Archive for March, 2010

Gene patents invalid in USA

Wednesday, March 31st, 2010

District Court Judge Robert Sweet has ruled that Myriad’s patents for the BRCA1 and 2 isolated gene sequences are invalid on the grounds that isolation of the “pure” form of the gene is insufficient to confer patentability.

The New York Times has a lengthy report.

Patently-O summarises, with a link to the 152 page judgment. Prof. Crouch goes on to note that the reasoning effectively invalidate almost all gene patents but expresses the view that the Federal Circuit will reverse, setting up the matter for the US Supreme Court.

These are the patents which sparked controversy in Australia in 2008 and 2009 as a result of which the Senate is now holding an inquiry, currently due to report by 17 June 2010. The ALRC had earlier in 2004 recommended that patents should continue to be available for genetic material.

Association for Molecular Pathology and ACLU v. USPTO and Myriad (S.D.N.Y. 2010) (Judge Sweet)

Google’s sale of ‘trademarked’ keywords does not infringe in EU

Wednesday, March 24th, 2010

The European Court of Justice has ruled that the sale of ‘trademarked’ terms by Google as keyword triggers of advertising:

From IPKat reports. According to the IPKat, the rulings themselves:

1. Article 5(1)(a) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks and Article 9(1)(a) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark must be interpreted as meaning that the proprietor of a trade mark is entitled to prohibit an advertiser from advertising, on the basis of a keyword identical with that trade mark which that advertiser has, without the consent of the proprietor, selected in connection with an internet referencing service, goods or services identical with those for which that mark is registered, in the case where that advertisement does not enable an average internet user, or enables that user only with difficulty, to ascertain whether the goods or services referred to therein originate from the proprietor of the trade mark or an undertaking economically connected to it or, on the contrary, originate from a third party.
2. An internet referencing service provider which stores, as a keyword, a sign identical with a trade mark and organises the display of advertisements on the basis of that keyword does not use that sign within the meaning of Article 5(1) and (2) of Directive 89/104 or of Article 9(1) of Regulation No 40/94.
3. Article 14 of Directive 2000/31/EC of the European Parliament and of the Council of 8 June 2000 on certain legal aspects of information society services, in particular electronic commerce, in the Internal Market (‘Directive on electronic commerce’) must be interpreted as meaning that the rule laid down therein applies to an internet referencing service provider in the case where that service provider has not played an active role of such a kind as to give it knowledge of, or control over, the data stored. If it has not played such a role, that service provider cannot be held liable for the data which it has stored at the request of an advertiser, unless, having obtained knowledge of the unlawful nature of those data or of that advertiser’s activities, it failed to act expeditiously to remove or to disable access to the data concerned.

IPKat threatens more detailed consideration in a later post.

Prof. Goldman provides a thoughtful analysis from a US perspective here.

The oldest Australian film

Tuesday, March 23rd, 2010

Last week, various news agencies carried reports about a showing of Australia’s oldest, or oldest surviving, film – Patineur Grotesque.

The story, with links to the video, at the ABC, the Age and the SMH. The curator’s clip and notes at Australian Screen.

It was made by Marius Sestier, on a mission from the Lumiere brothers, in 1896; but apparently not shown in Australia (for risk of defamation?).

Wikipedia lists it as one of 3 “first” Australian films. However, if the Age is to be believed, M. Sestier arrived in Australia with the new fangled invention only to find the pesky Rickard had already introduced the movies.

Amazon’s 1-click in the Euro-space

Thursday, March 18th, 2010

Following this week’s developments in the USA, Amazon’s “1-click” patent is also in the news in Europe.

The EPO’s Board of Appeal has confirmed a finding of invalidity, on grounds of obviousness, for the original claims, but has remitted the heavily amended version of the claims for reconsideration.

IP:Jur has the report.

Lid dip: PriorSmart

Kit Kat shape trade mark

Wednesday, March 17th, 2010

Nestlé has successfully appealed Aldi’s opposition to registration of a 4 bar Kit Kat as a trade mark:

Societe Des Produits Nestle S.A. v Aldi Stores (A Limited Partnership) [2010] FCA 218

The trade mark is TM No. 822780 for this:

The endorsement reads:

The trade mark consists of the shape of the goods, being four bars attached to one another by a thin base as depicted in the representations attached to the application form.* * Accepted under the provisions of subsection 41(6).*

Now, the appeal was resolved by consent. There is an interesting practice point there Nicholas J, an experienced IP practitioner before going to the Bench, explains the rationale for allowing appeals on this basis.

The larger questions are of course how did Nestlé get it accepted and what can they do with it?

