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

If you missed out on The IPKat during your summer holidays and want to catch up on some IP news or discover exciting opportunities and events, then join this Kat for a summary of what you missed.

Geographical Indications

Anastasiia Kyrylenko commented on the Munich’s Higher Regional Court's decision in the Habana II case (6 U 120/22), which is now finalised. The court was asked to determine whether "Habano" had become a generic term and whether it had a special reputation that was exploited by the defendant. In addressing the first issue, the court emphasised that proving the generic character of a geographical indication requires evidence demonstrating that only a very small portion of the public perceives the designation as a reference to the geographical origin of the relevant goods, and consequently did not find the defendant's claims sufficient to consider "Habano" a generic term. Regarding the second issue, the court assessed the reputation of "Habano" in accordance with Article 127(3) of the German Trade Mark Act and concluded that the defendant had been taking advantage of the geographical indication’s attraction, reputation, and prestige, and exploiting its distinctive character. These findings were also reaffirmed by the German Federal Court of Justice (BGH).

Trade Marks

Marcel Pemsel discussed a case currently pending before the EU General Court, where OMV Aktiengesellschaft is fighting for a trade mark consisting of a combination of gentian blue (RAL 5010) and yellow green (RAL 6018) (Case T-38/24). Although the Court of Justice of the EU, in principle, does not consider colour combinations to be inherently distinctive trade marks, the EUIPO tends to find such combinations distinctive. However, in OMV's case, due to special circumstances (i.e., the customary, non-distinctive uses of the said blue and green), the EUIPO's Board of Appeal did not find the combination of two non-distinctive colours to be distinctive and concluded that OMV's trade mark lacked distinctiveness. The EU General Court will now render its decision on the case.

Patents

Image by Riana Harvey

Rose Hughes explored the mystery behind OpenAI’s IP strategy. OpenAI is renowned for its stance against patents, justifying this by claiming that patents hinder the transparent development of AI technology. Consequently, it asserts that its large language models are protected as trade secrets. However, our PatKat, while hunting for patent news, discovered that over the past 2 years, OpenAI has been making patent applications for the primary use cases of ChatGPT. Furthermore, our PatKat pointed out that if the goal is to ensure transparency, relying on trade secrets is not the best approach, while holding patents is, mainly due to the publication requirement inherent in patents.

Designs

Marcel Pemsel commented on the preliminary reference to the Court of Justice of the EU (CJEU) made by a Spanish court regarding the different aims and unique characteristics of design and copyright protections (Case C-323/24). The CJEU was essentially asked whether there should be a “genuine design activity” or “an individual character” for a specific design to be protected and who qualifies as a designer under the Community Design Regulation, and whether - and if so, to what extent - fashion trends impact the free choices made by designers. It remains to be seen how the Advocate General and the judges of the CJEU will respond to these questions; however, in the meantime, you can check out our Kat’s comments on these issues.

News, Events, and Opportunities

Katfriends at Newton Media informed The IPKat readers that the Life Sciences Patent Network (LSPN) North America Fall 2024 conference will be held on 15-16 October. This year’s conference will feature numerous speakers from pharmaceutical and biotech companies, including Johnson & Johnson, Pfizer, Bristol Myers Squibb, Illumina, 10x Genomics, and BioMarin. The topics will cover the most challenging issues facing life sciences, such as AI and machine learning in drug discovery, and the evolving role of IP lawyers within life sciences. Additionally, the organizers have kindly offered a 15% discount to IPKat readers - another reason not to miss the conference!

Rose Hughes notified The IPKat readers about several opportunities, events, and news. Job opportunities include the WIPO Young Experts Program, postdoctoral researcher positions at Tilburg University and University of Luxembourg, and a paid internship at Ericsson. Upcoming events include several webinars and courses to be held by Assimilate IP and INTA, the oriGIn 2024 Expert Meeting, and a call for papers for APCA’s and the School of Law at City University of Hong Kong’s joint conference. Finally, there are two news items: one from the UKIPO, which is piloting its new digital patents service, and another from WIPO, which is launching its policy framework "IP-YES!”. For details and further events, have a look at our PatKat’s latest post here.