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LimeGreenIP News

N.D. California Straightens Out Competitor’s Use of Infringing Hashtags: #newdevelopments in Using Trademarks as Hashtags

The Northern District of California recently released an order that sheds new light on how courts grapple with the constantly-increasing use of trademarks as hashtags.

Align Technology, Inc., provider of the Invisalign teeth-straightening-system, also produces the iTero Element intraoral scanner that allows dentists to obtain three-dimensional scans of a patient’s mouth, teeth, and gums. To complement this product, Align sells single-use protective sleeves that cover the portion of the iTero Element scanner inserted into a patient’s mouth. Strauss Diamond Instruments, Inc. produces a version of the protective sleeve meant to compete with the sleeves produced by Align.

Align sued Strauss in federal court for preliminary injunctive relief to enjoin, among other activity, Strauss’ allegedly infringing use of “#invisalign” and “#itero,” both of which are Align’s registered trademarks, in various advertisements. On April 12, 2019, the Court granted Align’s motion in part, granting a preliminary injunction on Strauss’ use of the hashtags.

Applying the 9th Circuit’s nominative fair use analysis, from New Kids on the Block v. News Am. Pub., Inc., 971 F.2d 302 (9th Cir. 1992), the Court held that Strauss’ use of the hashtags did not qualify for protection. First, Strauss used the marks to refer to its own products, not Align’s products, which is “the foundational assumption of nominative fair use.” Strauss had used Align’s marks scattered among hashtags referring to its own products and general hashtags about dentistry and attractive teeth, which, taken together with the image these hashtags accompanied, overall referred to Strauss’ product.

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M&A 2018 in Review and 2019 Outlook: IP in the mix

Around the globe and across a wide variety of industry sectors, our IP practice collaborated with our corporate and other practice areas of our firm to provide integrated legal services for our clients and friends on exciting, challenging, and innovative M&A transactions, and shared many successes throughout 2018. Once again, your transactions propelled Hogan Lovells to top 10 M&A rankings globally, as well as top 10 rankings in Europe, Asia-Pacific, the United States, the United Kingdom, Germany, France, and Russia.

We are pleased to share with you our 2018 M&A Year in Review which includes our 2019 M&A Outlook and highlights several of our shared successes. Our IP practice collaborated in many of these transactions including:

Aerospace, Defense, and Government Services

  • We advised KBR, Inc. on its US$355m acquisition of SGT, Inc., an engineering, mission operations, scientific, and IT service solutions provider to the U.S. government
  • We advised Smiths Group Plc, a leading technology-driven global engineering company, on its US$345m acquisition of United Flexible, Inc., a maker of parts for aircraft engines, from private equity firm Arlington Capital Partners.

Automotive and Mobility

  • We advised Daimler on the creation of a joint venture with BMW to form Europe’s leading innovative mobility services business.
  • We advised FlixBus on the international roll-out of its services into other markets, including the acquisitions of numerous ticket platforms and bus companies across Europe, its expansion into the railroad business, and its entry into the U.S. market.

Consumer

  • We advised global commerce leader eBay on its acquisition of the Japan business of Giosis Pte. Ltd., including the Qoo10.jp platform.
  • We advised Walmart Inc. on its US$16bn acquisition of a 77% stake in Flipkart Group, a prominent India-based e-commerce marketplace company.

Life Sciences

  • IPMT collaborated on our annual LS&HC Horizons publication, a compilation of our global team’s perspectives on more than 30 hot topics impacting the industry such as digital health, cell and gene therapies, drug pricing, and M&A trends.

Diversified Industrials

  • We advised Honeywell on its approximately €425m acquisition of warehouse automation solutions provider Transnorm from IK Investment Partners.
  • We advised SABIC, a global leader in diversified chemicals, on its landmark joint venture with ExxonMobil.

Financial Institutions

  • We advised GE Capital, the financial services division of General Electric (GE), on the sale of a US$1.5bn health care equipment finance (HEF) portfolio from GE Capital’s HEF business to TIAA Bank, a provider of nationwide banking and lending services. Additionally, we advised GE Capital on a five-year vendor financing agreement with TIAA Bank for U.S. customers of GE Healthcare.
  • We advised long-standing clients Lloyds Banking Group and Scottish Widows on the acquisition of Zurich’s UK workplace pensions and savings business.

TMT

  • We advised Adobe Inc. on its US$1.68bn acquisition of Magento Commerce and its US$4.75bn acquisition of Marketo, Inc. The Marketo transaction is Adobe’s largest acquisition to date.

Read the full report here


For more analysis, visit Deal Dynamics, our M&A data tool featuring interactive maps and deal tables of cross-border M&A activity by market and industry sectory with editorial content providing insights on the most recent trends in cross-border M&A.

