
Subject: Regional patents--Europe
SNIPER No.: 2014/00968
Author: Moss, Gary
Title: HTC v Nokia: In the United Kingdom will an injunction be granted following a finding of patent
infringement?
Source: Journal of Intellectual Property Law and Practice. Vol. 9 No. 5, May 2014, pp. 351-352.
Summary: Final injunction granted preventing HTC from selling products which had been judged
to have infringed Nokia's patent -- HTC Corporation v Nokia Corporation -- legal background -patent had not been declared essential to any telecom standard -- HTC argued that Nokia's
remedy should lie in damages alone -- analysis of decision -- different approach by the courts in
the United States and the United Kingdom (UK) -- in the UK after a finding of patent infringement
the grant of an injunction is presumed -- practical significance.
Subject: Injunctions--law and legislation--United Kingdom
Subject: Patent infringement--case law--United Kingdom
SNIPER No.: 2014/01023
Author: Stobbs, Julius
Author: Whiting, Lewis
Author: Hirsch, Sylvain
Author: Fau, Jean
SNIPER Bulletin – July 2014
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Title: ICANN and the seminal year for online IP
Source: Intellectual Property Magazine. May 2014, pp. 26-28.
Summary: Internet Corporation for Assigned Names and Numbers (ICANN) -- launch of the new
generic top-level domain (gTLDs) -- key players -- blurring of the lines between brand owners,
registries and registrars with all parties seeking to gain a commercial advantage -- Registrar
Accreditation Agreement (RAA) -- ICANN's Collision Occurrence Management plan -- Registration
Directory Service (RDS) being considered as a replacement of the current Whois system -Trademark Clearinghouse and blocking.
Subject: Domain name registration
Subject: Internet
SNIPER No.: 2014/00971
Author: Taylor, David
Title: ICANN offers rapid relief to trade mark holders in clear cases of infringement
Source: Journal of Intellectual Property Law and Practice. Vol. 9 No. 5, May 2014, p. 357.
Summary: The Uniform Rapid Suspension System (URS) and its value to brand owners -development from a request from the Board of Internet Corporation for Assigned Names and
Numbers (ICANN) -- new gTLDs -- cyber-squatters and the registration of trade marks in bad faith - URS as a lower cost and faster option than the Uniform Domain-Name Dispute Resolution Policy
(UDRP) -- changes to the URS -- relative merits of the URS and UDRP -- recommendations.
Subject: Domain name dispute resolution
Subject: Brand management
Subject: Trade mark enforcement
SNIPER No.: 2014/00846
Author: Korn, Naomi
Title: In defence of copyright exceptions
Source: Intellectual Property Magazine. April 2014, pp. 23-24.
Summary: Cross border collaboration hampered by the lack of harmonised copyright exceptions
across the EU member states -- Libraries and Archives Copyright Alliance (LACA) is a UK umbrella
group convened by CILIP (Chartered Institute of Library and Information Professionals) -- CILIP
and LACA advocate for a fair and balanced copyright framework -- respecting rights of copyright
holders -- equal value on the importance of users' liberties -- aims of LACA -- highlight and
communicate to policy makers the deficiencies in the current copyright framework -- role and costs
of licences -- benefits of new proposed exceptions within the Hargreaves review -- better
knowledge sharing by EU copyright reform.
Subject: Fair use (Copyright)--knowledge industry--Europe
Subject: Copyright--reform--Europe
SNIPER No.: 2014/01058
Author: Leung, Peter
Title: India goes digital
Source: Managing Intellectual Property. No. 238, April 2014, pp. 38-42.
SNIPER Bulletin – July 2014
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Summary: India acceded to the Madrid Protocol -- substantial amount of the preparation for
acceding to the Protocol has involved digital services -- improvements aimed at clearing the
backlog and reducing pendency -- trade mark registry has made considerable efficiency
improvements -- more can be done to take advantage of automated processes -- limits to the
gains, due to the low usage of the new system -- smaller companies and individuals are still using
the more labour intensive paper system -- possible improvements to encourage usage -- subset of
users may continue to resist the change -- still are advantages in the paper system in some
instances -- workforce shortages in the trade mark and patent registry -- registries do not keep
revenue within the department but instead must send it up to the government -- case for making
the patent and trade mark office an autonomous agency of the government -- practitioners say
improvements are substantial.
Subject: Trade mark registration--reform--India
SNIPER No.: 2014/01054
Author: Khurana, Meenakshi
Title: Indian patentability refined, post-Glivec
Source: Managing Intellectual Property. No. 238, April 2014, pp. 22-24.
Summary: S.3(d) of India's Patent Act highlighted the high patentability standards facing
applicants -- several cases have provided further guidance on the reasoning behind India's unique
approach to the issue -- two recent decisions before the Intellectual Property Appellate Board
(IPAB) clarify India's obviousness standard, based on the person skilled in the art rather than one
ordinarily skilled -- presents a unique challenge for applicants, while at the same time also
demonstrating the challenge of proving enhanced therapeutic efficacy under s. 3(d) -- Fresenius
Kabi Oncology v Glaxo Group -- Ajanta Pharma v Allergan and the controller of patents and
designs.
Subject: Inventive step--India
Subject: Patentability--case law--India
SNIPER No.: 2014/01089
Author: Salameh, Zeina
Title: Industry focus: the sweet smell of success for confectionery trademarks in the Middle East
and North Africa
Source: World Trademark Review. No. 49, June-July 2014, pp. 92-95.
Summary: Packaging and three-dimensional trade marks -- colour marks -- slogans -classification -- search and examination -- use and registration -- famous confectionery marks -trade marks in Arabic -- enforcement -- infringement claim -- unfair competition claim -- commercial
anti-fraud department -- customs recordal.
Subject: Trade marks--manufacturing and processing industry--Middle East
Subject: Trade dress--manufacturing and processing industry--Middle East
SNIPER No.: 2014/01069
Title: Infringement from a digital wallet
Source: World Trademark Review. No. 49, June-July 2014, p. 11.
Summary: Bitcoin founded anonymously in 2007 -- transcends national boundaries and is not
supported by any official authority -- unclear whether policy makers in any country have yet
considered how to regulate the use of Bitcoin for purchasing goods online -- unclear whether
SNIPER Bulletin – July 2014
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possible to regulate -- cyber-currencies increasingly being used in commercial transactions -challenges for trade mark counsel -- how trade mark counsel can prepare.
Subject: Trade marks--financial services industry
Subject: Electronic commerce
SNIPER No.: 2014/01159
Author: Rijsdijk, Michiel
Title: Infringement through hyperlinking requires new kid on the block
Source: World Intellectual Property Review. March-April 2014, p. 69.
Summary: Court of Justice of the European Union (CJEU) case referred to it by the Svea Court of
Appeal -- whether hyperlinking and embedding should be considered as acts of communication to
the public -- case involved a number of Swedish journalists (Svensson et al) and Retriever Sverige,
a company that provides links to online articles in which the journalists own the copyright -decision likely to result in further questions from national courts -- whether the communication is to
a 'new public'.
Subject: Copyright infringement--case law--Europe
Subject: Electronic copyright--case law--Europe
SNIPER No.: 2014/01070
Author: Little, Trevor
Title: Inside track: how IPOS is supporting the trademark ecosystem
Source: World Trademark Review. No. 49, June-July 2014, pp. 12-13.
Summary: Intellectual Property Office of Singapore (IPOS) -- statutory board under the Ministry of
Law -- tasked with promoting IP awareness and building capacity to facilitate its development, in
addition to maintaining the registry -- increases in trade mark applications -- increasing number of
examiners -- training programme for examiners -- 'ip2sg' e-services platform -- IPOS remit
continues to develop -- first tasked with functions related to the development and promotion of
intellectual property -- incentivising creativity -- working with businesses and other offices -- seized
the opportunity to embed IP awareness in the educational curriculum -- brand awareness is
increasing and large brands are present in increasing numbers.
Subject: Intellectual property awareness--Singapore
Subject: Intellectual property education--Singapore
SNIPER No.: 2014/01274
Added author: European Commission
Added author: European IPR Helpdesk
Title: Intellectual property in biotechnology
Source: Intellectual property in biotechnology. June 2014.
Summary: Different forms of IP in biotechnology -- "life sciences" -- patents on biotechnological
inventions -- biotechnology and innovation in Europe -- innovation cycle -- open innovation:
cooperation between SMEs, public research institutes and larger companies -- how to use
biotechnology patent indicators -- how to find biotechnology patents -- how to get innovation
indicators from biotechnology patents.
Subject: Biotechnology industry--trends--Europe
SNIPER Bulletin – July 2014
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Subject: Patents--biotechnology industry
SNIPER No.: 2014/01201
Author: Marie, Aurélia
Title: Interpreting the Unregistered Community Design
Source: World Intellectual Property Review. January-February 2014, pp. 65.
Summary: Unregistered community Design -- whether disclosure of the design to traders is
considered first disclosure -- Bundesgerichtshof (German Federal Court of Justice) referred several
questions to the Court of Justice of the European Union (CJEU) for a preliminary ruling -- Advocate
General (AG) delivered his opinion -- creator who makes available a design to the public for the
first time can benefit from the rights provided for UCDs by the regulation -- enjoy protection for
three years against copy from the date of first disclosure.
Subject: Community Design--Europe
Subject: Industrial designs--Europe
SNIPER No.: 2014/00849
Author: Alibhai, Ari
Title: IP Bill critics are missing the point
Source: Intellectual Property Magazine. April 2014, p. 30.
Summary: Criticism of the proposals in the IP Bill of the potential criminalisation of design right
infringement -- Chartered Institute of Patent Attorneys (CIPA) and IP Federation (IPF) -- accused
the government of creating a system which would lead to overly complex litigation of issues before
juries on matters best dealt with by specialist courts -- lead to bona fide companies falling foul of
criminal prosecution on the basis of technical or inadvertent breaches of design rights -- neither
criticism is valid -- Bill's detractors have failed to appreciate the ability of the criminal courts to
address complexity -- the exemption from criminal liability for inadvertent breaches acting to shield
all but the most deliberate infringers from criminal penalty -- Bill fills a gap in the criminal/civil
framework -- enactment will result in greater protection for the creative industries -- copyright and
trade mark infringement criminalised -- designs right has not benefited from such protection -imbalance between the sanctions for one type of infringement over another -- examples of
copyright-based criminal prosecutions.
Subject: Industrial designs--law and legislation--United Kingdom
Subject: Intellectual property law--reform--United Kingdom
SNIPER No.: 2014/01161
Author: Orlova, Valentina
Title: The IP Court, unfair competition and abuse of rights
Source: World Intellectual Property Review. March-April 2014, p. 65.
Summary: Judges of the Court for Intellectual Property Rights (the IP court) in Russia have faced
many issues for which current Russian legislation does not provide direct solutions -- Federal
Antimonopoly Service prepared a proposal to expand the list of forms of unfair competition -- will
help to combat it more effectively because it will be possible to apply national legislation directly -role of the Advisory Council of the IP Court.
Subject: Legal procedure--Russia
SNIPER Bulletin – July 2014
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SNIPER No.: 2014/01158
Author: López-Bautisita, Edith
Title: Issues concerning copyright and trademarks
Source: World Intellectual Property Review. March-April 2014, p. 65.
Summary: Lack of legal provision to establish an obligation for Mexican Institute of Industrial
Property (IMPI) to verify rights granted by the National Institute of Authors' Rights -- granting of
some of the rights governed by the relevant laws -- in connection with trade marks and some
copyrights, such as those included in the pictorial category: drawings, caricatures and/or some
others that can be considered as artistic works and could be protected as trade marks.
Subject: Intellectual property rights--Mexico
SNIPER No.: 2014/01157
Author: Chew, Kherk Ying
Author: Cheong, Jeffri
Title: Landmark Court of Appeal decision on computer software
Source: World Intellectual Property Review. March-April 2014, p. 67.
Summary: Read.soft Aktiebolag and Readsoft Asia Sdn Bhd (Readsoft) initiated High Court
proceedings for copyright infringement against Petraware Solutions Sdn Bhd (Petraware) -purportedly infringing Readsoft's data-capturing software, known as FORMS 5-3 -- Court of Appeal
decision has a significant impact on the software industry in Malaysia -- consistent with the position
adopted in the UK -- Court of Appeal held that to accord copyright protection to logical flowcharts
will be to allow basic scientific ideas to be monopolised -- will impede research and scientific
advancement of such ideas for the good of the general public.
Subject: Computer-related inventions--case law--Malaysia
SNIPER No.: 2014/01046
Author: Elkins, David S.
Author: Fox, Adam R.
Title: Lanham Act case inks place in history
Source: Intellectual Property Magazine. May 2014, pp. 74-75.
Summary: Lexmark International, Inc v Static Control Components, Inc -- United States Supreme
Court -- until Lexmark, plaintiffs alleging false advertising claims under s 43(a) needed to satisfy
one of three tests for determining whether the claimed injury fell within the section's scope -Lexmark does away with the tests -- simplifying the analytic framework for determining whether a
false advertising claim is within s 43(a)'s ambit -- decision's impact -- Lexmark vastly expands the
section's utility by confirming that Lanham Act plaintiffs need not be in direct competition with their
defendants.
Subject: Marketing--case law--United States
Subject: Marketing--law and legislation--United States
SNIPER No.: 2014/01200
Author: Nylund, Hanna
Author: Battistelli, Davide
SNIPER Bulletin – July 2014
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Title: Latest developments in copyright
Source: World Intellectual Property Review. January-February 2014, pp. 64.
Summary: Amendment of the Copyright Act in Finland – draft bill to address government
objectives -- enforcement measures against unauthorised use of copyrighted material online -website blocking orders -- bandwidth 'throttling" -- enables courts to order Internet service
providers to slow down traffic to and from pirate websites -- reform proposed to private copying
levies -- clearance of rights for network PVRs -- streamlined licensing process -- fair remuneration
for transfer of copyright.
