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LimeGreenIP News

Domain Names: .ME to allow IDN registrations

doMEn d.o.o., the Registry for the .ME country code Top Level Domain (ccTLD), has recently announced that it would soon allow the registration of Internationalised Domain Names (IDNs) under .ME.

IDNs are domain names that contain at least one non-ASCII character – for example, a character with diacritics like é, ü, ñ, or a Chinese character like 飛.

Registering IDNs is already possible in many ccTLDs such as Belgium (.BE), Brazil (.BR), China (.CN), Hong Kong (.HK), France (.FR), Germany (.DE), Greece (.GR), Hungary (.HU), Spain (.ES) or Tuvalu (.tv), and in most generic Top Level Domains (gTLDs).

The .ME Registry is planning to launch IDN registrations on 12 November 2018, allowing characters from the following languages: Arabic, Belarusian, Bosnian, Bulgarian, Chinese, Croatian, Danish, French, German, Icelandic, Italian, Hindi, Hungarian, Korean, Latvian, Lithuanian, Macedonian, Montenegrin, Polish, Portuguese, Russian, Serbian, Spanish, Swedish, Turkish and Ukrainian.

The .ME ccTLD was launched in 2008 and has proven quite popular since then.  By 2010, over 320,000 .ME domain names had already been registered, which made it the fastest selling debut TLD.  At the time of writing, according to DomainTools, the ccTLD counts over 892,500 registered domain names.  The launch of .ME IDNs will undoubtedly raise this number.


This post is selected from our Anchovy News publication: Anchovy® is our comprehensive and centralised online brand protection service for global domain name strategy, including new gTLDs together with portfolio management and global enforcement using a unique and exclusive online platform developed in-house. For more information please contact us at  anchovynews@hoganlovells.com 

China: New national-level Appeal Court – Cautious hopes for improved consistency and efficiency in high-tech IP / patent cases

On 26 October 2018, the Standing Committee of China’s National People’s Congress (NPC) issued a Decision setting out the establishment of a new IP Court of Appeals at the national level within the Supreme People’s Court (SPC). This Decision will come into effect on 1 January 2019.

The Decision provides that the SPC will have appropriate jurisdiction to handle: (1) all appeals against first instance civil judgments in technology-related IP cases and (2) all appeals against administrative judgments issued by the Beijing IP Court pertaining to invention and utility model patent cases (i.e. appeals against the rulings of the Beijing IP Court regarding Patent Review Board decisions). Technology-related cases here are defined as cases regarding invention and utility model patents, new varieties of plants, layout designs of integrated circuits, technical trade secrets, computer software and anti-trust cases, and thus do not include cases involving design patents  In other words, for patent cases and other cases involving complex technology, the appellant may bypass the higher/highest court at the provincial level altogether and appeal the intermediate or IP court’s ruling directly to the SPC. This is a groundbreaking event for IP in China as this NPC Decision essentially establishes a specialized IP appellate court (within the SPC) to specifically hear complex patent cases- which is akin to the role of the Court of Appeals for the Federal Circuit (“CAFC”) in the United States. Please find below an updated high-level view of the appeals process for Chinese IP matters (click to enlarge):

Even though the creation of a national level IP centric Court of Appeals has been a topic of great interest and discussion in China for quite some time, some aspects of the new IP Appellate Court still come as a surprise for most practitioners. Continue Reading

Legal landmines lie in wait for machine learning applications

An ever-increasing variety of companies are incorporating machine learning into their products and services. Machine learning provides the ability to quickly and accurately perform, in parallel, a large number of well-defined tasks. The accuracy will improve over time as additional data is obtained and the machine learning model continues to “learn”. Many companies, however, are struggling with the best way to protect machine learning and artificial intelligence innovation.

In machine learning, statistical models (ie, neural networks) are trained using a set of classified data. Once trained, the model can analyse unclassified data, such as images representing unidentified objects, and classify or generate observations for that data. A significant issue slowing widespread adoption of machine learning is the inability to access or determine the internal relationships or mechanisms by which machine learning generates these observations. Information about the initial configuration and training might be known, but trained models cannot “explain” in easily understandable terms how specific decisions were made.

