Never Too Late: If you missed the IPKat last week!

It was a busy week on The IPKat! If you could not keep up, then join this Kat in catching up with a summary of what you missed (hopefully while sunbathing at the beach).

Geographical Indications and Unfair Competition

Anastasiia Kyrylenko reported on the recent opinion of Advocate General (AG) Campos Sánchez-Bordona regarding the European Commission's competences in the examination of geographical indication applications (case C-579/23 P). AG opined that the Commission's role is not limited to a formal examination; it has the power to reject an application that has been approved by a member state's relevant authority. Additionally, the Commission can disagree with these authorities on the issue of a new application evoking an earlier geographical indication.

Marcel Pemsel examined the German Supreme Court’s decision on an advertisement featuring a “climate neutral” theme. The court found Katjes Fassin’s claim of a “climate neutral product” to be misleading, as the public’s perception of the claim did not correspond with reality. The court concluded that increased environmental awareness encourages consumers to prefer environmentally friendly products, and misleading claims about production processes can constitute unfair competition. Katjes Fassin’s production process was not emission-free, the company merely compensated for the emissions, a fact acknowledged on its own website. Given the high level of awareness of the average consumer, the court ruled that claiming the production process was emission-free when, in fact, emissions were only compensated for (not eliminated) was misleading.

Anna Maria Stein commented on the decision of the Court of First Instance of Venice in the case between the Consortium for the Protection of Balsamic Vinegar of Modena and two Italian companies. The court was asked to decide whether the terms “Aceto” and “Balsamico”, which are parts of “Aceto Balsamico di Modena” (a protected geographical indication (GI) in Italy), are generic. Referring to the case law of the Court of Justice of the EU, the court found that the use of “Aceto” and “Balsamico” did not infringe the relevant GI, as the term “balsamic” was merely used to describe the flavour. Therefore, the products in question could not be associated with the geographical area of Modena. The court further decided that the use of the names “Balsamico di” and “Ristretto di Balsamico” was in breach of EU Regulation 1169/2011 due to the confusing and unclear indications on the products’ labels. Moreover, as the dressings were not produced according to the definition in Art. 49 of Law No. 238/2016, it was deemed an inappropriate use of a legal denomination, i.e., vinegar. Finally, the court stated that the actions of the two companies constituted unfair competition and were contrary to professional correctness under Art. 2598 of the Italian Civil Code. Consequently, an injunction was issued preventing the companies from using “Balsamico di …”, “Ristretto di Balsamico” and the word “vinegar” in their labelling and advertising.

Patents

Image by Riana Harvey

Rose Hughes reported on the 2024 Guidance Update on Patent Subject Matter Eligibility, Including on Artificial Intelligence issued by the USPTO. The new version of the Guidance updates the 2-step approach for determining patentability, particularly in the context of AI inventions. According to the updated Guidance, inventions involving the use of AI models need to include additional elements that incorporate the use of the AI model into a specific practical application. This requirement likely aims to prevent the granting of patents for AI outputs that lack sufficient inventive input.

Guest UPCKats, Agathe Michel-de Cazotte, Hiske Roos, and Laura Mikkelsen (Carpmaels) discussed the surprising flexibility shown by the UPC Court of Appeal in AIM Sport Development AG v Supponor regarding a rule of procedure. The Court of First Instance had issued a preliminary injunction by way of provisional measures and a permanent injunction in favour of Supponor. According to the relevant provision (Rule 224.1(b) RoP), AIM was required to file its appeal against the preliminary injunction within 15 days of order. However, AIM submitted the appeal 2 months after the date of the notification of the decision, along with its appeal against the permanent injunction. Although the Court of Appeal confirmed that this would be the correct interpretation and application of the provision, it still considered AIM’s appeal timely and admissible due to the exceptional circumstances of this case.

Rose Hughes also analysed the Inventorship Guidance for AI-Assisted Inventions of the USPTO. As the USPTO believes that patents should be granted to “incentivize and reward human ingenuity”, the Guidance only provides patent protection for AI-assisted inventions to which a natural person has significantly contributed and treats that person as the inventor. Despite the several exemplary scenarios provided by the Guidance, there still seems to be room for interpretation as to whether the inventor of a specific AI model can qualify as the inventor of the output produced by that model.

Plant Varieties

Jocelyn Bosse reported on the decision of the Court of Bari (Specialised Business Section). The court invalidated the Italian plant variety right for “Sugraone” (a seedless table grape variety) because it did not meet the commercial novelty criterion, as it had been commercially exploited in the US before the grace period. The court was also asked to rule on a trade mark infringement claim, and decided that the use of the name “Sugraone” did not infringe Sun World’s trade mark. This was because consumers associated the trade mark “SUPER SEEDLESS” with Sun World’s grapes, not “Sugraone”.

Trade Marks

Katfriend Thato Moloto (Trademarkia) commented on a ruling by the High Court in Pretoria, South Africa, which was asked to decide whether the lack of a bona fide claim of proprietorship over a trade mark application amounts to filing in bad faith. The court clarified that even if an applicant’s good faith is not established, this does not necessarily imply that the applicant acted in mala fides, because of the apparent difference between an applicant who is simply ill-advised and one who is intentionally acting with malice.