Subject: Copyright--law and legislation--Finland
Subject: Copyright licensing--reform--Finland
SNIPER No.: 2014/01026
Author: Smith, Nathan
Title: Launch of .uk
Source: Intellectual Property Magazine. May 2014, p. 32.
Summary: Nominet introducing .uk domain names -- shorter domain names such as brand.uk will
be available for the first time -- existing UK domain names will continue to function as normal -owners may be offered certain rights of first refusal over the new .uk domain names -- advantages
of registering a .uk domain name -- what steps should be taken to protect brands in light of the
introduction of .uk -- steps for brand owners to consider.
Subject: Domain names
Subject: Brand management
SNIPER No.: 2014/01145
Author: Anand, Pravin
Author: Mittal, Vaishali
Title: The legal pitfalls of making comparisons
Source: World Intellectual Property Review. March-April 2014, pp. 52-56.
Summary: Rights of brands and copyright owners in India -- Indian courts adjudicating on
comparative advertisements -- High Court of Delhi has ruled that puffery, even if it us untrue, is
permissible -- impact of electronic media, with advertisements that go viral on YouTube yet to be
tested in the Indian courts -- advertising standards -- difference between parody and disparaging
advertisements -- fundamental rights guaranteed -- unfair competition -- personality and publicity
rights -- disparagement -- parody domain names -- Copyright Amendments Act 2012 yet to be
tested.
Subject: Comparative advertising--India
Subject: Trade mark owners' rights--India
Subject: Electronic copyright--India
SNIPER No.: 2014/01036
Author: Cumming, Robert
Author: McKinlay, Andrew
Title: Legal spectacle: Google Glass and IP
SNIPER Bulletin – July 2014
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Source: Intellectual Property Magazine. May 2014, pp. 51-52.
Summary: Google Glass -- internet-connected spectacles, which combine visual recognition
software with voice and gesture control -- augmented reality -- almost instantaneous language
translation -- allows you to take selfies and watch videos -- aesthetics have a way to go -- pending
patent applications and the recent announcement of its "smart contact lens" -- new world of
potential advertising possibilities -- Google Glass composed of ubiquitous functions of everyday
smartphones -- whether existing case law on keyword advertising brings any clarity to this vision of
the future -- test for trade mark infringement remains the same -- instead of words being used as
triggers for advertisements it is images -- the law in the European Union -- application.
Subject: Mobile computing
Subject: Trade mark infringement
SNIPER No.: 2014/01047
Author: Abramovitch, Susan H.
Author: Boyer, Will
Title: Lifting the internet veil in Canada's P2P copyright infringement actions
Source: Intellectual Property Magazine. May 2014, pp. 76-77.
Summary: Voltage Pictures LLC v John Doe and Jane Doe -- Federal Court of Canada -copyright trolls -- a party seeks to have an internet service provider (ISP) disclose the identity of
subscribers assigned specified internet protocol (IP) addresses that have allegedly infringed the
copyright holder's rights -- background of the proceeding and the motion -- protecting intellectual
property rights versus preventing abuse -- bona fide versus prima facie standard in Canada -safeguards in ISP Norwich orders, international jurisprudence -- the order and its effect moving
forward.
Subject: Copyright infringement--case law--Canada
Subject: Carriage service providers--Canada
SNIPER No.: 2014/00873
Author: Adamo, Kenneth R.
Author: Higer, David W.
Author: Goryunov, Eugene
Author: Hubbard, Ryan M.
Title: Lighting rod: Supreme Court likely
Source: Intellectual Property Magazine. April 2014, pp. 72-74.
Summary: Lighting Ballast Control LLC v Philips Elecs N Am Co -- US Court of Appeals for the
Federal Circuit -- en banc court confirmed the rule that claim construction is an issue of law
reviewed de novo on appeal -- procedural background -- the majority decision -- concurrence -dissent and majority remarks in response.
Subject: Patent claims--case law--United States
Subject: Patent litigation--United States
SNIPER No.: 2014/00703
Author: Heymann, Britta
SNIPER Bulletin – July 2014
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Title: Limitations and legal aspects of "crowdsourcing"
Source: Journal of Intellectual Property Law and Practice. Vol. 9 No. 4, April 2014, pp. 337-340.
Summary: Crowdsourcing -- its scope and influence -- examples of use -- crisis mapping -- gaining
influence in business -- open innovation -- limitations and legal aspects -- IP rights -- rights in
creative industries -- employment and social security law -- contract law, e-commerce, data privacy
protection -- tax and liability issues -- crowdsourcing issues arise in numerous areas -- legal
assessment of the relevant risks and limitations to be conducted comprehensively -- considerable
care in relation to specific projects in view of the significant legal consequences.
Subject: Crowdsourcing
Subject: Business collaboration
SNIPER No.: 2014/00847
Author: Ohta, Tom
Title: Linking, framing and copyright: issues arising from Svensson
Source: Intellectual Property Magazine. April 2014, pp. 25-27.
Summary: Court of Justice of the European Union (CJEU) judgment in Svensson -- treatment of
linking and framing under EU copyright law -- considered the scope of protection afforded by the
'communication to the public' right -- clarified that it is permissible to link to "freely accessible"
content without the rightsholder's authorisation -- where a link circumvents access restrictions put
in place by the rightsholder, or just communicates the material to a wider audience than
contemplated by the rightsholder, this may infringe copyright -- uncertainties arising from the
Svensson judgment -- potential implications to online businesses and consumers -- what did the
CJEU mean by "freely accessible" content? -- how should the judgment be applied in the context of
links to infringing content?
Subject: Copyright infringement--case law--Europe
Subject: Electronic copyright--case law--Europe
SNIPER No.: 2014/01216
Author: FutureBrand
Title: Made in: the value of country of origin for future brands
Source: Made In: the Value of Country of Country of Origin for Future Brands. 2014.
General Note: Date of publication does not appear on the item, title was made available in 2014.
Summary: Why origin matters for banding -- redefining 'made in' -- Country of Origin perceived as
a single place of association for consumers -- differentiation that is both rational and emotional -'made in' can define a brand's tangible and intangible factors -- key research insights -- Country of
Origin reputation is stronger when it excels in multiple categories -- country brand strength does
not mean origin strength -- Australia ranked 16th in overall Country Brand Index (CBI) 2012-13
rankings -- 'made in' creates country brand value -- authenticity important.
Subject: Disclosure of origin
Subject: Geographical indicators
Subject: Brand management
SNIPER No.: 2014/01124
Author: Singh, Prithipal
SNIPER Bulletin – July 2014
Page 37 of 75
Author: Dixit, Bani
Title: The margins of discretion in Singapore
Source: Asia IP: Protecting your Intellectual Assets. Vol. 6 No. 2, February 2014, p. 43.
Abstract: Intellectual Property Office of Singapore (IPOS) -- taking stringent position regarding
procedural defaults such as attorney's delay in responding to IPos within deadlines -- recent IPOS
decision between V Hotel and Jelco Properties -- application for Restoration of Trademark
Application and Request for Extension of Time -- facts of the case -- applicant's and respondent's
submissions -- decision by Registrar to refuse restoration of the mark -- Registrar has discretionary
powers but procedural defaults and bona fide errors and delays not condoned unless applicant can
establish overall picture to warrant compassion of the Registry
Subject: Trade mark processing--Singapore
Subject: Trade marks--case law--Singapore
SNIPER No.: 2014/01215
Author: Greenspan, David
Author: Boyd, S. Gregory
Author: Purewal, Jas
Author: Datum, Matthew
Added author: World Intellectual Property Organization
Title: Mastering the game: business and legal issues for video game developers
Source: WIPO Creative Industries Booklet. No. 08, December 2013.
General Note: WIPO Publication No. 959E
Summary: Global structure of the video game industry -- changing landscape of the industry -- end
of life economics -- future consoles -- effects on game development -- role of the publisher -funding -- retail distribution -- marketing -- dealing with video game publishers -- role of the
publisher -- the publishing agreement -- intellectual property in the video game industry -- copyright
-- trade secrets -- trade marks -- patents -- rights to publicity and moral rights -- IP strategy 101 -licensing IP for video games -- major issues in licensing agreements -- music -- issues dealing with
the console platform manufacturers -- digital distribution -- mobile gaming market -- regulation of
the game industry -- data privacy -- confidentiality agreements -- common clauses in agreements.
Subject: Intellectual property management--culture and entertainment industry
Subject: Multimedia works
SNIPER No.: 2014/00979
Author: Chuah, Jern Ern
Author: Manurung, Rita
Author: Naming, Margarita
Title: Maximizing biodiversity potential through traditional knowledge documentation: a case study
Source: Journal of Intellectual Property Law and Practice. Vol. 9 No. 5, May 2014, pp. 397-402.
Summary: Strategy adopted by the state of Sarawak in Malaysia in documenting the traditional
knowledge (TK) of ethnic communities and thereby harnessing the areas biodiversity potential -the TK Documentation Programme of the Sarawak Biodiversity Centre (SBC) -- methodology of the
programme -- documentation and research on Litsea cubeba plant -- valuable results from the
Sarawak programme -- establishment of the SBC and its programme as a positive step in
SNIPER Bulletin – July 2014
Page 38 of 75
protecting indigenous IP rights -- the State Government of Sarawak is in the process of developing
an intellectual property framework which hopefully will consider the value of indigenous property
rights.
Subject: Traditional knowledge--Malaysia
Subject: Biodiversity--Malaysia
Subject: Indigenous issues in intellectual property--Malaysia
SNIPER No.: 2014/01206
Author: González, Carlos
Title: The meaning of marks in Mexico
Source: World Intellectual Property Review. January-February 2014, pp. 70.
Summary: Trade mark owners in Mexico concern over the appropriate way of marking products or
services covered by registered trade marks -- ® symbol -- trade mark owners to consider the basis
and consequences of complying, or not, with the provisions of the Mexican Industrial Property Law
(MIPL) -- proper use of marking in connection with trade marks registered with the Mexican
Institute of Industrial Property (IMPI) -- failure to mark is not illegal, but marking provides certain
benefits to titleholders.
Subject: Trade mark use--Mexico
SNIPER No.: 2014/01125
Author: Anand, Pravin
Author: Mittal, Vaishali
Title: Microsoft Corporation & Anr v. Kurapati Venkata Jagdeesh Babu & Anr
Source: Asia IP: Protecting your Intellectual Assets. Vol. 6 No. 2, February 2014, p. 44.
Summary: Microsoft declared a well-known trade mark in India -- CS (OS) 216312010 & I.A. No.
14225/2010 -- defendants trade mark application for "Microsoft Multimedia" -- Class 41 for services
in relation to educational and training purposes -- plaintiffs submitted that Microsoft is a well-known
mark across the world -- extensive evidence was filed -- punitive/exemplary damages as well as
damages on account of loss of reputation and goodwill of the plaintiffs awarded.
Subject: Famous trade marks--case law--India
SNIPER No.: 2014/00856
Author: Lunze, Anja
Author: England, Paul
Title: Mind the injunction gap
Source: Intellectual Property Magazine. April 2014, pp. 42-44.
Summary: Publication of the 16th draft of the Rules of Procedure -- Unified Patent Court (UPC) is
coming together -- industries that most rely on patents are adjusting to the challenges and
possibilities that the UPC, and the unitary patent, will present -- focus of particular controversy
continues to be the issue of bifurcation -- are fears of bifurcation well founded? -- would bifurcation
lead to an injunction gap? -- the bifurcation (Article 33(3)) decision -- why bifurcate? -- what if the
panel does bifurcate? -- bifurcation is potentially a big deal for the parties -- reasons why it should
happen much less often than feared.
Subject: Unified Patent Court
SNIPER Bulletin – July 2014
Page 39 of 75
Subject: Regional patents--Europe
SNIPER No.: 2014/01139
Author: Barrett, Gerard
Title: A mixed picture for the Emerald Isle
Source: World Intellectual Property Review. March-April 2014, pp. 32-35.
Summary: Patent filings in Ireland -- Irish filing figures fail to show the level of innovative activity -filings occurring abroad, in the US or filing Patent Cooperation Treaty or European patent
applications -- innovation depends largely on economic conditions -- trade mark filings are positive
-- role of the IP office to promote IP in Ireland -- engages with stakeholders to make sure
procedures are as effective as possible.
Subject: Patent filing--Ireland
Subject: Intellectual property systems--Ireland
SNIPER No.: 2014/01205
Author: Chew, Kherk Ying
Author: Chen, Hong Sze
Title: Monetisation of IP in Malaysia
Source: World Intellectual Property Review. January-February 2014, pp. 67.
Summary: Malaysian government actively encouraging the creation and monetisation of
intellectual property -- increased funding to oversee the creation of an IP financing scheme -- IP
Corporation of Malaysia (MyIPO) -- IP valuation courses and valuers -- amendments to the
Malaysian Industrial Designs Act 1996, came into effect on July 1, 2013 -- clarify certain rights of
owners -- place emphasis on the eligibility of registered designs to be used as collateral -- global
event to bring together key industry players, influencers, stakeholder and policy makers -- share
their best practices and experience in creating and extracting value from IP assets -- discuss the
growing interest in transforming IP assets as an alternative form of security.
Subject: Value of intellectual property--Malaysia
Subject: Intellectual property law--reform--Malaysia
SNIPER No.: 2014/01214
Author: Smith, Gordon V.
Author: Yossifov, Vladimir
Added author: World Intellectual Property Organization
Title: Monetization of copyright assets by creative enterprises
Source: WIPO Creative Industries Booklet. No. 07, August 2013.
General Note: WIPO Publication No. 955E
Summary: IP valuation -- IP rights in financial reporting -- legal issues and IP valuation practice -intellectual property audit -- form of value -- role of the audit -- cautions about taking an IP audit -review of principle evaluation methods -- IP audit and valuation as a management tool -- valuing
copyright assets and applying the principles -- IP audit and valuation checklist -- IP valuation
practice -- future trends -- benefitting from IP valuations -- maximising the value of copyright assets
Subject: Intellectual capital
SNIPER Bulletin – July 2014
Page 40 of 75
Subject: Value of intellectual property--statistics
SNIPER No.: 2014/01249
Author: McDevitt, Valerie Landrio
Author: Mendez-Hinds, Joelle
Author: Winwood, David
Author: Nijhawan, Vinit
Author: Sherer, Todd
Author: Ritter, John F.
