Friday Filppancy

Coca-Cola's shape mark too smooth for
the General Court

Coca-Cola falters in EU General Court on bottle shape trade mark:  On Wednesday, the EU General Court issued its decision rejecting Coca-Cola's Community trade mark application to register a 3-D sign for the contour of a bottle without fluting.  OHIM's Board of Appeal had previously rejected the application on the basis that it was devoid of distinctive character under Article 7(1)(b) of the CTM Regulation 207/2009.  The General Court, in affirming OHIM's decision, was unswayed that Coca-Cola's survey evidence proved that the mark had acquired distinctive character throughout the EU in respect of a significant part of the relevant public.  On the survey point the General Court stated:

"First, as regards the surveys relied on by the applicant, it must be held that the Board of Appeal was correct to find, in paragraph 51 of the contested decision, that those surveys were not capable of proving that the mark applied for had acquired distinctive character throughout the European Union in respect of a significant part of the relevant public. The surveys were conducted in 10 EU Member States, namely Denmark, Germany, Estonia, Greece, Spain, France, Italy, Poland, Portugal and the United Kingdom, even though the European Union had 27 Member States at the date on which the application for registration was lodged. It is true that the surveys in question concluded that the mark applied for had acquired a distinctive character in the 10 Member States where they were carried out, with the recognition rate being between 48% (Poland) and 79% (Spain); however, they did not establish that that was also the case in the other 17 Member States. The results of those surveys cannot be extrapolated to the 17 Member States in which no surveys were conducted."

So yet another warning on the value of survey evidence in trade mark proceedings.  If you are going to do them, make sure they show acquired distinctive character throughout the entire European Union.

Who is next on VirnetX's hit list?

Apple's $626 million patent troll battle:  Earlier this month, a jury in the Eastern District of Texas awarded $626 million damages to VirnetX Inc for Apple's willfull patent infringement of four patents said to be infringed by iMessage, FaceTime and other software. VirnetX, a patent holding company (many will read "patent troll") with about 80 patents in its portfolio sued Apple back in 2012.  During the first round, a jury had awarded VirnetX $368 million, but after Apple successfully appealed due to VirnetX's failure prove that the allegedly infringing feature was motivating consumers to purchase Apple's devices when it came to a question as to how to apportion royalties the Court of Appeals for the Federal Circuit vacated the damages award.  The case then went back to the Eastern District for retrial.  Unfortunately, the result was an increased jury award.   VirnetX is no stranger to Silicon Valley - having previously sued Microsoft (see here) and Cisco (which it loss - see here).

Oxford Nanopore Technologies' MinION
DNA sequencer - for when you
need to sequence DNA on the go!

Illumnia's latest lawsuit signals start of new gene-sequencing platform war:  On Tuesday, Illumnia announced in a press release that it commenced patent infringement actions with respect to US Patents Nos. 8,673,550 and 9,170,230 which they exclusively license from the UAB Research Foundation and the University of Washington.  The patents, goth entitled "MSP Nanopores and related methods" relate to methods for making and using nanopores as part of nanopore sequencing technology (a method for sequencing DNA - see article here).  The lawsuits, started in the US International Trade Commission (ITC) and the US District Court for the Southern District of California, have been brought against emerging UK-based company, Oxford Nanopore Technologies, one of the UK's highest valued companies who are developing and selling nanopore sequencing products. See district court complaint here and ITC complaint here.  Illumina, the giant in gene-sequencing, is reported to generate more than 90% of all DNA data.  The lawsuits mark the start of a battle of technology platforms with Illumina's larger sequencing instruments battling Oxford Nanopre's MinION - a much smaller, pocket-sized sequencing instrument (see picture here).  For an interesting analysis on the suit and Illumina's market position, see this illuminating (har!) blog post by Mick Watson (in his personal capacity - but also the Director of Ark-Genomics at the Roslin Institute, University of Edinburgh).  For more information, see this excellent article in MIT's Technology Review.

MARQUES - putting a finger on hot topic trade mark issues

Arbitrating trade marks and want to know more?  Look no further than the upcoming MARQUES course on 19 April 2016 that will examine the fundamentals of and practical tips on the issues on arbitrating and mediating trade marks.  The event, being held in London at the offices of Bristows LLP, will devote the morning to arbitration with insight provided by arbitrators and the Director of the WIPO Arbitration and Mediation Center, Leandro Toscano.  As the announcement continues:

"The afternoon session will consider the fundamentals behind mediation of trade mark disputes and when it might be appropriate. Delegates will hear the perspective of both a mediator as well as that of a lawyer representing a client at mediation and how a lawyer can help. How to mediate trade mark disputes in the US will be discussed and a speaker from OHIM will present about using their mediation service."

For more information please click here.