Dawn Ellmore Employment's Blog

IP and Legal Industry Updates

Dawn Ellmore Employment’s Blog


Dawn Ellmore Employment’s Blog keeps readers abreast of current Intellectual Property (IP) and legal developments in one place as a sort of mini digest.

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“We do the prep. You be the chef” Amazon’s Latest Trade Mark for Meal Kits

Amazon has been in the IP news recently after it trademarked the phrase “We do the prep. You be the chef” in connection with its recently launched pre-packaged meal kits for customers to cook their own meals at home from a box of pre-packaged ingredients following the enclosed instructions. The aim is for the home delivery meal kits to be available for customers based in cities where Amazon operates its Amazon Fresh delivery service (currently 13 American cities, Tokyo, London and Berlin).  At the moment the meal kits are only being sold to select customers on Amazon’s US website.  The meal kits (example shown below) are priced between $15.99 and $19.99 serving two people with 17 meal options available.

Amazon meal kit

Amazon moved into the food sector from 2013 with its own shopping delivery service “Amazon Fresh”, “Amazon Restaurants” which deliver ready-made food from restaurants and its acquisition of fresh food market “Whole Foods” in June 2017.  Meal kit delivery services are big business and market research suggests the trend to continue to grow into a multibillion industry in the next five years.  Amazon has previously sold meal kits by other companies but this latest trade mark and meal kit launch confirms its own direct involvement with the sub-sector.


Apple Patents Technology to Dial 999 in an Emergency via Fingerprint

Although 999 is a short and easy emergency telephone number for anyone to remember, no matter their age, it is not always possible for an individual to dial the number safely without putting themselves in danger if they are with people who mean them harm or they are not able to dial properly because of health issues.  Apple’s latest patent (US 9,710,092 B2) that was filed in 2013 and recently granted for use with smartphones could however have the answer.

The patent application indicates technology that allows an individual to make an emergency 999 call through their smartphone using only their fingerprint.  In order to avoid accidentally triggering a 999 call the patent application details that the patented technology would only be triggered when the smartphone senses the “manner” in which a finger touched an iPhone screen.  The patent application mentions the following trigger actions:

  • the level of force applied to the iPhone screen
  • a gesture (e.g. pinching or swiping action applied to the iPhone screen)
  • a certain number of taps on the iPhone screen
  • a pre-set sequence of fingers

The diagram below illustrates how the technology operates:

How to secretly make a 999 call

Once a 999 emergency call is initiated by the smartphone other details can be sent directly to the emergency services without the need for any further input from the user, e.g. GPS will give location details.

This technology is potentially life saving but it would only work if users had previously pre-set the trigger actions necessary to action a 999 call via fingerprint action on their iPhones.

You can read more about Apple’s granted patent application here:


Chanel has Trade Mark Win at the EU General Court

French high fashion house Chanel which specialises in haute couture clothes, luxury goods and fashion accessories recently won a trade mark dispute at the EU General Court to protect its iconic double “C” logo.  This win marked a turnaround of events for Chanel who had been locked in a trade mark battle since 2010 with China-born, Spain-based Li Jing Zhou and Golden Rose 999 Srl, a company based in Rome.

The background to the case was that Li Jing Zhou applied for a trade mark featuring two interlocking ‘S’s at the European Union Intellectual Property Office (EUIPO) in 2010.  The trade mark application was accepted and registered under number 1689027-0001 for use on jewellery in connection with Italian wholesale jewellery company Golden Rose 999 Srl.  Chanel tried to have the registered trade mark revoked and brought an application before the Cancellation Division of the EUIPO to invalidate the mark in 2013 but this was twice rejected in 2014.

Recently in July 2017 the EU General Court ruled that the lookalike trade mark being used by the Golden Rose 999 jewellery company infringed Chanel’s two interlocking ‘C’s registered trade mark.  The EU General Court agreed that the two logos had “remarkable similarities” to the point where consumers could be confused and overturned the previous unfavourable ruling from the EUIPO Appeals Board.

The court annulled the EUIPO’s decision, but did not declare the contested mark to be null and void (as per Chanel’s original request) as it was not within its power to do so.  That decision can now be appealed at the Court of Justice of the European Union.


Could Trade Marks be Better than Patents as Future Innovation Predictors?

A new study (entitled “Innovation Worth Buying: The Fair-Value of Innovation Benchmarks and Proxies”) by two assistant Professors of Accountancy at the George Washington University, James Potepa and Kyle T. Welch has benchmarked the most common measures of outputs and outcomes of innovation (including patent count, citation-weighted patent count, R&D expenditure, trade mark count and market response to new patents).