Author: Sanberg, Paul R.
Title: More than money: the exponential impact of academic technology transfer
Source: Technology and Innovation. Vol. 16 No. 1, 2014, pp. 75-84.
Summary: Many university technology transfer offices fail to bring in enough funding through
licensing or other activities to cover their own costs let alone make money for the university -positive benefits and evolution provided by academic innovation and technology transfer -- benefits
beyond revenue generation alone -- increased opportunities for funding -- facilities establishment -international research relationships -- student success -- public benefit -- economic development -starting point for development for additional metrics to judge the success of technology transfer
offices
Subject: Technology transfer
Subject: Innovation (Technological)
Subject: Intellectual property rights
SNIPER No.: 2014/01040
Author: Banks, Christopher J.
Author: Chippey, Rollin B.
Author: Smith, Benjamin P.
Title: The "most frightening" holding of 2013?
Source: Intellectual Property Magazine. May 2014, pp. 60-62.
Summary: Court of Appeal found Japanese pharmaceutical company Asahi Kasei Pharma Corp -presented enough evidence during the trial to support the jury's findings that Actelion deliberately
interfered with the development of Asahi's drug fasudil -- fasudil would have obtained US Food and
Drug Administration (FDA) approval and succeeded in the marketplace absent Actelion's actions -background to the case -- implications -- law of interference with contract for intracorporate parties
-- the law of lost profits.
Subject: Patent litigation--United States
Subject: Patent infringement--liability--United States
SNIPER No.: 2014/01154
Author: Künzel, Jens
Title: New Designs Act in force
Source: World Intellectual Property Review. March-April 2014, p. 64.
SNIPER Bulletin – July 2014
Page 41 of 75
Summary: New Designs Act (Designgesetz-DesignG) came into force in Germany, January 2014 - replaced the previous Aesthetic Models Act (Geschmacksmustergesetz) -- contains some
innovations -- introduction of a nullity procedure before the German Patent and Trade Mark Office
(DPMA) -- DPMA previously had no experience in evaluating designs, it's role was to register them
-- remains whether practical advantages outweigh the reliable and high-quality treatment of design
validity issues by the specialised design infringement courts.
Subject: Industrial design systems--reform--Germany
SNIPER No.: 2014/01199
Author: Holme, Annelise
Title: New referrals relating to the patentability of plants
Source: World Intellectual Property Review. January-February 2014, pp. 63.
Summary: Enlarged Board of Appeal (EBA) of the European Patent Office (EPO) decision in
patentability of plants -- G2/07 and G1/08 known as the 'broccoli' and 'tomato' cases -- crossing
and selection steps excluded from patentability as being "essentially biological" within the meaning
of article 53(b) of the European Patent Convention (EPC) -- decisions of the EBA in the present
referrals will be very important for practice -- imply an important impact on the patentability of
plants and seeds.
Subject: Patentability--case law--Europe
Subject: Patentability--agriculture industry--Europe
SNIPER No.: 2014/00980
Author: Sullivan, Barbara
Author: Tuffery-Huria, Lynell
Title: New Zealand: Wai 262 report and after
Source: Journal of Intellectual Property Law and Practice. Vol. 9 No. 5, May 2014, pp. 403-410.
Summary: Indigenous intellectual property rights in New Zealand -- history of the Wai 262 claim,
the Waitangi Tribunal's report, the government's reply and other developments in response to the
report -- Wai 262 claim dealt with the ownership and use of Māori traditional knowledge, cultural
expressions, indigenous flora and fauna, and of inventions and products derived from such
sources -- government failure to comply with the duties of the Treaty of Waitangi -- the Wai 262
claim -- the tribunal report -- recommendations -- reactions of the Government of New Zealand -the Toi Iho scheme -- Ka Mate haka -- science and matauranga Māori (Māori knowledge) -- Maori
knowledge has received valuable publicity.
Subject: Traditional cultural expressions--New Zealand
Subject: Traditional knowledge--New Zealand
Subject: Indigenous issues in intellectual property--New Zealand
SNIPER No.: 2014/01142
Author: Markuşev, Denisa
Title: No country for old trademarks
Source: World Intellectual Property Review. March-April 2014, pp. 44-45.
Summary: Seniority in Romania -- seniority concept allows for trademarks in individual EU
countries that correspond to a Community Trademark (CTM) to be embedded in the CTM record
SNIPER Bulletin – July 2014
Page 42 of 75
so that the national marks can be allowed to lapse without any loss of protection -- now established
in Romanian trade mark law -- recent court decision suggests some confusion about its application
nationally -- refused in Bucharest Court of Appeal, decision 59A/18.02.2010 -- divergent national
office point of view -- denial of seniority rights in Romania at the national level creates difficulties
for trademark owners.
Subject: Community Trade Mark
Subject: Trade mark use--Romania
Subject: Trade mark systems--Romania
SNIPER No.: 2014/00701
Author: Naser, Mohammad Amin
Author: Hammouri, Tariq M.
Title: The notion of famous, well-known trade marks and marks with repute compared
Source: Journal of Intellectual Property Law and Practice. Vol. 9 No. 4, April 2014, pp. 312-321.
Summary: Dilution protection of trade marks and the scope of protection this affords to the owners
-- standard of fame, renown, or repute that these marks should enjoy before they qualify for the
extra protection -- criteria for protection -- example of three countries: United States, United
Kingdom and Jordan -- despite differences in the notions adopted by developed countries, the
interests of their trade mark owners are considered -- Jordan, as an example of a developing
country, in relation to its notion for well-known marks, considers the interests of foreign trade mark
owners, probably those in the USA -- imposes hardship over Jordanian trade marks when being
considered as well-known -- well-known trade marks in international treaties -- famous trade marks
in the USA -- marks with reputation in the UK -- well-known trade marks in Jordan.
Subject: Famous trade marks--United States
Subject: Famous trade marks--Jordan
Subject: Famous trade marks--United Kingdom
SNIPER No.: 2014/01136
Title: NPEs: cartoon villains or merely licensing agents?
Source: World Intellectual Property Review. March-April 2014, pp. 20-23.
Summary: Intellectual Ventures (IV) -- non-practicing entity focussing on buying patents and
aggregating them into a larger patent portfolio -- licensing these parties to third parties -- business
model under increasing scrutiny in the United States (U.S) -- use of litigation -- settlements -several bills seeking to restrict "patent trolls" in the U.S. -- antitroll legislation -- Interview with Russ
Merbeth, IV's Counsel, claims the bill is not the right solution to combating frivolous legislation -marketing NPE's as the enemy -- welcomes debate -- cites lack of credible information on the
number of NPE patent lawsuits in the U.S.
Subject: Intellectual Ventures
Subject: Non-practising entities--United States
Subject: Patent litigation--United States
SNIPER No.: 2014/00860
Author: Smith, Michael C.
Title: On the right track
SNIPER Bulletin – July 2014
Page 43 of 75
Source: Intellectual Property Magazine. April 2014, pp. 51-52.
Summary: United States District Court for the Eastern District of Texas -- new 'Track B' order
includes several patent litigation provisions that reflect current proposals under consideration by
US lawmakers -- potentially faster, less expensive means of resolving patent claims -- latest
example that the US court system is best suited to reform the way patent litigation is handled in the
nation's courtrooms -- 'Track A' history -- the new 'Track B' -- good faith damages estimate -- 'Track
B' in practice.
Subject: Patent litigation--reform--United States
Subject: Damages--United States
SNIPER No.: 2014/01118
Author: Shuai, Amanda
Title: One country, three systems
Source: Asia IP: Protecting your Intellectual Assets. Vol. 6 No. 2, February 2014, pp. 9-23.
Summary: Guandong located next to China's special administrative regions, Hong Kong and
Macau -- cultural and economic interaction among these areas -- how IP lawyers collaborate in
these areas which each retain their own legal systems -- cross-border IP practice -- role each
jurisdiction plays -- cross-border infringement -- IP strategy for cross-border protection -- rights
application and registration -- enforcement challenges -- recognizing cross-border court decisions - client's expectations -- different procedures and requirements in each jurisdiction for trade mark
registration
Subject: Intellectual property--China
Subject: Intellectual property--Hong Kong
Subject: Intellectual property--Macau (China : Special Administrative Region)
SNIPER No.: 2014/01027
Author: White, Catherine
Title: One sign at a time
Source: Intellectual Property Magazine. May 2014, p. 36.
Summary: European Union Commission negotiating Free Trade Agreements in order to expand
EU Geographical Indication (GI) protection further afield -- harmonisation concerning GIs in the EU
for certain product categories -- no EU-wide sui generis GI system available for non-agricultural
goods -- 'Geographical indications protection for non-agricultural products in the internal market'
study -- aimed at aiding the Commission in determining whether or not a unitary system of
protection for non-agricultural GI products at an EU level should be established -- new legislation
would result in a major overhaul of the current system -- more precise rules possibly proving
burdensome on different stakeholders -- countries will have to overcome divergent approaches to
legislation -- GI protection through trade agreements.
Subject: Geographical indicators--Europe
Subject: Harmonisation of laws--Europe
SNIPER No.: 2014/00875
Author: Adediran, Peter
Title: Outsmarting the opponent?
SNIPER Bulletin – July 2014
Page 44 of 75
Source: Intellectual Property Magazine. April 2014, pp. 80-82.
Summary: Google and Samsung reached a patent cross-licensing deal -- Samsung and Ericsson
agreed $US650m to settle any further patent disputes between them in the "smartphone patent
wars" -- cross-licensing deals driven by a theoretical shift from patent litigation to cooperation -temporary realistic solutions to gain a tactical end -- different stakeholders -- marketplace in which
they operate -- current size and make-up of the smartphone mobile market -- growth potential of
mobile -- a patent is a right to exclude anyone else from using the invention -- corporations that
both hold patents to technology that the other needs can be resolved by patent cross-licensing.
Subject: Intellectual property licensing
Subject: Patent litigation
SNIPER No.: 2014/00861
Author: Brazell, Lorna
Title: The overall impression of registered design rights
Source: Intellectual Property Magazine. April 2014, pp. 53-54.
Summary: Community Registered Design (CRD) introduced in 2001 -- 2011 the first CRD dispute
reached the Court of Justice of the European Union (CJEU) -- trickle of cases is accumulating into
a body of decisions giving practical guidance as to how the system is really going to work -registration does not include any substantive examination of an application -- onus is on interested
third parties to challenge any registrations to which they object -- CJEU decisions to date have all
emerged from challenges brought in front of the Invalidity Board at the Office for Harmonisation in
the Internal Market (OHIM) -- decisions illuminate the test for infringement of a CRD -- "informed
user" -- "overall impression".
Subject: Industrial designs--case law--Europe
Subject: Industrial design registrability--Europe
SNIPER No.: 2014/01148
Author: Licks, Otto B.
Author: Cotia, Maria Luiza
Title: The patent backlog for agrichemical inventions
Source: World Intellectual Property Review. March-April 2014, p. 58.
Summary: Brazil the largest consumer of agrichemicals in the world -- minimum standards of
protection set out in the Agreement on Trade-Related Aspects of Intellectual Property Rights
(TRIPS agreement) -- agrichemical-related inventions covering substances, matters or products
obtained by chemical means or processes were considered liable for protection as the Patent
Statute allowed patent protection in all fields of technology in accordance with TRIPS agreement -backlog at the Brazilian Patent and Trademark Office (INPI) -- low number of patents granted
versus applications filed -- agrichemical-related inventions are faced with the strict position adopted
by the INPI when examining patent applications related to the combination of two or more known
active agrichemical ingredients.
Subject: Instituto Nacional da Propriedade Industrial
Subject: Patent applications--biotechnology industry--Brazil
SNIPER No.: 2014/01213
Author: Webster, Elizabeth, 1957-
SNIPER Bulletin – July 2014
Page 45 of 75
Author: Jensen, Paul H.
Author: Palangkaraya, Alfons
Title: Patent examination outcomes and the national treatment principle
Source: RAND Journal of Economics. Vol. 45, No. 2, Summer 2014, pp. 449-469.
Summary: Principle in international patent treaties -- equal treatment should be provided to
inventors regardless of nationality -- whether this principle upheld in practice -- analyse whether
patent examination outcomes at the European and Japanese patent offices vary by inventor
nationality and technology area -- used a matched sample of 47,947 patent applications -- finding
that domestic inventors have higher likelihood of obtaining a patent grant than foreign inventors -positive domestic inventor effect is stronger in areas of technological specialisation in the domestic
economy
Subject: Patent examination
Subject: Patent granting
SNIPER No.: 2014/01049
Author: Pan, Susan Perng
Title: Patent exhaustion: stopping the enemy at the gate
Source: Intellectual Property Magazine. May 2014, pp. 82-83.
Summary: Doctrine of "exhaustion" in patents stem from a common policy concern, to permit the
free flow of trade -- once a rightsholder sells an article protected by the intellectual property (IP),
the rightsholder cannot later assert infringement against a resale of that same article -- foreign sale
of the copyrighted article will trigger the 'first sale' doctrine, thereby allowing import of that article
into the US -- Supreme Court has declined to preside over the same issue for patents -- US patent
is only exhausted by an authorised US sale, despite an authorised sale abroad -- Lifescan
Scotland, Ltd v Shasta Tech LLC -- patent exhaustion is triggered by an unconditional sale -conditions on a sale can also be used to avoid the exhaustion defence.
Subject: Parallel importing--United States
Subject: Patent exhaustion--United States
Subject: Copyright exhaustion--United States
SNIPER No.: 2014/00969
Author: Keller, Paul B.