The endorsement indicates that the sign was accepted on the basis of acquired distinctiveness under s 41(6). It would appear from the Opposition decision, there was (as you would expect) enormous sales and advertising and a survey indicating 77% of the public would identify the shape as Kit Kat.

Consistently with the approach taken by the Full Court in BP Green (cf [118] and [121-122]), the Hearing Officer upheld the opposition on the ground that the shape was not used as a trade mark. Decision here (pdf –  I couldn’t find it on Austlii).

Of course, we don’t know what evidence, if any, Nestlé filed in support of its appeal, which might have persuaded Aldi to withdraw.

Next, what happens if Aldi or Coles or Woolworths start selling a chocolate with 4 bars like the shape above wrapped in their own packaging? At the Opposition hearing, Nestlé argued that post sale use, such as unwrapping the chocolate after sale, could constitute use as a trade mark citing Kabushiki Kaisha Sony Computer Entertainment v Nuplayer Ltd [2005] EWCH 1522 (Ch D) in support. Given his conclusions on other points, it was sufficient for the Hearing Officer to assume this was the case. How it sits with Re Yanx’ TM might be another matter.

What happens to those people who are selling 1 finger or 2 bar variations on a theme? Shades of Adidas’ 3 stripe wars.

Amazon’s 1-click patent survives re-examination

Tuesday, March 16th, 2010

Patently-O reports that Amazon’s 1-click patent has survived re-examination in the USA before the USPTO.

It would appear that the application was amended to tie the claims to use of a shopping cart:

The approved-of amendment adds the seeming trivial limitation that the one-click system operates as part of a “shopping cart model.” …. Because most retail eCommerce sites still use the shopping cart model, the added limitation appears to have no practical impact on the patent scope.

One of the (more intelligible) comments claimed that re-examination before the USPTO did not extend to consideration of obviousness issues.

Amazon’s counterpart patent application in Australia, No 762175, is under opposition by Telstra.

Luscious Lips confectionary

Friday, March 12th, 2010

Sundberg J has dismissed Nature’s Blend’s action against Nestlé for infringement of its LUSCIOUS LIPS trade mark, passing off and misleading or deceptive conduct by selling Allens RETRO PARTY MIX.

Nature’s Blend, which was principally a supplier of veterinary products registered LUSCIOUS LIPS in respect of confectionery. Initially, at least, it gave chocolates away branded with the trade mark and a device to promote its business.

Around the same time as Nature’s Blend began marketing products with its trade mark, Nestlé introduced a new product under its ALLENS brand called ‘RETRO PARTY MIX’. This was a box or packet of mixed lollies. The back of the packaging included the following:

That’s right! All your favourites are back, so put on those flares and get ready to party! Up to 7 lolly varieties including…cool Cola Bottles, those radical Racing Cars, yummy Honey flavoured Bears, totally freeeekie Teeth, luscious Lips, partying Pineapples and outrageous Raspberries. [emphasis added]

The “luscious” Lips were a jelly product in the shape of lips.

Sundberg J found that the words used in this setting were not used as a trade mark. First, because the word “luscious” was descriptive and in context consumers would be likely to regard the expression as laudatory and possibly even humorous. Secondly, the effect of the combined expression in context was diluted by the prominence of the Allens, RETRO PARTY MIX and Nestlé trade marks.

Sundberg J would also have found, if necessary, that Nestlé was using the term as a good faith description: Nestlé’s product manager explained the development of the name in terms which made it clear she had been unaware of Nature’s Blend’s trade mark or product.

Interestingly, at [13] Sundberg J also considered it clear that the relevant time for determining liability under s 52 of the Trade Practices Act 1974 (Cth) is the date when the respondent’s conduct started; the same as for trade mark infringement and passing off. Middleton J did not consider it necessary to decide the point in Playcorp v Bodum [2010] FCA 23 at [58]-[59].

Nature’s Blend Pty Ltd  v Nestle Australia Ltd [2010] FCA 198

Levying execution against a domain name

Tuesday, March 2nd, 2010

The US Ninth Circuit Court of Appeals has upheld a district court ruling in which a creditor of John Zuccarini successfully levied execution against a domain name held in Mr  Zuccarini’s name.

Mr Zuccarini, sometimes known as Cupcake Patrol and other “colourful” noms de plume, may be familiar to those of you around in the “old” days of the UDRP from the frequency in which he appeared as a respondent.

Venkat, in a guest post on Professor Goldman’s Technology and Marketing blog, highlights, the Ninth Circuit’s ruling permitted execution on the basis of the location of the domain name registrar. So, if your client has registered his/her/its domain name through a US registrar, the domain name could be at risk if your client becomes embroiled in a dispute with someone who has access to the US legal system.