Read the full article in IP Magazine which delves into the legal complexities of:

  • protecting the technology
  • data privacy
  • and bias – where the specific data used to train a machine learning model may result in unintended bias in the model’s decision making

For further information on the implications of Artificial Intelligence across industry sectors please visit our topic center

Big deals, big ideas, and big challenges spur TMT activity

This interview with Peter Watts takes a look into how intense innovation, diverse deal structures, and political protectionism are changing the face of M&A in the technology, media, and telecommunications space. Peter focusses on the following questions:

  • What are the main drivers for cross-border deals at the moment?
  • What do you think has been the most interesting deal of Q3, and why?
  • With innovation as a major driver of deals, do you feel that M&A is the best way for companies to nurture that kind of innovative spirit?
  • Does the drive for innovation differ across other sub-sectors?
  • What are the major challenges to M&A in the sector?
  • As we move towards 2019, what advice do you have for companies looking to do deals in the sector?

Access the full interview on our Deal Dynamics Market Insights resource here


For more analysis, visit Deal Dynamics our powerful interactive data tool with exclusive editorial content providing analysis and insights on cross-border M&A

Advocate General rejects copyright infringement in German Afghanistan Papers case

Can the Federal Republic of Germany invoke a copyright on military status reports? This is the key question currently before the European Court of Justice (CJEU) (Case Ref. C-469/17). But before the Court submits a ruling on the case, presumably in early spring 2019, Advocate General Maciej Szpunar published his Opinion on 25 October 2018. And his opinion is clear: The preliminary proceeding coming from Germany is already inadmissible and the German Federal Supreme Court (BGH) should refer the case back in order to clarify how and if copyright protection can be claimed. The Advocate General has significant doubts about this and asserts that a Member State could not justify applying copyright law on the ground of protecting freedom of expression and information in this particular situation.

Background

The so-called Afghanistan papers are at the center of the legal dispute. These include the weekly status reports prepared by soldiers on the deployment of the Bundeswehr (German Federal Armed Forces), especially in Afghanistan. Under the designation “Unterrichtung des Parlaments” (UdP; in English “information to the parliament”) they are forwarded to selected members of the parliament and are classified as the lowest of the four secret levels.

In 2012, the Funke Medien NRW GmbH, a media company which also operates the online presence of the newspaper Westdeutsche Allgemeine Zeitung (WAZ), applied unsuccessfully for access to the status reports since 2001. The reason for the rejection was security related. The WAZ nevertheless received the status reports via unknown channels and published them under the title Afghanistan Papers. The Federal Republic of Germany turned against the publication as the employer of the soldiers and sued Funke Medien NRW GmbH for injunctive relief due to an alleged copyright infringement on the status reports.

Both the Regional Court (Case Ref. 14 O 333/13) and the Higher Regional Court of Cologne (Case Ref. 6 U 5/15) concurred with the plaintiff’s view. Only the BGH had doubts and referred three questions to the CJEU to clarify the interplay of copyright law as well as freedom of information and freedom of the press within the framework of copyright limitations.

Opinion Continue Reading

Join Us at the Annual Berkeley-Stanford Advanced Patent Law Institute

Partner, Chris Mammen will be speaking at the the Advanced Patent Law Institute in Palo Alto on Dec 6-7, 2018. The APLI offers a results-oriented, in-depth look at the latest developments in patent law and practice. Co-organized by BCLT and Stanford Law School, it presents an expert faculty of judges, academics, litigators, patent prosecutors, and senior IP counsel from major corporations.

Chris will be discussing litigation financing. Even as the “patent troll” phenomenon has faded, litigation funding for patent cases seems to be growing. When should a patentee consider working with a litigation funder? How can you preserve privilege and work product while the funder conducts due diligence? How much can or should the funder be involved in managing (or settling) the litigation? Are there defense-side analogues to third party litigation funding? What other ethical pitfalls should you look out for when considering working with a litigation funder?