Author: Ward, Annsley Merelle
Title: Patent litigants beware: awards of attorneys' fees just got easier with Federal Circuit's
Kilopass decision
Source: Journal of Intellectual Property Law and Practice. Vol. 9 No. 5, May 2014, pp. 353-355.
Summary: Court of Appeals for the Federal Circuit (CAFC) decision to clarify the requirements for
fee-shifting under 35 USC s 285 indicates a desire to discourage unsupported allegations and
gamesmanship in patent infringement cases -- Kilopass Technology, Inc v Sidense Corporation -under US law there is no presumption that attorneys' fees of the winning party will be paid for by
the losing party -- under 35 USC s 285 District Court can shift the legal costs to the losing party
under exceptional circumstances -- facts of case -- non-volatile memory (NVM) -- analysis of
decision -- alleged infringer needs evidence to show that the patentee's assertions were
'objectively baseless' -- practical significance.
Subject: Lawyers--costs--United States
SNIPER Bulletin – July 2014
Page 46 of 75
Subject: Infringement remedies--case law--United States
SNIPER No.: 2014/01165
Author: Sutton, Paul J., 1939Title: The patent pay-for-delay-scam
Source: World Intellectual Property Review. March-April 2014, p. 75.
Summary: Drug manufacturer's engaged in pay-for-delay' patent settlements designed to stifle
competition -- generic drug competition is effectively blocked -- US Federal Trade Commission
(FTC) estimates anti-competitive arrangements result in significantly higher annual drug costs -whether pay-for-delay tactics violate US antitrust laws is a matter currently before the courts -- risk
associated with the brand name company commencing a patent-infringement action against the
generic -- how pay-for-delay works.
Subject: Competition (Economics)--pharmaceutical industry--United States
Subject: Patent litigation--pharmaceutical industry--United States
SNIPER No.: 2014/00398
Title: Patent survey 2014
Source: Managing Intellectual Property. No. 236, February 2014, pp. 38-107.
General Note: First article in a series of three. See also: 2014/000801 for Trade mark survey
2014; 2014/01061 for Copyright survey 2014
Summary: Ranking of the leading patent firms around the world -- firms are ranked in tiers in each
jurisdiction -- separate rate tables for prosecution and contentious work -- research was conducted,
between September 2013 and January 2014.
Subject: Intellectual property industry--statistics
Subject: Patent attorneys--statistics
SNIPER No.: 2014/01029
Author: Whitfield, Tim
Author: Gamsa, Adam
Title: The patentability of software: transatlantic comparisons
Source: Intellectual Property Magazine. May 2014, pp. 37-38.
Summary: US Supreme Court recently heard oral arguments in the case of Alice Corp v CLS
Bank Intl -- expected to deliver its judgment shortly -- attracted considerable interest from the
software industry -- potential for the Supreme Court to provide new guidance on the patentability of
inventions realised in software -- excluded subject matter in England and Europe -- the future of
software patents and the Unified Patent Court (UPC).
Subject: Computer-related inventions--patentability
Subject: Patentability--law and legislation
SNIPER No.: 2014/01211
Author: Sutton, Paul J., 1939Title: Patent-FTO caveats
SNIPER Bulletin – July 2014
Page 47 of 75
Source: World Intellectual Property Review. January-February 2014, pp. 75.
Summary: Freedom-to-operate (FTO) opinions for U.S. patents -- whether commercialising a
product will infringe others valid intellectual property rights -- need to avoid and mitigate the risks
associated with patent infringement litigation -- cost of a time consuming FTO opinion can be
considerable -- not unusual for start-ups to forgo the FTO route altogether due to cost -- start-up
companies must appreciate the potential risks of entering the marketplace with a product which
has not been cleared of the potential threat of infringement claims.
Subject: Patent systems--United States
Subject: Patents--management
SNIPER No.: 2014/01110
Author: Mercurio, Bryan
Author: Kim, Daria
Title: Patently lacking: a call for systematic review of pharmaceutical law and policy: a case study
of Hong Kong
Source: Asian Journal of WTO & International Health Law and Policy. Vol. 9 No. 1, March 2014,
pp. 63-123.
General Note: Published on Social Science Research Network (SSRN).
Summary: Pharmaceutical laws and policy of Hong Kong -- framework approach to identify the
linkages between pharmaceutical patents and policy objectives -- areas of public health -- medical
innovation -- pharmaceutical industry development -- pharmaceutical patent regime -- reveals
contradictions in the way in which the provisions are implemented within Hong Kong's
pharmaceutical patent system -- importance of clear policy objectives -- perspectives and
considerations are of interest and applicable to other jurisdictions.
Subject: Intellectual property systems--policy--Hong Kong
Subject: Patent systems--case studies--Hong Kong
SNIPER No.: 2014/01147
Author: Kalutkiewicz, Michael J.
Author: Ehman, Richard L.
Title: Patents as proxies: NIH hubs of innovation
Source: Nature Biotechnology. Vol. 32 No. 4, June 2014, pp. 536-537.
Summary: Rate of invention as a valuable metric for identifying strategic R&D investments to
enhance knowledge creation, translational value and economic potential from NIH-supported
research
Subject: Research and development--United States
Subject: Innovation (Technological)--United States
SNIPER No.: 2014/01143
Author: Shamesh, J.
Title: Personal data protection in Malaysia
Source: World Intellectual Property Review. March-April 2014, pp. 46-47.
SNIPER Bulletin – July 2014
Page 48 of 75
Summary: Personal Data Protection Act (PDPA) in Malaysia -- enacted to regulate the processing
of personal data in commercial transactions -- seven broad principles of the PDPA -- includes
general principle -- notice and choice principle -- disclosure principle -- security principle -retention principle -- data integrity principle -- access principle -- suggests room for improvement in
the relationship between employer and employee -- also in the context of closed circuit TV
surveillance.
Subject: Malaysia. Personal Data Protection Act 2010
Subject: Privacy--law and legislation--Malaysia
SNIPER No.: 2014/00694
Author: Hayes, Melanie
Title: Piracy in Canada: bad faith and poor conduct can have a large impact on damages
Source: Journal of Intellectual Property Law and Practice. Vol. 9 No. 4, April 2014, pp. 271-272.
Summary: Federal Court of Canada default judgment -- Twentieth Century Fox Film Corporation v
Nicholas Hernandez, John Doe and Jane Doe (Federal Court of Canada, T-1618-13) -- large sum
of damages awarded against a pirate who rebroadcast episodes of The Simpsons and Family Guy
online -- infringed copyrights by Twentieth Century Fox along several steps -- copying the episodes
from television broadcasts or other media -- copying episodes into a computer system -- uploading
unauthorised copies to computer servers -- making links to the servers that contain the authorised
copies -- communicating the programmes to the public in Canada and elsewhere -- legal context -practical significance.
Subject: Copyright infringement--case law--Canada
Subject: Carriage service providers--case law--Canada
SNIPER No.: 2014/01105
Author: Liberman, Jonathan
Title: Plainly constitutional: the upholding of plain tobacco packaging by the High Court of Australia
Source: American Journal of Law and Medicine. Vol. 39 No. 2-3, 2013, pp. 361-381.
Summary: Tobacco plain packaging -- Australia -- requirements under the Tobacco Plain
Packaging Act 2001 and Tobacco Plain Packaging Regulations 2011 -- objects and rationale of the
Act -- inter-relationships with Trade Marks Act 1995 and Designs Act 2006 -- constitutionality
provisions -- High Court constitutional challenge by British American Tobacco (BAT), Imperial
Tobacco, Japan Tobacco (JT) and Philip Morris -- majority High Court judgment -- dissenting
judgment by Justice Heydon -- judgment on constitutionality, not the merits of plain packaging -significance of the WHO Framework Convention on Tobacco Control (FCTC).
Subject: WHO Framework Convention on Tobacco Control (2005 February 27)
Subject: Australia. Tobacco Plain Packaging Act (2012)
Subject: Constitutional law--manufacturing and processing industry--Australia
Subject: Trade dress--manufacturing and processing industry--Australia
Subject: Trade marks--manufacturing and processing industry--Australia
Subject: Manufacturing and processing industry--case law--Australia
SNIPER No.: 2014/00852
Author: Powell, Nikki
SNIPER Bulletin – July 2014
Page 49 of 75
Title: Practical matters of the UPC
Source: Intellectual Property Magazine. April 2014, pp. 36-37.
Summary: A bill authorising France's ratification of the Agreement on a Unified Patent Court
(UPC) was adopted on 13 February 2014 -- France is one of three mandatory ratification countries
-- another important step in progress towards the coming into existence of the UPC -- new panEuropean patent system, which includes a new European unitary patent -- location of the central
divisions -- divisions of the court will need to be set up, along with a registry and IT systems -judges will need to be appointed and trained -- court fees need to be agreed -- Rules of Procedure
need to be finalised -- patentees will be able to opt their old style European patents out of the
jurisdiction of the UPC -- important factors to consider in deciding whether or not to opt out -procedural matters covered by the rules that are potentially a concern for patentees and
prospective court users -- bifurcation -- injunctions -- language -- procedural appeals -- what is
next?
Subject: Unified Patent Court
Subject: Regional patents--Europe
SNIPER No.: 2014/01203
Author: Lantos, Michael
Title: Preventing later infringement
Source: World Intellectual Property Review. January-February 2014, pp. 67.
Summary: Metropolitan Court in Hungary ruled on a trade mark infringement of a pharmaceutical
company -- injunction issued prohibiting future use -- obtained a marketing authorisation (MA) from
the Hungarian Regulatory Authority for an over-the-counter painkiller and anti-inflammatory drug -new decision will have broad significance for trademark jurisprudence in Hungary.
Subject: Patent extension--pharmaceutical industry--Hungary
Subject: Pharmaceutical industry--case law--Hungary
SNIPER No.: 2014/01137
Title: Protecting light bulbs and jet engines
Source: World Intellectual Property Review. March-April 2014, pp. 24-27.
Summary: How General Electric (GE) protects and values it's IP -- interview with General Electric
Chief IP Counsel Carl Horton -- how to detect infringement and when/if to take action – company
involved in industries such as transportation, healthcare and power -- debates whether traditional
forms of protection, such as patents remain the most viable form of protection -- licensing -- wind
turbines an example when the patent system has benefitted GE -- use of digital crowdsourcing
capabilities.
Subject: General Electric Company
Subject: Value of intellectual property
Subject: Environmental issues in intellectual property
Subject: Innovation (Technological)
SNIPER No.: 2014/01091
Author: Horne, Malian
Author: Matheson, Julia Anne
SNIPER Bulletin – July 2014
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Author: Lewis, Marina A.
Author: Dodd, Poona
Author: Puri, Omesh
Author: Loffler, Oliver
Author: Abrar, Sacha
Author: Sammon, Matthew
Title: Protecting your brand in the Web 2.0 environment
Source: World Trademark Review. No. 49, June-July 2014, pp. 98-105.
Summary: Web 2.0 environment -- allows users to interact and collaborate with each other -active participants in the generation of online content -- trade mark, legal and brand reputation
challenges posed in this environment more complicated -- need for regular, clear strategic advice -practical strategies for social media engagement, protection and enforcement.
Subject: User-generated content
Subject: Brand management
SNIPER No.: 2014/01038
Author: Harris, Jeremy
Author: Nutgall, Emily
Title: Protecting your digital assets has never been more important
Source: Intellectual Property Magazine. May 2014, pp. 55-56.
Summary: Misappropriation and misuse of digital assets -- Hargreaves review of intellectual
property (IP) -- recommendations designed to ensure that the UK has an IP framework best suited
to supporting innovation and promoting economic growth in the digital age -- UK government is
pushing through new legislation relating to copyright law -- rise in the importance of non-physical
assets -- risk of theft or unlawful exploitation has also increased -- different types of digital
emergency -- distinct approach -- reaction -- investigation -- strategy -- remedies will depend on the
nature of the digital asset emergency and, specifically, the legal cause of action that arises for the
business.
Subject: Intellectual property--information technology industry
Subject: Intellectual property enforcement
SNIPER No.: 2014/01044
Author: Sharma, Kamal
Author: Phil, Maiden
Title: Protection against lookalikes for Procter & Gamble
Source: Intellectual Property Magazine. May 2014, pp. 70-71.
Summary: Fast moving consumer goods (FMCG) companies -- keeping a close vigil on markets to
prevent 'lookalikes' of their products being peddled freely -- quick to seek intervention from the
courts to stem violation of their intellectual property (IP) rights -- including common law rights which
lie in the trade dress/get up of their products -- trade dress refers to the total image and overall
appearance of a product or its packaging -- Proctor & Gamble approached the High Court of
Bombay to restrain Mumbai-based entities from infringing as well as passing off its trade marks
and copyright in relation to the detergent brand TIDE -- in particular its trade dress/packaging for
SNIPER Bulletin – July 2014
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the product -- High Court's decision -- law with regard to trade dress is less explicitly set out in
Indian statutes.
Subject: Trade dress--case law--India
Subject: Trade dress--law and legislation--India
SNIPER No.: 2014/00978
Author: Arleen, Christian P.
Title: Protection of traditional cultural expressions: an EU perspective
Source: Journal of Intellectual Property Law and Practice. Vol. 9 No. 5, May 2014, pp. 389-396.
Summary: Protection of traditional cultural expressions (TCEs) in the context of European Union
(EU) intellectual property law -- Article 31 United Nations Declaration on the Rights of Indigenous
Peoples -- Indigenous peoples of the EU -- the Sámi and Basque as distinctive examples of
indigenous peoples in the EU -- copyright protection and the Sámi Join -- trade mark protection
and the Basque Labour -- inadequate protection of TCEs under intellectual property law -- little
political consensus -- need for a binding international treaty -- a realistic step towards an
international agreement would be a regional EU agreement.
Subject: Traditional cultural expressions--law and legislation--Europe
Subject: Traditional cultural expressions
Subject: Traditional knowledge--Europe
Subject: Indigenous issues in intellectual property--Europe
SNIPER No.: 2014/00859
Author: Fearon, Graeme
Title: Reaping the benefits
Source: Intellectual Property Magazine. April 2014, p. 50.