Influencer promo guide: Best practices for drug and device firms

In our “Influencer promo guide: Best practices for drug and device firms”, we offered a list of best practices for medical device and pharmaceutical companies interested in taking advantage of the benefits of social media influencers for advertising their products, while adhering to FDA regulations. How can these companies be mindful of FDA rules while partnering with influencers? The below points, pulled from our guide, are tailored to address your most pressing concerns.

Get familiar with the latest FTC disclosure requirements for influencers and marketers.

In 2017, the FTC sent over 90 letters to influencers reminding them to be compliant in their Endorsement Guidelines, which illustrates the FTC’s monitoring of misleading social media advertising. The guidelines require clear and conspicuous disclosure of any relationship between the influencers and the company. Disclosure should tell the full story of the influencer’s connection to the brand in ways that avoid ambiguity, such as a hashtag that says, “#thanks(company’s name). Further, setting a social media post to “sponsored posts” is not sufficient in disclosing the influencer–brand relationship, but adding a “#ad” hashtag constitutes sufficient disclosure.

Brands should be truthful in their advertising when working with social media influencers.

Following from the above point, a staple of the FTC’s disclosure guidelines is truthful advertising. A social media influencer cannot endorse a product he or she has not used, disliked, nor can they make unsubstantiated claims.

Given the high stakes involved in advertising of healthcare products, companies should clarify the terms of their engagement with their influencer in a written contract.

Such a contract protects the company from misleading the public and establishes the company’s expectations for the influencer’s engagement. The contract should include requirements for use of- and content in- sponsored posts, requirements of pre-approval and timing of posts, and requirements of compliance with FDA regulations.

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EU: “Der Grüne Punkt” is not a trademark used for packaged goods

“Der Grüne Punkt” is a concept that presumably everyone in Germany is familiar with; recently, the financing symbol for participation in the dual collection and recovery systems was the subject matter of proceedings before the General Court (GC). The General Court’s main task was to examine the question of whether proven use of the trademark on packaging is sufficient to prove that the trademark is, at the same time, also used for the packaged goods themselves.

Background

In 1996, Duales System Deutschland GmbH registered “Der Grüne Punkt” and the corresponding figurative sign with the European Union Intellectual Property Office (EUIPO) as a EU collective mark. Subsequently, the company granted licences in the trademark to third parties for participation in a dual disposal system for product packaging. After the Cancellation Division of EUIPO had partially granted an application for revocation of the trademark due to non-use, the proprietor of the trade mark filed an appeal against the revocation, which was initially unsuccessful. Its subsequent action before the General Court was directed against the dismissal of the appeal.

Decision

The action brought by the company was also unsuccessful. According to the General Court, the relevant public merely perceives the trademark “Der Grüne Punkt” used on sales packaging to be an indicator that the packaging in question can be collected and recovered by means of a special waste disposal system, but not an indicator of a use of the trademark for the packaged goods themselves.

With this finding, the GC countered the Plaintiff’s arguments. The Plaintiff had essentially stated that the documents it submitted proved that the trademark in dispute is used commercially both for the packaging of the goods and for the packaged goods themselves, and that this constituted genuine use of the European Union trademark within the meaning of art. 15(1) of Regulation (EC) No 207/2009 (now article 18(1) of Regulation (EU) 2017/1001).

The GC found that, based on the perception of the relevant public, there was no genuine use of the trademark “Der Grüne Punkt” in accordance with its main function, namely to guarantee the origin of the goods in dispute. The GC held that it is true that the trademark in dispute refers to the fact that the manufacturer or distributor of the goods in question is part of the Plaintiff’s licence agreement system and thus points to a certain ecologically minded behaviour on the part of that company. However, according to the GC, the relevant public is certainly capable of distinguishing between a trademark that points to a product’s commercial origin and a trademark that indicates the recovery of packaging waste that has been emptied and used, especially since the products themselves are frequently identified by trademarks belonging to different companies, and that the use of “Der Grüne Punkt” therefore pertained solely to the packaging of goods. Continue Reading

Spring fever at the IP Lounge 3.0 on influencer marketing

On 11 April 2019 our Düsseldorf office hosted its third IP Lounge. The IP Lounge is an event planned and hosted by our younger associates and particularly addresses “Young Professionals” to provide a time and place to get to know each other and exchange ideas.

This time, the hot-topic “Influencer-Marketing” was discussed. Dr. Ricarda Braun, Kerstin Jonen and Dr. Martin Adrian Koch provided a very interesting insight into the backgrounds of influencer-marketing, the legal provisions discussed in this regard and the German, currently quite inconsistent case law. Furthermore, Kevin Tewe from the Artist Management Agency TEWE MEDIA GmbH and Helena Wöscher from Springlane gave interesting insights into their everyday work for and with influencers. Last but not least, Nico Kuhlmann, Lea Prehn, Anja Pecher and Lisa Harz presented their Influencer App which they developed in the course of the Hogan Lovells Legal Tech Hackathon (watch the highlights from the 2018 Hackathon here).