Other panels at the conference will cover the full range of patent law issues, including.

  • the impact of recent Supreme Court decisions
  • patentable subject matter
  • damages
  • venue
  • claim construction
  • PTAB strategy

See the full agenda here, register here and note discounted special registration link for ACC members.


CLE: UC Berkeley School of Law certifies that this activity has been approved for 14 hours of CLE credit, including 1 hour ethics and 1 hour elimination of bias.

Federal Circuit revives Converse’s Chuck Taylor trademark and infringement claims

In a recent decision that illustrates the relevance of timing in evaluating the question of secondary meaning, the Court of Appeals of the Federal Circuit breathed new life into Converse’s “Chuck Taylor” sneaker design trademark by vacating an earlier ruling by the International Trade Commission (ITC) invalidating protection for that same mark.

Background

Relying upon use of its sneaker design dating back to 1946, in 2013 Converse obtained a trademark registration for its “Chuck Taylor” sneaker design described as “the design of the two stripes on the midsole of the shoe, the design of the toe cap, the design of the multi-layered toe bumper featuring diamonds and line patterns, and the relative position of these elements to each other”. Shortly thereafter, Converse filed suit before the ITC against dozens of U.S. companies seeking to exclude the importation of sneaker designs and argued they infringe upon and dilute their product design trademark.

In 2016, the ITC invalidated Converse’s trademark registration and rejected their claim of common law trademark rights for failure to demonstrate secondary meaning. Relying on the Supreme Court’s guidance in Wal-Mart Stores, Inc v. Samara Bros., 529 US 205, 213-214 (2000), the ITC held that Converse’s mark, a product configuration, could not be considered inherently distinctive as a matter of law, and thus was not entitled to either registration or protection as a trademark absent a showing that the configuration had acquired distinctiveness in the minds of the relevant consuming public. Marketplace exclusivity is an important prerequisite for protection because where design elements are widely used and common, they cannot identify a particular source.

The ITC was persuaded in its determination by evidence offered by the defendants reflecting that various elements of the Chuck Taylor shoe design were allegedly in use by numerous third parties prior to the PTO’s grant of registration. For the ITC, such evidence established that a significant percentage of average consumers associated the Chuck Taylor design with multiple sources, and not just with Converse. The ITC found that this renders the design incapable of identifying a single source and thereby devoid of the required secondary meaning for protection.

The Appellate Court disagreed Continue Reading

FRAND license litigation: new ways of accessing relevant rates in France

Besides its new provisions defining the trade secret and sanctioning its infringements, the French Law of 30 July 2018 regarding Trade Secret offers new procedural instruments aimed at efficiently protecting the confidentiality of the exhibits submitted by the parties.

Article L.153-2 of the Code of Commerce provides that any person having access to an exhibit or the content of an exhibit that is recognized by the judge as being covered or likely to be covered by a trade secret is bound by a confidentiality duty and prohibited from any use or disclosure of the information contained therein. This obligation does not expire at the end of the proceedings.

In addition, when the communication or the production of an exhibit which is alleged by a party or a third party to disclose a trade secret is mentioned or requested, Article L.153-1 of the Code of Commerce now allows the judge, ex officio or at the request of a party or that of a third-party, to:

1° Review this exhibit alone, and if deemed necessary, order an expert review and seek the opinion, for each of the parties, of a person assisting or representing it, so as to decide whether to apply the protective measures set out in this Article;

2° Decide to limit the disclosure or production of the exhibit to certain parts thereof, order disclosure or production of a summary of the exhibit only, or restrict all parties’ access to a single individual person and a person authorized to assist or represent that party;

3° Decide that hearings will be held and the decision issued in camera;

4° Adjust the statement of reasons for its decision and the mode of publication thereof to the need to the necessities of trade secret’s protection“.

This transposition has gone beyond the text of the European Union Directive of 8 June 2016 by generalizing the trade secret protective regime to every kind of civil and commercial Court proceedings (and not only to proceedings specifically regarding “procurement, use or illicit disclosure of a trade secret“). Continue Reading

Has the General Court let the genie out of the bottle with its latest judgment on shape marks?