Summary: Plant variety right (PVR) -- one-size-fits-all solution on a multitude of differing interests - results in a measure of discontent, and even injustice, as not all players are equally suited to the
game at hand -- UK horticultural sector, comprises a large number of small-scale, independent
breeders and plant nursery owners -- at least a significant minority of UK and Community PVRs for
ornamental plants are granted to small and medium sized enterprises (SMEs) and individuals -these are markedly less able than their larger competitors to exploit or benefit from the PVR
system, whether as proprietors or licensees -- reasons are not clear -- may just be down to market
forces -- PVR proprietors, large and small, are unable or unwilling to deal efficiently with small
customers -- paying a royalty can be prohibitive -- small traders effectively excluded or sidelined -the market is rendered illiquid and inefficient -- possible solution -- make small-scale licences
widely and easily available, remitting royalties via a self-funding, centralised collecting society.
Subject: Plant breeder's rights
Subject: Copyright licensing societies
SNIPER No.: 2014/00866
Author: Coldham, John
Title: Registered design ruling reversed
Source: Intellectual Property Magazine. April 2014, pp. 62-63.
SNIPER Bulletin – July 2014
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Summary: Magmatic Ltd v PMS International Ltd -- England and Wales Court of Appeal -infringement of a Community registered design (CRD) -- dispute was about ride-on children's
suitcases: PMS' 'Kiddee Case', designed as a cheaper version of Magmatic's 'Trunki' range -- PMS
argued it had not infringed Magmatic's CRD -- did not appeal Justice Arnold's other finding that it
infringed certain UK unregistered design rights owned by Magmatic -- re-assessment by the Court
of Appeal -- errors made by the trial judge -- taking account of surface decoration -- did not take
colour contrasts in the registered design into account -- why this case is of interest to intellectual
property (IP) practitioners -- the designs in question.
Subject: Industrial designs--case law--United Kingdom
Subject: Industrial design infringement--United Kingdom
SNIPER No.: 2014/01108
Author: Sukhumi, Neel U.
Title: Regulatory monopoly and differential pricing in the market for patents
Source: Regulatory Monopoly and Differential Pricing in the Market for Patents. 26 March 2014.
General Note: Published on Social Science Research Network (SSRN).
General Note: Forthcoming in Washington and Lee Law Review.
Summary: Monopoly of the U.S. Patent and Trademark Office (PTO) over the granting of patents - insights from both neoclassical and behavioural economics explains how regulatory monopolies
like the PTO can enhance social welfare via differential pricing -- charging regulated entities
differing fees based on their willingness or ability to pay -- empirical and legal developments have
made differential patent pricing possible -- patent reform (the America Invents Act of 2011)
provides the legal basis for the PTO to conduct differential pricing.
Subject: United States. Patent and Trademark Office
Subject: Innovation (Technological)--economics
Subject: Intellectual property systems--economics
Subject: Competition (Economics)--United States
SNIPER No.: 2014/00451
Author: Geiger, Christophe
Title: Rethinking the enforcement of intellectual property rights at international level
Source: Beldiman, Dana (ed.), Access to Information and Knowledge: 21st Century Challenges in
Intellectual Property and Knowledge Governance. Cheltenham, U.K.: Edward Elgar, 2013. pp. 284298.
Summary: Enforcement of intellectual property rights -- Anti-Counterfeiting Trade Agreement
(ACTA) -- context of the anti-counterfeiting trade agreement -- aim of ACTA is global -- concerns
the world economy not just the economies of the signatory countries -- contents of the anticounterfeiting trade agreement -- objects to secret negotiation of the future of intellectual property
law between a few like-minded countries -- a bad method, no guarantee of success -- undermines
the credibility of multilateralism in the field of intellectual property law.
Subject: Anti-Counterfeiting Trade Agreement
Subject: Intellectual property law
SNIPER No.: 2014/01068
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Author: Arrowsmith, Peter
Title: A review of EPO statistics
Source: CIPA: the journal, incorporating the 'Transactions', of the Chartered Institute of Patent
Agents. Vol. 43 No. 4, April 2014, pp. 226-227.
Summary: European Patent Office released its annual report -- another record year for the office -all-time high in the number of filings and a 2.8% Increase on the 2012 figures -- create a positive
impression about the success of the European patent system -- article explores the underlying data
for these statistics -- numbers of applications -- PCT applications entering the European phase -applications per million inhabitants -- reflections on interpreting the statistics.
Subject: European Patent Office--statistics
Subject: Intellectual property offices--Europe
SNIPER No.: 2014/01048
Author: Shieh, Jeffrey
Title: The rise of IP portals
Source: Intellectual Property Magazine. May 2014, pp. 80-81.
Summary: Intellectual property (IP) industry is seeing a sharp rise in specialist IP service
companies -- focus on specific steps of the patent process -- "IP portals", offering cloud-based
technology and streamlined backend systems to lower clients' costs, while increasing transparency
and efficiency -- factors driving IP portals -- economic downturn -- applicants are taking more
control of their foreign filing -- historical lack of transparency -- ease of use -- how should law firms
respond? -- increasing proactivity in taking control of legal fees -- switching over to non-law firm
providers for foreign patent filings -- without some cooperation with IP portals, firms risk losing
certain revenue streams --what portals can do
Subject: Patent fees
Subject: Patent filing
SNIPER No.: 2014/01138
Title: A saving grace
Source: World Intellectual Property Review. March-April 2014, pp. 28-31.
Summary: Meeting in 2011 of seven patent offices to discuss harmonisation of the patent system - "Tegernsee discussions" -- explanation of the grace period -- offices agreed that implementation
of a grace period was a necessity -- grace period supported by the US but the concept generally
not supported in Europe -- consultation feedback of intellectual property offices -- if approved, the
Tegernsee plan would culminate in many offices adopting the grace period -- two major countries,
South Korea and China, were not at the talks --- members of the IP5, world's more influential IP
nations -- as legislation is needed, implementation is still some time away.
Subject: Harmonisation of laws
Subject: Intellectual property law--harmonisation
SNIPER No.: 2014/01208
Author: Coertzen, Mitzi
Title: Securing non-infringement declarations
Source: World Intellectual Property Review. January-February 2014, pp. 72.
SNIPER Bulletin – July 2014
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Summary: Camworth Technologies Ltd v Videx Wire Products (Pty) Ltd decision -- Supreme Court
of Appeal heard an appeal from the Court of the Commissioner of Patents, Johannesburg, where
the respondent, Videx, had successfully obtained a declaration of non-infringement in terms of
Section 69(1) of the Patents Act -- conclusions of the Commissioner upheld -- Videx pot cannot be
said to infringe the appellant's patent -- both devices might seek to achieve the same result, the
inflating mechanism of the Videx pot is designed to straighten upon inflation while that of the patent
service to shallow the socket -- essence of the invention is different.
Subject: Patent infringement--case law--South Africa
SNIPER No.: 2014/01084
Author: Hu, Gang
Author: Jiang, Lihua
Title: Setting a precedent with anti-dilution protection
Source: World Trademark Review. No. 49, June-July 2014, pp. 74-75.
Summary: Chinese high court set a precedent focusing on principles of anti-dilution in a case
involving the protection of well-known marks -- China offers more protection to marks that have
been officially designated as well known -- practice is not always favourable to foreign rights
holders -- domestic companies try to have trade marks recognised as well known for advertising
and promotional purposes, rather than for reasons of legal protection -- hopes that the new
Trademark Law will deter this practice -- Beijing High Court ruling in Sheraton -- judgement shows
that the Beijing High Court is focusing on anti-dilution when it comes to protecting well-known
marks -- evidence of well-known status -- reduce the burden of proof that is needed to demonstrate
well-known status of marks.
Subject: Trade mark dilution--case law--China
Subject: Famous trade marks--China
SNIPER No.: 2014/00864
Author: Lim, Christina
Title: Singapore: cultivating an IP-savvy generation
Source: Intellectual Property Magazine. April 2014, p. 58.
Summary: Intellectual Property Office of Singapore (IPOS) -- commitment towards cultivating an
intellectual property (IP) savvy generation -- national movement towards IP awareness and respect
-- launched an 'IP Expedition' programme aimed at young, school going children -- IPOS has
collaborated with the Ministry of Education in Singapore to disseminate IP activity booklets -designed to actively engage youths in the creative process -- allow them a better appreciation of
the hard work and effort put into the creation of original works, and the importance of protecting
one's IP -- key event is World IP Day -- IPOS is also working closely with a pool of like-minded and
established IP creators from Singapore's creative industry.
Subject: Intellectual property education--Singapore
Subject: Intellectual property awareness--Singapore
SNIPER No.: 2014/01155
Author: Lantos, Michael
Title: Some thoughts on certification marks
Source: World Intellectual Property Review. March-April 2014, p. 65.
SNIPER Bulletin – July 2014
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Summary: Filing of certification marks in Hungary allowable under trade mark law -- Hungarian
trade mark protection can be obtained three ways of which the national route is only one option -Madrid system is very different from the Patent Cooperation Treaty (PCT) for patent applications -PCT system offers a choice between different kinds of protection in each country -- problem area
concerning certification marks is that the Community Trademark (CTM) system allows for
Collective Community trademarks (CCTMs) but not yet certification trade marks.
Subject: Certification trade marks--Hungary
SNIPER No.: 2014/00863
Author: O'Sullivan, Nina
Title: Sporting databases: winners and losers
Source: Intellectual Property Magazine. April 2014, pp. 56-57.
Summary: Decisions interpreting the Database Directive -- cases brought by Football Dataco
(FDC) -- considered subsistence (and infringement) of database right and copyright in a range of
sporting event data -- law as to subsistence of rights in these databases now appears settled -issues remain, with an outstanding appeal to the Supreme Court in the 'live data' case -- focusing
on infringement by website users and website operators' joint liability with their customers -Database Directive (96/9EC) -- no database right in football fixture lists and racing database -- no
copyright in football fixture lists -- database right in live data -- liability of website operators.
Subject: Database rights--tourism and recreation industry--Europe
Subject: Intellectual property infringement--liability--Europe
SNIPER No.: 2014/01059
Author: Leung, Peter
Title: Sridevan responds to critics of IPAB
Source: Managing Intellectual Property. No. 238, April 2014, p. 44.
Summary: Sridevan, the former chairperson of India's Intellectual Property Appellate Board (IPAB)
-- US Food and Drug Administration (FDA) had been inspecting the facilities of several Indian
generic drug manufacturers and requiring that those selling in the US abide by its safety
regulations -- enforcement crackdown has drawn criticism in India -- Sridevan said that the FDA is
entirely within its rights to do so -- emphasised that she and other judges who ruled on the various
cases made decisions based on the rule of law -- explained her finding in the matter involving
Roche's Pegasus drug -- explained that India's Patents Act does not have a presumption of validity
for granted patents -- accusation from critics that India's intellectual property laws are arbitrary and
unfair to inventors -- Sridevan argued that those who say this fail to give due credit to those
applying the laws.
Subject: Pharmaceutical industry--India
Subject: Patents--law and legislation--India
SNIPER No.: 2014/01028
Author: Díaz Alaminos, Bárbara
Author: Oker-Blom, Max, 1948Title: Stopping fakes in their tracks
Source: Intellectual Property Magazine. May 2014, pp. 34-35.
SNIPER Bulletin – July 2014
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Summary: Goods in transit -- EU provisions under which customs are enabled to stop goods in
transit infringing intellectual property (IP) rights -- Union Customs Code, Border Measures
Regulation and the Community Trade Mark Regulation and Trade Mark Directive -- trade mark
legislative package and relevant case law -- community customs code -- Philips/Nokia ruling -detention of goods in transit -- conflict of generic medicines -- suggested amendments to the
European Commission's proposals for the trade mark Regulation and Directive -- approved in a
first reading by the European Parliament.
Subject: Intellectual property infringement--case law--Europe
Subject: Customs--law and legislation
SNIPER No.: 2014/00390
Author: Talbot-Ponsonby, Daniel
Author: Blake, Stephen
Author: Pediani, Steven
Title: A strategy for the bigger, simpler PPH system
Source: Managing Intellectual Property. No. 236, February 2014, pp. 16-19.
Summary: Patent prosecution highway (PPH) system for accelerated prosecution of patent
applications between different IP offices is becoming more popular -- two new international
systems will simplify a previously complicated network of bilateral agreements -- many patent
owners stand to benefit, with PPH applications generally more likely to be granted, and quicker -possible to set out a general PPH strategy, including focusing on the PCT, the new IP5 PPH or
GPPH programmes -- where possible selecting the EPO as search authority.
Subject: Patent processing--procedure--Europe
Subject: Patent examination--Europe
SNIPER No.: 2014/00844
Author: Phillips, Nick
Title: Strong ambition
Source: Intellectual Property Magazine. April 2014, pp. 20-21.
Summary: Directive on Collective Management of Copyright and Related Rights and MultiTerritorial Licensing of Rights in Musical Works for Online -- two main aims of The Directive -concerns have historically been raised in some quarters about the management and transparency
of some copyright collective management organisations (CMOs) -- previous drafts of the Directive
have met with some criticism -- representation, management and organisation -- management of
rights revenue -- transparency and reporting -- distribution of amounts due to rightsholders -provisions on multi-territorial licensing.
Subject: Copyright licensing societies--law and legislation--Europe
Subject: Intellectual property licensing--Europe
SNIPER No.: 2014/01212
Author: Bennett, Barbara
Added author: World Intellectual Property Organization.
Title: Study on accession to the Madrid system for the international registration of marks
SNIPER Bulletin – July 2014
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Source: Study on Accession to the Madrid System for the International Registration of Marks.
2014
General Note: WIPO Publication No. 954E.
General Note: Project funded by the Korea Funds-in-Trust.
General Note: Year of publication does not appear on item, title was made available in 2014.