Alessandro Cerri discussed a recent decision in a trade mark infringement case between Artessence FZC and Vinicio SRL. The most notable aspect of this decision was that it marked the first instance requiring an assessment of similarity between real-life products and their virtual counterparts. However, the Opposition Division of the EUIPO did not perform this comparison, and thus did not extend the similarity assessment to include real-life goods and services, and their virtual equivalents.

Katfriends Khalil Jurayev and Javohir Kurbonov considered a recent case in Uzbekistan regarding the validity of the trade mark “ICE LAND”. The government of Iceland claimed that the “ICE LAND” trade mark, registered by the company Premium Uzbekistan, was deceptive and had the potential to mislead consumers as to the geographical origin of its alcoholic beverages. The Appeal Board in Uzbekistan disagreed with these claims, finding that Uzbek consumers do not perceive the “ICE LAND” trade mark as a country’s name because, inter alia, the name of Iceland in Uzbek is “Islandiya”. Conversely, the Grand Board of the EUIPO had previously invalidated the trade mark “ICELAND” held by a supermarket chain due to the likelihood that EU consumers would perceive it as descriptive of the geographical origin of the goods.

Anna Maria Stein examined the decision of the EUIPO’s Board of Appeal regarding Porsche’s the trade mark registration application. Porsche had attempted to register an accelerating engine sound as a trade mark; however, after the initial refusal, the Board also confirmed that the sound in question was not sufficiently distinctive to qualify as a trade mark because it was a common sound made by electric vehicles.

Katfriend Darren Meale (Simmons & Simmons) presented the fourteenth volume of his Retromark update. This volume covered ten cases on various aspects of trade mark law, including the non-use period of a trade mark and trade mark acquiescence, platform liability, taking unfair advantage of the goodwill and reputation of another trade mark, the role of post-sale confusion in the assessment of likelihood of confusion, the difficulties of proving acquired distinctiveness for colour marks and maintaining their registration, the relevance and different impacts of an “honest difference of opinion” on counterfeit goods and trade marks that give rise to likelihood of confusion, diminishing the distinctiveness of a trade mark, and the effects of coexistence agreements. The Retromark update also listed the infamous Lidl v Tesco case, in which the Court of Appeal (England and Wales) reversed the copyright infringement finding but reluctantly upheld the trade mark infringement ruling; the Lifestyle Equities v Amazon case, where the UK Supreme Court confirmed that Amazon US was targeting UK consumers; and the commonly misunderstood Supermacs v EUIPO case where, the General Court of the EU merely stated that McDonalds’ use of its mark did not extend to its restaurant services and therefore, McDonalds was not denied the right to use the name “Big Mac” in the EU for its meat products, including chicken burgers.

Trade Secrets

Kevin Bercimuelle-Chamot recommended reading the WIPO Guide to Trade Secrets and Innovation, finding it to be a valuable resource that is detailed, educational, approachable and practical due to the examples it contains, and enhances the visibility of trade secrets in the IP world. However, it is emphasised that readers of the Guide should still refer to and consult the relevant local legislation, rather than relying solely on the Guide.

Book Reviews and Recommended Reading

Jocelyn Bosse reviewed the book Intangible Intangibles: Patent Law’s Engagement with Dematerialised Subject Matter by Professor Brad Sherman (University of Queensland). The book adopts a stance against the idea that “dematerialisation” is a distinct problem of the 21st century, and supports this position by examining three instances from US patent history.

Antonios Baris recommended 10 top-notch IP books that can be taken to the beaches. Here’s the list:

• Copyright and the Court of Justice of the European Union (Second Edition) by Eleonora Rosati
• Hashtags and Trade Marks – A Comparative Legal Approach by Nazanin Aslani
• Developments and Directions in Intellectual Property. Twenty Years of The IPKat edited by Hayleigh Bosher and Eleonora Rosati
• Commercialising Celebrity Persona by Emma Perot
• Intellectual Property and the Design of Nature edited by Jose Bellido and Brad Sherman
• Reforming Intellectual Property edited by Gustavo Ghidini and Valeria Falce
• Forever by Daniel J. Gervais
• Overlapping Intellectual Property Rights (Second Edition) edited by Neil Wilkof, Shamnad Basheer, and Irene Calboli
• Copyright and Cartography by Isabella Alexander
• The EU Geo-Blocking Regulation: A Commentary by Marketa Trimble

Antonios Baris also reviewed the book The EU Geo-Blocking Regulation: A Commentary by Marketa Trimble (William S. Boyd School of Law). The book provides commentary on the 11 provisions of the Geo-Blocking Regulation with an interdisciplinary approach, guiding readers in interpreting and applying them.

News and Opportunities

Annsley Merelle Ward notified IPKat readers about some opportunities and news, namely a job opening at the IP Federation, appointments of Adrian Howes as the new president of the IP Federation and Feryal Clark as the 17th IP Minister sitting at the UK Parliament, and the European Commission’s written intervention in the VoiceAge EVS v HMD Global dispute. For details, have a look at our AmeriKat’s latest post here.