Around the IP Blogs

We say goodbye to 2021 with the most interesting posts and articles from the surrounding IP blogs of the past week!

TRADE MARKS

Lise Charles (WTR) provides an overview of the most-read posts on Word Trademark Review (WTR) on European trade mark case law over the past year, including analyses of cases dealing with issues such as unconventional signs (i.e., colour marks and 3D marks) (MHCS v EUIPO | Case T-274/20 and Guerlain v EUIPO | Case T-488/20), the risks of using a mark in a manner other than that registered (Fashioneast Sàrl v EUIPO | Case T-297/20) and taking unfair advantage of the reputation of a well-known mark (Asolo Ltd. v EUIPO | Case T-509/19) and the importance of presenting valid arguments for the existence of a link between the marks - even in the case of marks with an exceptional reputation (Puma v EUIPO | Case T-71/20).

Verena von Bomhard (BomhardIP) presented a summary of trade mark cases before the EU Courts in Luxembourg from 2021. The analysis also referred to a pending case before the CJEU dealing with Community design law (EUIPO v The KaiKai Company Jaeger Wichmann | C-382/21-P) and other EU trade mark cases from 2021. The search for EUTM case law before EU Courts from the previous year was based on decisions included in the eSearch Case Law database. Specifically, 130 decisions dealt with relative grounds and half of them dealt with absolute grounds for refusal. Fifteen cases involved procedural issues and 17 cases dealt with issues of genuine use of trade marks or bad faith. Several cases were concluded without judgment.

The law firm Cohausz & Florack, based in Düsseldorf, discusses the enforceability of trademarks in Germany and reports on the national and international legal framework for registered and unregistered trademarks as well as on procedures, enforcement, change of ownership and transfer of rights, overlaps between trademark and copyright protection and online issues (i.e. disputes between domain names and trademarks).

COPYRIGHT

Giovanni Maria Riccio and Fabiola Iraci Gambazza (E-Lex law firm) reported on the recent publication of the European Audiovisual Observatory entitled "Mapping report on national remedies against online piracy of sports content", commissioned by the European Commission. The report provides a comparative perspective on the availability and functioning of notice and take-down procedures, removal and blocking injunctions, dynamic and live blocking injunctions, and de-indexing injunctions in the 27 EU Member States in relation to sports events. The comparative perspective has been established on the basis of a comprehensive review of EU law, the decisions of the Court of Justice of the European Union and case law relating to online piracy remedies, starting from the results of a questionnaire submitted to international experts from relevant institutions, universities and law firms.

The Fashion Law reports on a copyright dispute between Volvo and photographer Jack Schroeder and model Britni Sumida. The well-known company was sued in a California federal court last year for using photos Schroeder took of Sumida posing next to a Volvo S60 as part of a "global advertising campaign" on Instagram without her permission. The dispute raised questions about a long-debated issue, namely the unauthorized use of images first posted on Instagram and other social media platforms (particularly in light of social media platforms' terms and conditions that allow authors to grant an implied license to repost their works on the platform).

A recent example of how the metaverse will include digital fashion is the conflict between Hermès and MetaBirkins over allegedly trademark-infringing non-fungible tokens ("NFTs") that were marketed as MetaBirkins without Hermès' permission. Creator Mason Rothschild revealed in an open letter to Hermès, which he posted on his Instagram account on December 22, that he received a cease-and-desist letter from the French luxury goods brand. Julie Zerbo tells the rest of the story on The Fashion Law.

Aaron Moss has shared his personal “5 worst copyright decisions of 2021” with Copyright Lately readers to give them an overview of interesting copyright cases discussed in the United States over the past year.

Alina Trapova (The University of Nottingham) and João Pedro Quintais (Institute for Information Law (IViR)) have published the fourth and final trimester of the 2021 round-up of EU Copyright Law (you can read the first, second and third trimester editions here, here and here). The authors look at the state of play of the implementation of the new CDSM Directive, including the most recent examples of implementation (i.e. Ireland, Italy and Estonia). Another part of the round-up analyses EU copyright policy and mentions publications, meetings, resolutions, policy reports, statements and agreements of EU bodies and agencies and national IP offices. The final part of the round-up provides an update on the latest referrals to the CJEU and cases that will be decided in 2022.

PATENTS

Matthieu Dhenne (Ipsilon) discussed the difficulties caused by FRANDs in terms of choice of jurisdiction and the increasingly favourable position of French courts for SEP holders. The author referred to two decisions following the Paris Supreme Court's decision in XIAOMI v PHILIPS confirming this trend and stating that the Paris High Court has jurisdiction to set a global FRAND rate because the European Telecommunications Standards Institute (ETSI) is based in Nice (7 December 2021, [RG 20/12558] and [RG 20/12558]).

Miquel Montañá (Clifford Chance) reflects on the link between the European Patent Office (EPO) and the rule of law established by the European Patent Convention (EPC), and on the need to address practical issues that have often led the organs of the EPO to use some instruments that have placed it at some distance from the rule of law.

Dennis Crouch (University of Missouri School of Law) posted on the dichotomy between issues-of-fact and issues-of-law in US patent law. This bifurcated system leads to a curious dynamic in United States patent law, namely between (i) patent infringement (as a question of fact) and (ii) claim construction (as a question of law or a mixed question of fact and law) decided by a judge. The author presents a case pending before the Supreme Court Patent that addresses this question (Olaf Sööt Design, LLC v. Daktronics, Inc., et al., No. 21-438).