Summary: Objectives of the study -- routes for protection of marks in export markets -- Paris
Convention for the Protection of Intellectual Property -- Madrid System for the International
Registration of Marks -- use of the Madrid system -- path towards accession to the Madrid system - experiences of countries in the study -- Mongolia -- Republic of Korea -- Singapore -- Turkey -Viet Nam -- challenges and constraints experiences in accession and implementation -- operating
under the Madrid System -- stakeholders views on the way forward and it's challenges -- views of
IP offices on the advantages and difficulties of using the Madrid system.
Subject: Madrid Agreement Concerning the International Registration of Marks (1891 April 14).
Protocols, etc., 1989 June 27--statistics
Subject: International trade mark applications--statistics
Subject: Intellectual property systems
SNIPER No.: 2014/01267
Author: Inman, Paul
Title: Subject matter, scope and second medical use: defining double patenting
Source: World Intellectual Property Report. Vol. 28 No. 6, June 2014, pp. 41-43.
Summary: Technical Board of Appeal decision -- double patenting -- purpose limited process
versus purpose-limited product claims -- University of Texas Systems (UTS) patent application
related to uses of antibodies to aminophospholipids for cancer treatment -- EP2 and EP1 Swisstype claims -- first instance decision of the European Patent Office (EPO) -- Appeal before the
Board -- same subject matter -- relevance of the decision.
Subject: Patent applications--Europe
Subject: Swiss-type claims--Europe
SNIPER No.: 2014/00693
Author: Crowne-Mohammed, Emir Aly
Author: Tiwana, Kiratjot
Title: Supreme Court of Canada rules substantial copying
Source: Journal of Intellectual Property Law and Practice. Vol. 9 No. 4, April 2014, pp. 269-271.
Summary: Supreme Court of Canada decision -- Cinar Corporation v Robinson, 2013 SCC 73, 23
December 2013 -- Robinson watched a children's television show called Robinson Sucroë
('Sucroë') and saw several striking similarities to his work Curiosity -- launched an action for
copyright infringement against the appellants -- substantial part of the respondent's work had been
copied by the appellants -- Canadian Supreme Court (SCC) confirmed the test for determining
copyright infringement -- factors for assessing compensation for infringement -- practical
significance.
Subject: Copyright infringement--case law--Canada
Subject: Copyright--culture and entertainment industry--Canada
Subject: Damages--Canada
SNIPER Bulletin – July 2014
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SNIPER No.: 2014/01202
Author: Künzel, Jens
Title: Supreme Court reduces requirements for copyright protection
Source: World Intellectual Property Review. January-February 2014, pp. 66.
Summary: Important decision in Germany's Supreme Court, November 2013 -- potential to
change the German laws of copyright protection for commodities -- registered design ended 20
(now 25) years after registration, whereas copyright protection ended 70 years after the author
passed away -- a significant difference -- 'birthday train' case -- popular birthday train designed to
hold candles -- German Federal Court of Justice decision has strengthened the protection of works
of applied art significantly as they will now enjoy a higher level of legal protection.
Subject: Copyright owners' rights--Germany
Subject: Copyright systems--Germany
SNIPER No.: 2014/00858
Author: Adamo, Kenneth R.
Author: Higer, David W.
Author: Goryunov, Eugene
Title: Survey of US court decisions to stay part 3: opposing a request to stay
Source: Intellectual Property Magazine. April 2014, pp. 47-49.
General Note: Third article in a series of three. See also: 2014/00425; 2014/00820
Summary: Cases denying a stay -- considerations central to each court's decision -- courts
generally apply a three-factor test when considering a stay motion -- stage of the proceedings -simplification of the issues -- undue prejudice or clear tactical disadvantage -- relationship between
the parties -- status of the IPR proceeding -- timing of the IPR and request for stay -- other
considerations.
Subject: Patent litigation--United States
Subject: Patent opposition--procedure--United States
SNIPER No.: 2014/00970
Author: Phillips, Jeremy
Title: Switzerland still not part of Germany, even for trade mark purposes
Source: Journal of Intellectual Property Law and Practice. Vol. 9 No. 5, May 2014, pp. 355-357.
Summary: Court of Justice of the European Union (CJEU) dismisses appeal by Rivella on the
grounds of trade mark use in Switzerland -- Rivella International AG v Office for Harmonisation in
the Internal Market (Trade Marks and Designs) (OHIM) -- bilateral treaty between Germany and
Switzerland on the reciprocal recognition of use of intellectual property rights -- Article 42(3) of the
Regulation 207/2009 on the Community trade mark -- Rivella opposition to the Baskaya application
based on likelihood of confusion -- history of unsuccessful appeals by Rivella over the matter -analysis of case -- despite the failure of Rivella's arguments Baskaya's Community trade mark
application had been kept off the register for over six years -- opposition would of probably been
dismissed anyway given that the marks were insufficiently similar to one another.
Subject: Trade mark use--case law--Europe
Subject: Trade mark registrability--case law--Europe
SNIPER Bulletin – July 2014
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Subject: Trade mark opposition
Subject: Trade mark distinctiveness
SNIPER No.: 2014/00447
Author: Stazi, Andrea, 1978Author: Marzetti, Maximiliano
Title: Synergetic interaction between intellectual property and consumer protection: a pragmatic
proposal to rebalance incentives and access
Source: Beldiman, Dana (ed.), Access to Information and Knowledge: 21st Century Challenges in
Intellectual Property and Knowledge Governance. Cheltenham, U.K.: Edward Elgar, 2013. pp. 189207.
Summary: Intellectual property and technological evolution -- succinct economic analysis of
intellectual property law -- IP in the digital environment and consumer interests -- succinct
economic analysis of consumer protection law -- public choice theory, interest group activity and IP
law -- pragmatic proposal: a consumer protection framework for IP.
Subject: Intellectual property law--economics
SNIPER No.: 2014/01131
Author: Di Blasi, Clésio Gabriel
Title: Tackling the backlog in Brazil
Source: World Intellectual Property Review. Life Sciences Intellectual Property Review, Vol. 1 No.
2, 2014, pp. 32-35.
Summary: Huge backlog of patent applications at the Brazilian Patent Office (INPI) -- delays apply
in both patent (10 years) and utility model (UM) (8 years) applications -- 200,000 patent
applications pending estimated by 2015 -- initial cause for the backlog a change from the Brazilian
Industrial Code (CPI) to the Brazilian Industrial Property Law (LPI) – recognising patent rights for
pharma, agriculture and biotech -- LPI provision -- awareness of measures to expedite
applications, assist both foreign and domestic patent seekers better protect their interests.
Subject: Intellectual property systems--Brazil
Subject: Patent applications--Brazil
SNIPER No.: 2014/00845
Author: Smith, Graham J. H.
Title: Taking notice
Source: Intellectual Property Magazine. April 2014, p. 22.
Summary: UK Intellectual Property Office (UKIPO) issued its first copyright notice -- 'digital
images, photographs and the internet' -- copyright notices are impartial guidance aimed at making
it easier for everyone to understand copyright law -- focus on areas where there is particular
confusion or misunderstanding -- sharing photos and images online and in social media -- should
help dispel the enduring myth that an image posted online is fair game -- less sure footed when it
comes to exceptions -- common misconception is that we have fair use in the UK -- notice pays
sparse attention to exceptions -- mentions private study and non-commercial research -- omits
criticism and review -- omits reporting of current events, which can apply to images (but not
photos) -- curious choices when the focus is public sharing on social media -- specific internet and
social media scenarios.
SNIPER Bulletin – July 2014
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Subject: Fair use (Copyright)--United Kingdom
Subject: User-generated content--United Kingdom
SNIPER No.: 2014/01065
Author: Lehman, Christine A.
Author: Frederick, Mareesa A.
Author: Ferrill, Elizabeth D.
Author: Wall, Leythem A.
Title: Tale of two borders: comparison of US and EU enforcement of design rights against
imported goods
Source: CIPA: the journal, incorporating the 'Transactions', of the Chartered Institute of Patent
Agents. Vol. 43 No. 4, April 2014, pp. 211-213.
Summary: Enforcement of design rights -- effective enforcement strategies required at a nation's
borders -- US design patents -- stopping infringing products at the US border -- Community design
rights in the European Union -- registered Community designs (RCD) -- using European
Community designs to curb importation of infringing goods -- comparison of US and EU systems.
Subject: Industrial design enforcement--United States
Subject: Industrial design enforcement--Europe
SNIPER No.: 2014/00392
Author: Pyrah, Alli
Title: Tech companies turn to licensing as US filings accelerate
Source: Managing Intellectual Property. No. 236, February 2014, pp. 25-28.
Summary: Interest in generating revenue from patent licensing -- Qualcomm's licensing
programme -- companies increasingly reluctant to turn to litigation unless the patent means "life or
death" for their business model or the technology is so lucrative that the costs of litigation are
justified -- Microsoft is increasingly turning to licensing as an alternative to litigation -- companies
increasing their patent holdings -- new opportunities for licensing -- technology firms as a whole
soaring up the patent assignee rankings -- how the mobile industry is changing.
Subject: Patent filing--information technology industry--United States
Subject: Intellectual property licensing
SNIPER No.: 2014/01053
Author: Nurton, James
Author: Barraclough, Emma
Title: Ten things we know, and don't know, about the UPC
Source: Managing Intellectual Property. No. 238, April 2014, pp. 16-20.
Summary: A year on from the agreement to create a Unitary Patent and Unified Patent Court
(UPC) in Europe -- many aspects of the new system are becoming clearer -- some clarity on are
the earliest possible start date -- the judicial training -- the rules of procedure -- where some of the
divisions will be -- the fact that politicians and officials remain firmly committed to it -- key questions
remain unanswered -- the cost -- whether cases will routinely be bifurcated -- representation -Spain's legal challenge -- who will actually want to use the system.
SNIPER Bulletin – July 2014
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Subject: Unified Patent Court
Subject: Regional patents--Europe
SNIPER No.: 2014/01114
Author: Reardon, Sara
Title: Text-mining offers clues to success
Source: Nature. Vol. 509 No. 7501, 22 May 2014, p. 410.
Summary: US intelligence programme analyses language in patents and research papers to
identify the next big technologies -- results from Intelligence Advanced Research Projects Activity
(IARPA) suggest that clues in the wordings of and relationships between scientific papers and
patents could foretell research success -- project called Foresight and Understanding from
Scientific Exposition (FUSE) -- four-year project started in 2011 -- could allow funders to pick
winners and help governments monitor disruptive technologies -- FUSE mines the full-text of
papers and patents, not just abstracts, in both English and Chinese to pick out key advances -view that human analysts still the best forecasters.
Subject: Patents--analysis
Subject: Innovation (Technological)--analysis
Subject: Data mining
SNIPER No.: 2014/00686
Author: Wilkof, Neil J.
Title: Theories of intellectual property: is it worth the effort?
Source: Journal of Intellectual Property Law and Practice. Vol. 9 No. 4, April 2014, p. 257.
Summary: Theories of intellectual property -- four analytical constructs -- namely (i) utilitarian for
maximizing net social value -- (ii) Lockean (one has the right to the fruits of his intellectual labour) - (iii) protection of personality in works -- (iv) fostering a just and attractive culture -- Professor
William Fisher, of Harvard University challenging attempt define intellectual property in a book
chapter entitled "Theories of Intellectual Property".
Subject: Intellectual property--philosophy
SNIPER No.: 2014/01086
Author: Price, Andrew
Author: Pierce, Justin
Title: Time to break some trademark rules in 2014?
Source: World Trademark Review. No. 49, June-July 2014, pp. 80-81.
Summary: Traditional rule of proper trade mark use -- using brands as adjectives only -- in a
consistent manner -- too restrictive when it comes to strong brands -- ways that strong or wellknown brands can use their marks as a noun or verb without substantial risk of genericide -- many
successful brands lost to genericide and are now viewed as generic terms for certain products -- in
today's market, when a brand becomes popular and its use is widespread, there is low risk of
genericide if the brand is verbed-up -- clear business value associated with the verbed-up use of
brands -- tips to avoid risk of trade mark genericide -- fluid and living marks -- Google's "Doodles"
are living trade marks -- transform in appearance over time, but retain their essence -- living trade
marks work for the Google because the underlying famous brand, shines through -- enhanced
SNIPER Bulletin – July 2014
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goodwill in the Google brand -- trade mark offices should find a way to register living trade marks
and give them special status.
Subject: Brand management
Subject: Trade mark registration
SNIPER No.: 2014/01160
Author: Fernández-Dávila, Marcos
Title: Top five in Latin America
Source: World Intellectual Property Review. March-April 2014, p. 70.
Summary: Peru took fifth place in the first Country Brand Index Latin America study -- reported as
"the world's largest and longest standing global study of country brand perception" -- assessment
of a country brand has many variables including tourism, its heritage and culture, its value system,
the quality of life and whether it is a good place for business -- figures can be used to continue
efforts to improve the country's image, resulting in better living conditions for its people, as well as
to highlight the business opportunities available to investors considering the option of investing in
Peru.
Subject: Brand management--Peru
Subject: Brand management--Latin America
SNIPER No.: 2014/00874
Author: Rehse, Claudia
Title: The 'torpedo': recent developments in Europe
Source: Intellectual Property Magazine. April 2014, pp. 76-78.
Summary: Procedural tactic, commonly known as a 'torpedo' -- an instrument generally available
to defendants in Europe looking to buy time in a legal dispute -- popular in patent infringement
proceedings -- potential defendant gets wind of an impending action against him under a particular
patent -- may opt to file a suit in another European country seeking a decision that he is not
infringing this patent, by way of a declaratory judgment action or action for non-infringement -country known for its comparatively slow jurisdiction processes is chosen -- if the patent owner
then starts an action in another European country against the infringer, the second court dealing
with this case is obliged to wait until the first court makes a legally binding decision as to whether it
has jurisdiction over the dispute -- decision may take years, preventing the patentee from pursuing
its infringement action in the meantime -- strategy is only possible because of current European
legislation -- recent developments in Italy -- recent case law in Germany -- Wundverband.
