From October 2016 to March 2017 the team is joined by Guest Kats Rosie Burbidge and Eibhlin Vardy, and by InternKats Verónica Rodríguez Arguijo, Tian Lu and Hayleigh Bosher.

Friday, 20 May 2016

Friday Fantasies

 The IPKat, India bound
India's new Intellectual Property Policy. The IPKat has been racking up the airmiles over the past week, investigating the Indian government's new IP policy. The policy promises to streamline the processes for applying for trade marks and patents and establish specialist courts for IP disputes.  The policy lists several key objectives, including:
  • To modernize and strengthen IPR administration.  In particular, Finance Minister Arun Jaitley has pledged to reduce the time period for registering a trade mark to one month by 2017.
  • To strengthen the enforcement and adjudicatory mechanisms for combating IPR infringements.   
Many thanks to Katfriend R.S. Praveen Raj, a former patent examiner for the Indian government, for informing the IPKat about this development. You can read the full policy here.

Paramount Pictures opposes trade mark application by shoe emporium:  Paramount says it has been using its trade mark since 1972. The Sneakerdon applied to register its trade mark in the US in August 2015. Paramount Pictures has opposed Sneakerdon's application. Sneakerdon may try the parody defence, but this is always a difficult argument before the USPTO. It may be that that Snearkerdon's application will shortly be resting with the fishies.... 

IP gets a mention in the Queen's Speech:  At the State Opening of Parliament, the Queen announces the laws that the government hopes to get approved by Parliament in the coming year. This year's speech, given earlier this week, promised to bring in a new bill to tackle unjustified threats relating to IP rights.  Yesterday, Baroness Neville-Rolfe, Minister for IP, introduced the Intellectual Property Unjustified Threats Bill in the House of Lords (track the status of the Bill here).  According to the IPO's e-mail update the Bill will:
She who wears the crown,
said very little about IP
this year....
"help create an IP environment that favours negotiation and settlement rather than litigation. It proposes changes that help clarify the existing provisions making the provisions more consistent across the relevant IP rights - patents, trade marks and designs."
Key elements of the Bill include:

• protecting retailers, suppliers and customers against unjustified threats
• bringing the law for trade marks and designs into line with that for patents by allowing a rights holder to challenge someone who is a primary actor without fear of facing a groundless threats action
• protecting professional advisers from facing personal legal action for making threats when they act for their clients
• making the necessary changes to threats law so that the protection against unjustified threats can apply to European patents that will come within the jurisdiction of the Unified Patent Court
Thanks to Robert Watson at Mewburn Ellis LLP for spotting this in the Queen's Speech and Vicki Salmon (IP Asset) for flagging the IPO's statement.  If you have any questions please feel free to email them to

AIPPI Trade Mark Reform seminar:  
As summarized in the guest post earlier this week, AIPPI's seminar on the Trade Mark Reforms elicited a great deal of debate and discussion.  If this left you wanting more, you can delve back into the detail of the evening via a guest contribution from Alex Woolgar (Allen & Overy) which has been posted on the MARQUES Class 46 blog here.

WIPO's roving seminar takes them to France:  The IPKat is pleased to announce an excellent (and free) opportunity to learn about WIPO and network with like minded professionals at two events being held in France - the first in Paris (7 June 2016) and the second in Lille (9 June 2016).  Presentation and event materials will be in French. For more information and to sign up click here.

Fancy contributing to the Kat. Be it by Guest Post or Comment, have a quick read of our policies here and get writing/commenting.


Kant said...

The best of luck to the legislators for achieving their aim in respect of unitary patents. If a defence under §70C is that the act constitutes an infringement but only the UPC can determine whether the act is an infringement, how would the UK court decide if the defence has merit or not?

Darren Smyth said...

Dear Kant - I don't think this is a problem. Only the UPC can hear an infringement action, but that is not the same as "only the UPC can determine whether the act is an infringement" - a threats action is not an infringement action. UK courts already have the power to decide whether something is an infringement under "foreign" law, as can happen for example in the case of licence disputes. I don't see that this should be any different.
Best wishes, Darren

spacecadet said...

Re: sneakerdom. is paywalled.

Nick Smallwood said...

Hi Spacecadet - the story is covered in slightly more details here:

Kant said...

Darren, that is of course a point of view but another is that Art. 32(1) of the unitary patent agreement gives the UPC exclusive jurisdiction in respect of actions for actual or threatened infringement and so the UK court has no competence is this respect.

Darren Smyth said...

Dear Kant
I think the point of view that you put forward is very strained.
The actions referred to in Art 32(1) UPCA are:
Actual infringement - patentee sues someone for acts that they have committed that are alleged to have infringed the patent
Threatened infringement - patentee sues someone for acts that they have not yet committed but might do (threaten to commit), that are alleged to have infringed the patent (what in England is referred to as a quia timet action)
Neither is the same as an unjustified threats action, which is someone sues patentee for a threat made by the patentee that the patentee will sue in a situation where there is allegedly (according to the person bringing the action) no patent infringement
More practically, since the UPCA has no provisions for unjustified threats, but the UK Patents Act does (and if the Bill is passed into law these provisions will extend to unitary patents), I think that the UPC will hear cases of actual or threatened patent infringement, and UK courts will hear actions for unjustified threats, quite happily in parallel without any problem. I sincerely doubt that a UK court will entertain the idea that they are not competent to hear the threats action, and I equally doubt that the UPC will entertain a threats action for which there is no legal basis in the UPC. Of course if the patentee wants to counter-claim for infringement of a unitary patent, they would not be able to do so in the UK, and would have to go to the UPC, and there is the possibility in such a case that the threats action might be stayed pending the outcome of the UPC action. But if there is no counter claim, it would remain a UK-only matter.
Best wishes

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