The evening ended with a flying buffet and interesting conversations while enjoying the great view from the Hogan Lovells Sky Office over Düsseldorf.


Last month, we launched a guide outlining a list of best practices on how to achieve compliance while working with social media influencers to promote your products and services online.

You can download the guide here

Hogan Lovells’ U.S. + Germany Patent Update

Hogan Lovells’ U.S. + German Patent Update reports on recent patent news and cases from Germany and the United States. The most recent update is available in English here. This update covers the following developments across the U.S. and Germany:

United States

  • PTAB Has Discretion to Join Parties and New Issues in “Limited Circumstances” – Proppant Express Investments, LLC v. Oren Technologies, LLC (13 March 2019)
  • PTAB Establishes New Precedent and Pilot Program for Motions to Amend – Lectrosonics, Inc. v. Zaxcom, Inc. (25 February 2019, Designated Precedential 7 March 2019)
  • PTAB May Evaluate Validity of Proposed Substitute Claims on All Statutory Grounds – Amazon.com, Inc. v. Uniloc Luxembourg (18 January 2019, Designated Precedential 18 March 2019)
  • Live Testimony Permissible at PTAB Oral Hearings in Limited Circumstances – K-40 Electronics, LLC v. Escort, Inc. (21 May 2014, Designated Precedential 18 March 2019) and DePuy Synthes Products, Inc. v. Medidea, LLC (23 January 2019, Designated Precedential 18 March 2019)

Germany

  • Recall of Infringing Products Is Disproportionate Remedy If Future Patent Infringement Can Be Avoided by Design-Around, 15 U 43/15 (Higher Regional Court Düsseldorf) – “Heated Floor” (“Beheizbarer Boden”)
  • German Federal Supreme Court on Validity of Transfer of Priority Rights, X ZR 14/17 (Federal Supreme Court) – Wireless Communication Network
  • Higher Regional Court Düsseldorf on Entitlement of Co-Inventor to License Out Patent, I-15 U 2/17 (Higher Regional Court Düsseldorf)  – Flammpunktprüfung
  • Antibiotic Substance Not Patentable If Inevitably Obtained Through Process Suggested by Prior Art X ZR 110/16 (German Federal Supreme Court) – “Rifaximin α

For more information, please click on the link with the detailed update, or contact partners Joe Raffetto or Steffen Steininger.

DSM Watch: EU Copyright Directive clears the finish line

Today the Council of the European Union adopted the EU Copyright Directive (the “Directive”), ending a negotiation process which first started with the Commission’s proposal for a new Directive in early 2016. After publication in the Official Journal of the EU, Member States will have two years to implement the Directive. In Council the UK voted to adopt the Directive, but it’s by no means certain that the UK will implement it. If the UK leaves the EU without a deal it will not be bound to do so, nor will it if any “deal” transition period expires before the Directive implementation period expires.

The Directive is the most substantial revision of EU copyright laws in years and will shape the digital market for years to come. It is aimed at modernising for the digital age and further harmonising EU copyright laws. Key changes include revising the exceptions to infringement; reinforcing the position of rightholders in relation to the use of user-uploaded content by online content sharing services; creating a new right for press publishers in relation to the use of their content online and giving increased protections to authors and performers. Our run down of the whole text is here, with deep dives on the provisions relating to online content sharing services (Article 15) and the new press publishers’ right (Article 17), here and here.

District Court of Hamburg: Swabian whisky not allowed to use the word “glen” in its name

Since 2013, the Scotch Whisky Association (SWA) has tried to prohibit the Swabian whisky producer Waldhornbrennerei, which is based in Berglen near Stuttgart, from using the trade mark “Glen Buchenbach”. After the case was referred to the CJEU, the District Court of Hamburg [Landgericht – LG] ruled in favour of the Scottish association, stating that “glen” suggests to the average consumer that the whisky in question is Scotch whisky.

Background

The SWA is an organisation incorporated under Scottish law that is committed to protecting and promoting the trade with Scottish whisky. Its members produce around 95% of Scotch whisky sold worldwide. The Berglen-based distillery being sued distributes – primarily via the Internet – a Swabian whisky under the name “Glen Buchenbach”, which consists of the Gaelic word “glen” (meaning “narrow valley”) and the name of the stream Buchenbach, which runs through the Buchenbach Valley in the town of Berglen. The SWA is of the opinion that the use of the word “glen” is misleading and has therefore filed a cease and desist claim.

Decision

The District Court of Hamburg granted the complaint, arguing that, ultimately, the description “glen” is misleading and that the Plaintiff therefore has a cease and desist claim against the Defendant.