Subject: Legal defences--Europe
Subject: Patent litigation--procedure--Europe
SNIPER No.: 2014/01149
Author: Carrington, Victoria E.
Title: Towards implementing international IP treaties
Source: World Intellectual Property Review. March-April 2014, p. 59.
Summary: Canadian government tabled five international IP treaties in the House of Commons,
January 28, 2014 -- ratifying and implementing Protocol Relating to the Madrid Agreement
Concerning the International Registration of Marks (the Madrid Protocol) -- Singapore Treaty on
the Law of Trademarks (the Singapore Treaty) -- Nice Agreement Concerning the International
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Classification of Goods and Services for the Purposes of the Registration of Marks (the Nice
Agreement) -- Geneva Act of the Hague Agreement Concerning the International Registration of
Industrial Designs (the Geneva Act) -- The Patent Law Treaty -- transforming IP legal framework
and harmonising it's trade mark, patent and industrial design laws with those of its major trading
partners -- legislative reform considered essential to ensuring Canada's continued economic
growth and competitive edge.
Subject: Intellectual property systems--reform--Canada
SNIPER No.: 2014/01150
Author: Gao, Xiang
Title: Trade mark registrations and new draft regulations
Source: World Intellectual Property Review. March-April 2014, p. 60.
Summary: Trade mark registration applications in China -- trade mark law regulations published -draft regulations key points -- formality requirement for applications to register a sound mark -requirement of certificate of identification for the applicant – divisional applications -- applicant's
chance to explain -- opposition -- procedures for assignment of a trade mark -- transfer of trade
mark by heritage -- calculating method for the volume of illegal operation -- facilitating infringement.
Subject: Trade mark registration--reform--China
SNIPER No.: 2014/01172
Author: Richardson, Megan
Title: Trade marks and language
Source: Sydney Law Review. Vol. 26 No. 2, June 2004, pp. 193-220.
Summary: Challenge to traditional perception that trade marks signal the origin of goods and
services -- argument that trade marks are an important part of popular culture -- trade mark law -"trade marks" should be narrowly defined and thresholds for registration set high -- language
commons should remain in their pristine natural state -- infringement of registered trade mark
narrowly construed to avoid looking like copyright style protection -- how these ides evolved -different treatment of language when it comes to the regulation of trade marks and domain names - review of the historical context of Australia's registered trade mark system -- influence of 19th
century linguistic theories which treated language as historically pure and fragile to disruptive
influences -- suggestion that some rethinking of the fundamentals of trade mark law is needed level of regulation in the system -- fears that trade mark owners given more rights will naturally
seek to exploit expressive components of their trade marks to control and censor popular
discourse -- guiding commercial norms overlooked as alternative to restrictive regulation.
Subject: Trade mark registrability--Australia
Subject: Trade marks--social aspects
SNIPER No.: 2014/01037
Author: Passman, Pamela
Title: Trade secrets: know thy enemy
Source: Intellectual Property Magazine. May 2014, pp. 53-54.
Summary: Center for Responsible Enterprise and Trade and PricewaterhouseCoopers
(CREATe/PwC) report -- Economic Impact of Trade Secret Theft: A Framework for Companies to
Safeguard Trade Secrets and Mitigate Potential Threats -- difficult to estimate the economic impact
of trade secret theft -- lack of data -- report takes a proxy approach to arrive at a "reasonable
SNIPER Bulletin – July 2014
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estimate" -- attempts to profile motivations and means of perpetrators -- tool for zeroing in on the
greatest vulnerabilities -- foreign governments may represent the biggest threat -- theft of trade
secrets by "malicious insiders" -- industry competitors -- importance of a comprehensive
accounting of valuable confidential information -- CREATe/PwC report offers a framework for
companies to identify, categorise and prioritise their trade secrets, assess their vulnerabilities and
risks, and improve safeguards -- governments around the world grapple with the growing problem
of trade secret theft -- regulatory uncertainty.
Subject: Trade secrets
Subject: Business collaboration
SNIPER No.: 2014/01024
Author: Smith, Nathan
Title: Trademark Clearinghouse: keeping cybersquatters at bay?
Source: Intellectual Property Magazine. May 2014, p. 29.
Summary: Internet Corporation for Assigned Names and Numbers (ICANN) -- expanding the
domain name system by introducing hundreds of new global Top Level Domains (gTLDs) -increased scope for online trade mark abuse -- ICANN created the Trademark Clearinghouse
(TMCH) to try to reduce the risks that the new gTLD programme poses to trade mark owners -Sunrise service -- Trade Mark Claims Service.
Subject: Cybersquatting
Subject: Trade mark owners' rights
SNIPER No.: 2014/01152
Author: Nylund, Hanna
Author: Battistelli, Davide
Title: Trademark update from the new IP court
Source: World Intellectual Property Review. March-April 2014, p. 62.
Summary: Finnish Market Court started to operate as the new IP court on 2013 -- following the
transfer of civil IP matters to the Market Court, the Board of Appeals of the National Board of
Patents and Registration (NBPR) ceased to operate in 2014 -- Court handed down a number of
judgments in IP cases -- literal versus contextual meaning of words in trade marks -- top-level
domain did not contribute to distinctiveness -- guidelines on confusing similarity.
Subject: Patent litigation--procedure--Finland
SNIPER No.: 2014/00853
Author: Török, Ferenc
Title: The training of UPC judges steps closer to reality
Source: Intellectual Property Magazine. April 2014, pp. 38-39.
Summary: Training centre for the Unified Patent Court (UPC) judges -- location of the centre -inauguration conference -- keynote speech held by Paul van Beukering (chairman of the UPC
Preparatory Committee) -- other keynote speech given by Olivér Várhelyi (human resources and
training group coordinator of the Preparatory Committee) -- practical issues concerning the training
of judges.
Subject: Unified Patent Court
SNIPER Bulletin – July 2014
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Subject: Regional patents--Europe
SNIPER No.: 2014/01144
Author: Fütman, Özlem
Title: Troubled times in Turkey
Source: World Intellectual Property Review. March-April 2014, pp. 48-51.
Summary: Registration system for trade mark applicants in Turkey -- concerns that the date and
number that should be given by the Turkish Patent Institute (TPI) once the registration process has
been completed is not being applied consistently -- subsequent designations extending the scope
of an international registration to another country -- date variations -- lack of cooperation between
WIPO and TPI.
Subject: Trade mark systems--Turkey
Subject: Intellectual property offices--procedure--Turkey
SNIPER No.: 2014/01264
Author: Smith, Nathan
Title: UK Law Commission publishes report on groundless threats over IP rights
Source: World Intellectual Property Report. Vol. 28 No. 6, June 2014, pp. 34-36.
Summary: Reform to the law on groundless threats in the United Kingdom -- final report entitled
Patents, Trade Marks and Design Rights: Groundless Threats published by UK Law Commission
released -- current law -- threats -- remedies awarded -- exempt "primary" infringement -- patents
reform -- problems with the current law -- consultation -- radical vs evolutionary -recommendations.
Subject: Intellectual property abuse--United Kingdom
SNIPER No.: 2014/01042
Author: Lewis, Jeffrey I. D.
Author: Schmitt, Christopher M.
Title: An unforeseen obstacle
Source: Intellectual Property Magazine. May 2014, pp. 65-66.
Summary: Consultant is hired for his or her prior experiences and accomplishments -- if a
consultant serves more as an employee than an outsider -- assignor estoppel doctrine can prevent
assertions that earlier patents by the consultant are invalid -- assignor estoppel concept -- historical
assignor estoppel cases -- consultant-assignor with an interest -- consultant-assignor without a
direct interest -- developing expansion of the doctrine -- using a consultant could hamstring a
corporation's defences in patent litigation -- basic steps that can mitigate this risk.
Subject: Patent validity
Subject: Patent assignment
SNIPER No.: 2014/00973
Author: Giannino, Michele
Title: Unincorporated sport associations can seek trade mark protection for the names of nonprofessional football clubs
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Source: Journal of Intellectual Property Law and Practice. Vol. 9 No. 5, May 2014, pp. 359-360.
Summary: Italian Court of First Instance of Genoa ruled that an unincorporated sport association
is allowed to pursue trade mark protection for the name and crest of a non-professional football
team -- Associazione Sportiva Entella Chiavari 1914 v Virtus Entella -- Article 19 of the Italian
Intellectual Property Code -- Virtus Entella filed a trade mark application for the word ENTELLA
and the white and blue crest of the team -- applicant used the name Entella for its football team -AS Entella began proceedings against Virtus Entella in August 2013 -- analysis of case -- issue on
what constitutes an 'enterprise' -- question of whether a football team with a geographical name
could be protected as a trade mark -- geographical names of Entella and Chiavari in the disputed
signs -- in theory applicant can seek trade mark protection -- merits of the applicants claims remain
to be decided -- practical significance.
Subject: Trade mark registrability--case law--Italy
Subject: Geographical indicators--case law--Italy
SNIPER No.: 2014/00399
Author: Boad, Bob
Title: United we brand: the latest trends in co-branding
Source: Managing Intellectual Property. No. 236, February 2014, pp. 108-111.
Summary: Co-branding often allows parties to leverage the existing reputation of their brands to
help them market a new product or service -- avoid some of the costs and dangers associated with
establishing a new brand -- cases such as Rihanna's litigation against Topshop have highlighted
the importance of ensuring that co-branding is consensual -- rulings from the Court of Justice of the
European Union have clarified how concepts of exhaustion and trade mark functions impact on cobranding exercises -- recent high profile co-branding exercises such as Android KitKat deal offer
lessons for brand owners who want to ensure that their co-branding benefits both parties.
Subject: Business collaboration
Subject: Brand management
SNIPER No.: 2014/01113
Author: Check Hayden, Erika
Title: Universities seek to boost industry partnerships
Source: Nature. Vol. 509 No. 7499, 8 May 2014, p. 146.
Summary: Increasing reluctance of pharmaceutical companies and venture-capital firms to fund
early development work on new drugs -- academic institutions increasing role in bringing
discoveries to market -- example of Harvard University programme that supports preclinical
research -- University of Oxford development fund allowing private investors to support the
commercialisation of discoveries -- hybrid academic-industrial drug development schemes
increasing -- Karolinska Institute and AstraZeneca -- hope that new programmes will replenish
pharmaceutical industry's new drugs pipeline and bring money to academic institutions facing
shrinking public funding
Subject: Pharmaceuticals
Subject: Industrial research and development--pharmaceutical industry
SNIPER No.: 2014/01146
Author: Huggett, Brady
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Author: Paisner, Kathryn
Title: University biotech patenting 2013
Source: Nature Biotechnology. Vol. 32 No. 4, June 2014, p. 512.
Summary: Most active universities centres in biotechnology patenting -- patents granted covering
the period 2009-2013 -- data from the US Patent and Trade Mark Office (USPTO) and the
European Patent office (EPO) -- University of California system tops the list followed by Wisconsin
Alumni Research Foundation -- large increase in number of US biotech patents awarded -- greater
number of biotech patent examiners in USPTO
Subject: Education and training industry--trends
Subject: Biotechnology industry--trends
Subject: Patents--trends
SNIPER No.: 2014/01107
Author: Fisch, Christian O.
Author: Hassel, Tobias Michael
Author: Sandner, Philipp G.
Author: Block, Joern H.
Title: University patenting: a comparison of 300 leading universities worldwide
Source: University Patenting: a Comparison of 300 Leading Universities Worldwide. 06 May 2014.
General Note: Published on Social Science Research Network (SSRN).
Summary: Worldwide increase in university patenting -- analysis from an international perspective
examining patents at the top 300 universities worldwide -- patent ranking system -- analysis of the
determinants of university patenting -- international comparison between different countries and
between universities within countries -- results indicate propensity to apply for patents is very high
among US and Asian universities, while European universities lag behind -- the size of a university
and the quality of its publications are not found to be significant determinants.
Subject: Technology transfer--statistics
Subject: Patents--trends
Subject: Patents--education and training industry
SNIPER No.: 2014/00855
Author: Claydon, Michelle
Title: Update on the unitary patent
Source: Intellectual Property Magazine. April 2014, p. 41.
Summary: First unitary patents could be granted as soon as 2015 -- outstanding legal issues
standing in the way of the unitary patent system -- need for ratification of the Unified Patent Court
(UPC) Agreement by a minimum of 13 states -- Spain's legal challenges to the 'closer cooperation'
on which the unitary patent regulations are based -- significant work on the procedural aspects of
the unitary patent has been taking place -- work was carried out on the drafting of the legal texts for
implementing the unitary patent -- discussions concerning the practical implementation of the
compensation scheme for translation costs and the procedure for setting fee levels -- no decisions
on these matters have yet been reached -- preparatory work for implementing the unitary patent is
well under way and should be completed this year.
Subject: Patent systems--harmonisation--Europe
SNIPER Bulletin – July 2014
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Subject: Regional patents--Europe
SNIPER No.: 2014/01039
Author: Rawls, John C.
Title: US right of publicity laws: what every non-US attorney should know
Source: Intellectual Property Magazine. May 2014, pp. 57-59.
Summary: Right of publicity exists in all fifty United States -- variations among these laws present
special challenges to advertisers -- what is the 'right of publicity?' -- what constitutes 'use' of an
individual's 'identity?' -- who may assert a right of publicity claim? -- legal issues that commonly
arise in right of publicity cases -- use of an attribute other than an individual's name or image -depiction of a fictional character closely associated with a real person -- what laws govern a right of
publicity claim? -- defences to right of publicity claims -- parody -- "artistic" use -- suggested
strategies for avoiding right of publicity claims.
Subject: Personality rights--law and legislation--United States
Subject: Marketing
SNIPER No.: 2014/01266
Author: Whitney, Craig B.
Title: US Supreme Court finds laches no bar to copyright infringement claim
Source: World Intellectual Property Report. Vol. 28 No. 6, June 2014, pp. 40-41.