The General Court has recently decided an interesting case concerning the distinctiveness of a shape mark (here). The applicant Wajos GmbH had filed for a shape mark in relation to goods in classes 29, 30, 32 and 33 (amongst others ‘alcoholic beverages, except beers‘). The graphic representation of the application is shown below:

While the Examination Division and the Board of Appeal found that the application was not capable of indicating commercial origin (and as such was non-distinctive), the General Court (GC) took a different view.

The shape of the bottle is distinctive

Pursuant to Article 7(1)(b) EUTMR, a trade mark which is entirely devoid of distinctive character cannot be registered. In relation to shape marks, it is settled case-law that the trade mark needs to depart significantly from the norms and customs of the sector to be distinctive.

As a starting point, the GC took into account that in the food sector, the average consumer was quite capable of perceiving the shape of the packaging of the goods concerned as an indication of their commercial origin, in so far as that shape presents characteristics which are sufficient to hold the consumer’s attention.

Secondly, the GC found that the combination of the trade mark’s elements rendered it distinctive as a whole and distinguished it from other bottles available on the market. The reason for this was that the lower part of the bottle was clearly tapered in comparison with the upper part and is pointed. Moreover, the bottle has a spout which can be closed with a glass lid and a conspicuously pronounced bulge in its upper part. The GC regarded these elements as extraordinary and found that they gave the application a particular appearance. It concluded that consumers were not accustomed to containers which had a strikingly curved shape in the centre and that the appearance of the application differed from that of classical amphorae.

Comparison with existing case-law Continue Reading

Hogan Lovells Standard Essential Patent Update

In this edition of Hogan Lovells’ Standard Essential Patent (SEP) Update, we report on recent news and case decisions from China, Germany, the United Kingdom, and the United States. This bi-monthly newsletter summarizes the more notable SEP developments from key litigation arenas for owners and prospective licensees.

Spotlight Article

Here we cover the much anticipated judgment in the appeal of Mr. Justice Birss’ landmark fair, reasonable, and non-discriminatory (FRAND) decision in Unwired Planet v. Huawei which was handed down. Read update

Global news and jurisdictional updates

This update also covers the following additional developments across the globe:

  • IAM Media released a report investigating the SEP holdings of Ericsson, Huawei, Nokia, Qualcomm, and Samsung, which it names as leaders in the 5G SEP landscape. Read update
  • Microsoft announced its participation in License on Transfer (LOT) Network. Read update
  • Avanci announced that Nokia joined its licensing platform. Read update
  • The Chinese government continues to implement various IP and SEP reforms. Read update
  • The District Court of Mannheim assessed the deadline to respond to a FRAND offer with a counteroffer and applied its rules on “catching up” with FRAND obligations during infringement proceedings, reinforcing a stricter approach compared to the Düsseldorf courts. Read update
  • The Higher Regional Court of Düsseldorf applied the established requirements for preliminary injunctions on SEPs and denied an injunction after a belated FRAND offer, despite the defendant’s rejection of a non-disclosure agreement (NDA). Read update
  • The Japan Patent Office (JPO) guide for SEP negotiations (the guide) officially issued this summer. Read update
  • New developments in Conversant Wireless Licensing SARL v. Huawei Technologies Co. Ltd. Read update
  • In TQ Delta LLC v. ZyXEL Communications UK, the UK Patents Court gave a restrictive interpretation of an order for standard disclosure in a recent FRAND case. Read update
  • The Northern District of California rejected Samsung’s motion for summary judgment, which had alleged antitrust violations based on Huawei’s attempted licensure of its SEPs. Read update
  • The Eastern District of Texas ordered a new trial as to damages in an SEP case, siding with a major cellular phone manufacturer over SEP holder Core Wireless. Read update
  • The U.S. International Trade Commission (ITC) issued an initial determination in Investigation No. 337-TA-1065, finding infringement but recommending that an exclusion order not be issued due to public interest considerations. Read update