The decision was preceded by a request for a preliminary ruling, in the context of which the District Court of Hamburg submitted to the CJEU several questions regarding the interpretation of art. 16 of Regulation (EC) No 110/2008 on the definition, description, presentation, labelling and the protection of geographical indications of spirit drinks and repealing Council Regulation (EEC) No 1576/89.

Referring to the corresponding judgment of the CJEU of 7 June 2018 (C‑44/17), the District Court of Hamburg initially found that arts. 16 (a) and (b) of Regulation No 110/2008 were not violated. With respect to art. 16 (a), the court stated that the description “glen” is neither a protected geographical indication nor a form that is a phonetically and/or visually very similar to the actually protected geographical indication “Scotch whisky”. With respect to art. 16 (b), the court found that there was no misappropriation or unlawful imitation of, or allusion to, the registered geographical indication. The court held that the fact that the word “glen” can trigger a chain of associations, thus leading the public to assume that the whisky in question is a Scotch whisky, is not sufficient according to the jurisprudence of the CJEU. Continue Reading

The Curse of Shoeless Joe Continues: TTAB Finds White Sox Fan Lacked Bona Fide Intent-To-Use

For any baseball fans already preparing to capitalize when their favorite team wins their next World Series game, you may strike out before getting up to bat at the Trademark Trial and Appeal Board (“TTAB”) in the United States Patent and Trademark Office (“USPTO”). In a recent precedential decision, the TTAB found that “a mere hope that an alleged condition precedent to using [a] mark – the Chicago White Sox winning the World Series – would occur someday” is insufficient to show bona fide intent-to-use.

William Yedor filed an intent-to-use application on February 26, 2016 for the mark MIRACLE ON 35TH STREET for “paper goods and printed matter, namely, posters, photographs, lithographs, post cards” in Class 16 and “clothing, namely, T-shirts, sweatshirts, caps, jackets” in Class 25. A&H Sportswear Co., Inc. opposed this application on likelihood of confusion and dilution by blurring grounds based on their numerous MIRACLE-formative registrations for apparel goods in Class 25. A&H Sportswear moved for summary judgment on their claims.

The TTAB granted A&H Sportswear’s motion for summary judgment, finding that Yedor failed to produce objective evidence of his bona fide intent-to-use the mark on the covered goods.

“The evidentiary bar for showing bona fide intent to use is not high,” the TTAB emphasized, but “more is required than a mere subjective belief” and “objective evidence must indicate an intention to use the mark that is firm and demonstrable.”

Yedor stated that he “intends to sell T-shirts, owns the domain name whitesoxshirts.com, has one shirt design, gave friends and family a ‘prototype T-shirt’ in 2005, and plans to build a website in the event the Chicago White Sox win the World Series,” but only produced one image of a prototype T-shirt he designed in 2005, eleven years prior to his application’s filing date.

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Alternative to interlocutory injunctions? Shanghai IP Court innovates with a “partial judgment” on patent infringement

Earlier this year, the Shanghai IP Court (“Court”) handed down an interesting judgment in a patent infringement case between a French car parts manufacturer and three Chinese defendants (two Xiamen, Fujian Province based companies and an individual). On 27 March 2019, upon appeal, the IP Court of Appeal at the Supreme People’s Court upheld the judgment. The judgment is interesting not so much for its outcome, but for the procedural discretion employed by the Court. That is, instead of handing down a complete judgment on infringement and damages following the end of court proceedings – which would be typical – the Court instead issued a “partial judgment” on the infringement claim, while granting the plaintiff’s petition to calculate the amount of damages to be awarded at a later date in time. This is a promising result for IP owners who can have the issue of infringement decided more quickly, and could represent the beginning of a more viable strategic alternative to applying for interlocutory injunctions.

The case

The facts of the case were as follows: the French claimant brought a patent infringement suit against the defendants for alleged infringement of its invention patent, which protects a certain type of connector piece used on vehicle windshield wipers. Given the substantial amount of evidence, the technical complexity involved in the calculation of damages, and in light of the ongoing harm to the plaintiff’s business interests caused by the infringement, the claimant petitioned the Court for an advance partial judgment on just the issue of the infringement, with the hope that a permanent injunction would be ordered immediately by the Court.

The Court ruled that such a petition had a sufficient legal basis under Article 153 of the Civil Procedure Law, which provides that when “…some of the facts in a case being tried…are already evident, the court may pass judgment on that part of the case first.” Following a determination that the products fell within the scope of the plaintiff’s claims (with additional assistance of a Court appointed technical expert), the Court applied Article 153 and granted an advance ruling on infringement, ordering the defendants to immediately cease sales and manufacture of the infringing product, while the judgment on damages would be issued at a later time.

Practical benefits of advance partial judgments Continue Reading