Summary: United States Supreme Court decision in Petrella v. Metro-Goldwyn-Mayer, Inc -- rights
to the acclaimed film Raging Bull -- Supreme Court held that laches cannot act as a bar to a
copyright plaintiff's claims for infringement damages brought within the copyright statute's threeyear limitations window -- Petrella's significance -- raises questions about the applicability of laches
to other laws that contain limitations periods.
Subject: Copyright infringement--case law--United States
Subject: Legal defences--United States
SNIPER No.: 2014/01151
Author: Holme, Marianne
Title: Using the 'Y' class to find 'green' patents
Source: World Intellectual Property Review. March-April 2014, p. 61.
Summary: New ideas emerging around climate change, how to prevent it and provide sustainable
energy in new ways -- searching for patent documents in Europe relating to sustainable energy is a
challenge -- sustainable technologies did not fall into one single classification -- sustainable
technologies in the 'Y' classification -- Cooperative Patent Classification system (CPC) -- 'Y'
classification makes it much easier to continue to be updated about recent efforts and approaches
to improving sustainable energy -- inventions must comply with the European Patent Convention
(EPC).
Subject: Patent classification--Europe
Subject: Environmental issues in intellectual property--Europe
SNIPER No.: 2014/01060
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Author: Leung, Peter
Title: Utility models and Indian software
Source: Managing Intellectual Property. No. 238, April 2014, p. 45.
Summary: Indian government continues to examine whether the country should introduce utility
model patent protection -- utility model patent is derided for being low quality -- may be well-suited
for the software-heavy industries, where improvements come and go quickly -- designed for
relatively minor and incremental innovations -- reduced requirements means it is much faster to
obtain -- faster process for getting a utility model patent also makes it suitable for software -whether utility model patents should be limited to mechanical devices -- patentability of software is
still in flux in India -- claim construction is key to software-related patents.
Subject: Minor patents--India
Subject: Computer-related inventions--India
SNIPER No.: 2014/00977
Author: Burfitt, Brian
Author: Heathcote, Marion
Title: Valuing footsteps: towards a valuation model of indigenous knowledge and cultural
expression for the sustainability of indigenous people's culture
Source: Journal of Intellectual Property Law and Practice. Vol. 9 No. 5, May 2014, pp. 383-388.
Summary: Indigenous cultural property and its issues and how it should be treated -- intellectual
property rights and the western legal system compared with Indigenous cultural property -indigenous intellectual property using Australia as an example -- reluctance to value indigenous
cultural property -- selecting a valuation model -- indigenous concepts of ownership -- property
identification -- innovation -- intangible notions difficult to value -- sustainability and the view of
indigenous people in the natural world -- the need for indigenous people to have the central role in
this process -- Western intellectual property regimes have a role even if they need to be adapted.
Subject: Traditional cultural expressions
Subject: Traditional knowledge
Subject: Indigenous issues in intellectual property
SNIPER No.: 2014/00702
Title: Video game consoles
Source: Journal of Intellectual Property Law and Practice. Vol. 9 No. 4, April 2014, pp. 333-336.
Summary: German Federal Court of Justice decision 6 February 2013, Case No. I ZR 124/11 -question referred to CJEU for preliminary ruling on the protection of technical measures where
hybrid works such as video games in which a computer program is an integral part are concerned - Federal Supreme Court adjourned the proceedings on the grounds that the video games sold by
the plaintiff did not only consist of spoken, musical, photographic and video content, but were
primarily based on computer programs -- question arises whether the ban on the sale of devices
that enable the circumvention of effective technological measures designed to protect 'hybrid
products'.
Subject: Multimedia works--case law--Germany
SNIPER No.: 2014/01088
Author: Dick, Matthew
Author: Reid, Anna
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Title: Wearable tech: technology - and IP - get a fashion makeover
Source: World Trademark Review. No. 49, June-July 2014, pp. 88-91.
Summary: What is wearable technology? -- wearable technology is not a new phenomenon -ability of such wearables to interact with other technology is new -- enables users to upload and
share data instantly -- giving rise to some of the biggest legal issues surrounding wearable-tech
products -- law will need to adapt and evolve to keep pace with technological evolution -opportunities and threats to be considered for developers of such products in terms of protecting
and exploiting innovative concepts -- protecting intellectual property aspects of wearable-tech
products -- trade marks -- registered designs -- patents -- potential legal issues resulting from
increased use of wearable-tech products -- personal data -- counterfeit products -- privacy -copyright and patent infringement -- function versus fashion.
Subject: Mobile computing--law and legislation
Subject: Intellectual property rights--mobile telecommunications industry
SNIPER No.: 2014/01035
Author: Hoy, Ruth
Author: Kay, Rebecca
Title: Wearing your rights on your sleeve
Source: Intellectual Property Magazine. May 2014, pp. 49-50.
Summary: Wearable technology generating a host of complex legal issues -- potential data
privacy repercussions -- risks of wearing smart-eyewear while driving -- journalists watching patent
registers, in an effort to happen upon a patent holding the key to the direction in which the
wearable research and development (R&D) teams are moving -- patent development game is
dangerous and expensive -- Adidas launched proceedings against Under Armour Inc, alleging
infringement of patents relating to Adidas' miCoach fitness training devices -- cross licensing may
be the safest way to minimise risk -- smart collaborations -- wearables shedding the 'geek-chic'
label by teaming up with the fashion elite -- Intel joining forces with Opening Ceremony -- questions
over ownership and exploitation of intellectual property (IP) rights -- answer lies in licensing -Google releasing a software development kit that will make it simpler for wearables to 'talk' to
Android devices -- fashion brands may be able to join this lucrative market without partnering with
tech giants -- possible copyright infringement -- wearable clothing that doubles as a communication
device -- potential for wearables to become a novel form of 'communication to the public'.
Subject: Mobile computing
Subject: Intellectual property rights
SNIPER No.: 2014/01055
Author: Marshall, James
Title: What Huawei will mean for IP owners
Source: Managing Intellectual Property. No. 238, April 2014, pp. 25-27.
Summary: Courts and antitrust regulators have been grappling with some of the complex legal
and technical issues relating to patent licensing, Fair, Reasonable and Non-Discriminatory
(FRAND) and standards essential patents -- questions they have been considering -- when do
legitimate negotiating tactics between would-be licensors and licensees become unacceptable
delaying tactics? -- at what point does a licensee become "willing" effectively preventing the
patentee from seeking an injunction? -- Court of Justice of the European Union is due to rule in a
referral in the Huawei Technologies case -- decision could clarify a number of questions relevant
for patent owners and users.
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Subject: Patents--law and legislation--Europe
Subject: Standards (Technical)
Subject: Intellectual property licensing
SNIPER No.: 2014/01196
Author: Licks, Otto B.
Title: What to expect in 2014
Source: World Intellectual Property Review. January-February 2014, pp. 60.
Summary: Brazilian IP landscape -- likely to be affected by activity at the executive, legislative and
judicial branches -- new commissioner Otavio Branndelli for the Brazilian patent Office (INPI) -support for the current workflow between the INPI and Brazil's food and drug administration
(ANVISA) regarding pharmaceutical patents -- Brazilian patent system reform -- second bill
affecting IP regime -- if approved Brazilian system is aligned with the Indian Patent Act 2005 -Article 40 of Brazilian patent law -- length of patent terms from the date of grant -- most important
provision to protect inventions against the INPI's backlog.
Subject: Intellectual property systems--reform--Brazil
SNIPER No.: 2014/01090
Author: Cumming, Robert
Author: Tindall, Adam
Title: What will the devolution of Scotland from the United Kingdom mean for IP rights?
Source: World Trademark Review. No. 49, June-July 2014, pp. 96-97.
Summary: Scotland gearing up to a referendum to determine whether it will break away from the
rest of the United Kingdom -- yes vote could result in a headache for businesses wanting
intellectual property (IP) rights in the new Scotland -- IP rights in the United Kingdom -- leaving the
European Union -- use of GB would be likely to linger for historical reasons -- Scotland will need its
own country code .scot is the preferred new domain -- changes to the UK flag -- planning ahead -undertake a rationalisation and risk assessment process for existing IP rights.
Subject: Brand management--Scotland
Subject: Politics--Scotland
SNIPER No.: 2014/01071
Author: Little, Trevor
Title: When the sums don't add up
Source: World Trademark Review. No. 49, June-July 2014, pp. 15-23.
Summary: Budgets for in-house trade mark teams -- struggle for funding -- continued disconnect
with the executive level -- onus is on trade mark counsel to fight their corner -- proactive and
persistent effort to engage senior internal stakeholders -- appreciation that trade marks themselves
remain important assets -- promoting and reinforcing the trade mark agenda remains an ongoing
task -- marketing is the function with which trade mark counsel interact most closely -- policing
online infringement -- explosion of infringement appears to be a key factor in the volume of work
being outsourced to legal partners -- bulk of this related to litigation and prosecution, with
administrative enforcement actions and complex anti-counterfeiting briefs -- private practitioner
respondents reported that clients are also demanding additional levels of service and support --
SNIPER Bulletin – July 2014
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increase in the size of a firm's trade mark practice -- increase in budgets for enforcement activities
for clients.
Subject: Trade marks--statistics
Subject: Financial management
SNIPER No.: 2014/01033
Author: Jorge, João
Title: Who is the informed user in Community registered designs?
Source: Intellectual Property Magazine. May 2014, pp. 45-46.
Summary: Community registered design (CRD) -- one of the central figures to assess registrability
and later enforceability of a design is the conceptual figure of the "informed user" -- now becoming
known as jurisprudence is becoming available in sufficient numbers to achieve a reliable legal
certainty -- individual character is a subjective criterion -- design shall be registered as a
Community design if the overall impression created by the design on an 'informed user' is different
from the impression created on that same user by other designs -- degree of freedom of the
designer in developing the design shall be taken into consideration -- case law -- class of product.
Subject: Industrial designs--case law--Europe
Subject: Industrial design rights--Europe
SNIPER No.: 2014/00394
Author: Pyrah, Alli
Title: Why aren't Chinese companies filing in the US?
Source: Managing Intellectual Property. No. 236, February 2014, pp. 32-33.
Summary: United States companies patenting inventions in China -- Chinese companies are filing
less than expected in the US -- filing plenty of patent applications domestically -- prosecution work
from Chinese companies remains elusive -- reason Chinese companies may be slow to file US
patents is that Article 20.1 of China's Patent Law requires them to submit any invention produced
in China to the State Intellectual Property Office (SIPO) for review before filing patent applications
abroad -- purpose of the review is to protect state secrets -- failure to comply results in the loss of
patent rights for the invention in China.
Subject: Patent filing--China
Subject: Patent filing--United States
SNIPER No.: 2014/01126
Author: Peacock, Skyler R.
Title: Why manufacturing matters: 3D printing, computer-aided designs, and the rise of end-user
patent infringement
Source: William and Mary Law Review. Vol. 55 No. 5, May 2014, pp. 1933-1960.
Summary: 3D printing -- patent infringement -- evolution of 3D printing -- how 3D printing fits into
present intellectual property frameworks -- piracy and infringement issues -- disclosure
requirements and computer-aided designs -- patent-copyright crossover -- why manufacturing
matters -- distinction between inventive and innovative activity -- whether patenting incentives will
still exist in a home-manufacturing market -- whether current patent legal frameworks should be
preserved at the cost of innovation.
SNIPER Bulletin – July 2014
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Subject: Three-dimensional printing--United States
Subject: Innovation (Technological)--United States
Subject: Patent systems--United States
Subject: Patent infringement--United States
SNIPER No.: 2014/01263
Author: Pruzin, Daniel
Title: WTO chief appoints panelists to rule on Australian plain-packaging rules
Source: World Intellectual Property Report. Vol. 28 No. 6, June 2014, p. 3.
Summary: World Trade Organization (WTO) appointed three trade experts to rule on complaints
filed by five nations challenging Australia's plain packaging rules for tobacco products -- Australia's
Plain Packaging Act 2011 -- measures may violate TRIPs agreement -- Australian measures are
also being challenged not only in the WTO but also through investor-state dispute proceedings -New Zealand to follow Australia.
Subject: Trade dress--law and legislation--Australia
Subject: Trade marks--manufacturing and processing industry--Australia
SNIPER No.: 2014/01074
Author: Little, Trevor
Title: WTR Industry Awards 2014
Source: World Trademark Review. No. 49, June-July 2014, pp. 33-39.
Summary: World Trademark Review Industry Awards are designed to recognise the vital work
performed by in-house trade mark counsel -- identify teams and individuals that are performing
their functions to the highest possible standards -- list of nominees is the result of two months of
extensive research -- readers and selected members of the global trade mark community
surveyed for nomination in the geographical and industry categories -- individual In-house Counsel
of the Year and Lifetime Achievement Awards -- nominees and selected on the basis of a wide
range of criteria.
Subject: Trade marks--statistics
SNIPER No.: 2014/00391
Author: Winterfeldt, Brian J.
Author: Karnofsky, Philip D.
Title: Your brand in an expanding internet space
Source: Managing Intellectual Property. No. 236, February 2014, pp. 20-23.
Summary: Planned launch of new generic top-level domains (gTLDs) -- new opportunities and
challenges for brand owners -- Internet Corporation for Assigned Names and Numbers (ICANN)
accepted applications from entrepreneurs proposing gTLDs representing generic and geographical
terms -- brand owners seeking gTLDs corresponding to their brand names -- one-third of new
gTLD applicants proposed branded gTLDs -- programme gives applicants a chance to innovate -provides significant innovation opportunities for non-applicants -- brand owners who did not apply
to operate their own gTLD can leverage the programme to promote and protect their trade marks,
raise consumer confidence and obtain newly available domains -- devise a strategic approach, that
takes advantage of new rights protection mechanisms and other enforcement opportunities.
SNIPER Bulletin – July 2014
Page 74 of 75
Subject: Domain names
Subject: Brand management
SNIPER Bulletin – July 2014
Page 75 of 75
© Commonwealth of Australia 2014
Published by: IP Australia
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