The report authors have reportedly concluded that the size of a company’s trade mark portfolio rather than either patent count or R&D expenditure is a more consistent indicator of innovation with trade marks being positively and significantly associated with innovation.  Although this conclusion may be surprising the authors explain their findings as follows:

  • firms may not file patent applications for fear of their inventions being revealed to competitors and therefore rely on Trade Secrets rather than patents to protect their inventions
  • patents represents technology already developed
  • trade marks are a combination of recognition and what customers anticipate the firm to develop in the future



UK Supreme Court re-steers UK Patent Infringement Law with Landmark Decision

The background to this case was that Eli Lilly owned a patent that claims within the patent the use of “pemetrexed disodium” in the manufacture of a medical treatment substance that when combined with vitamin B12 can be used as chemotherapy drugs to treat cancer.  Actavis sought declarations of non-infringement for its proposed products which included the following variations on pemetrexed disodium: (a) pemetrexed diacid, (b) pemetrexed ditromethamine and (c) pemetrexed dipotassium.  Actavis sought these declarations in the UK, French, Spanish and Italian designations of Eli Lilly’s patent.

The Supreme Court overturned the earlier decisions of both the High Court and Court of Appeal and ruled that the Actavis products do in fact directly infringe Eli Lilly’s patent.  Lord Neuberger came to this decision following a detailed review of Article 69(1) EPC 2000, and Articles 1 and 2 of the Protocol on the Interpretation of article 69, which provide the basis for interpretation for the scope of protection given to patent claims.

Lord Neuberger reformulated the previous guidance questions on the test for infringement as follows (where an answer of yes to any of the questions below indicates infringement has occurred):

  1. Notwithstanding that it is not within the literal meaning of the relevant claim(s) of the patent, does the variant achieve substantially the same result in substantially the same way as the invention, i.e. the inventive concept revealed by the patent?
  2. Would it be obvious to the person skilled in the art, reading the patent at the priority date, but knowing that the variant achieves substantially the same result as the invention, that it does so in substantially the same way as the invention?
  3. Would such a reader of the patent have concluded that the patentee nonetheless intended that strict compliance with the literal meaning of the relevant claim(s) of the patent was an essential requirement of the invention?

When the Supreme Court applied these questions to Actavis’ products, it found that they directly infringe on Eli Lilly’s patent.

The UK Supreme Court’s judgment in Actavis v Eli Lilly marks the most significant development in UK patent law for decades because it has changed the test for patent infringement in the UK.  The re-introduction of a doctrine of equivalents into UK patent law should create a more consistent approach to the interpretation of the scope of patent protection across Europe.


Will the EU Relocate London-based Unified Patent Court after UK Leaves EU?

The EU’s chief Brexit negotiator, Michel Barnier, recently suggested that the new London based unified patent court may have to move away from its current location in London after the UK leaves the EU.  It has already been decided that two European agencies, the European Medicine Agency (approves drugs for all EU countries) and the European Banking Authority (responsible for bank stress tests) will leave London after Brexit.

The patent court which is currently based in Aldgate Tower, London is set to deal with pharmaceuticals and life sciences cases at Europe’s new unified patent court once the UPC becomes operational.  If the court does leave London it will be unfortunate for the UK being a world leader in pharmaceuticals and life sciences.  Although the court is not currently operational practice trials have been held and judges are in the process of being recruited.

The introduction of the Unitary Patent (a single patent covering multiple countries) and the establishment of a new patent court, the Unified Patent Court (UPC) will affect holders of existing European Patents as well as those seeking new protection for inventions. Businesses will be able to apply to the European Patent Office for unitary patents which, if granted, would give patent protection for inventions across 25 countries. For the new UPC system to become operational, at least 13 EU countries (including Germany, France and the UK), must pass national legislation to ratify the UPC Agreement that was finalised in 2013.


‘Zootopia’ Copyright US Lawsuit Against Disney Dismissed

A US judge recently dismissed a copyright infringement lawsuit brought against Disney for its animated award winning film “Zootopia”.  “Zootopia” was released in March 2016 and is the fifth-highest-grossing animated film of all time.

The copyright infringement lawsuit was brought against Disney by American film producer, director and animator Gary Goldman.  Gary who has over 30 years of experience of writing, directing and producing movies believed Disney took ideas that he had previously pitched to Disney for the film. He stated that the name of the film, plot, characters, setting and artwork were all similar to his original ideas discussed with Disney on two occasions.

The US judge dismissed the case as he said that Goldman did not present enough evidence of copyright infringement.  Whilst the court found that there were indeed similarities between Goldman and Disney’s characters the judge concluded that the differences outweighted the similarities and that the animation style was very different.


Eli Lilly Settlement Deal with Generics means Cialis coming Off Patent Two Years Early

Eli Lilly & Co. developed and manufactures Cialis, a drug which treats erectile dysfunction.  Eli Lilly has had an ongoing patent dispute with other companies producing generic versions of Cialis about the Eli Lilly’s patent on the unit dose of Cialis.  The companies have now reached a settlement deal with Eli Lilly over the Cialis patent.  The settlement deal will result in Cialis coming off exclusive patent in 2018 instead of 2020 which was when the patent was going to expire.

Although this settlement deal will result in a loss of revenues on Cialis for Eli Lilly post 2018 it means that Eli Lilly can in return have guaranteed US marketplace exclusivity for Cialis until then which will be beneficial.


Mother Teresa’s Blue and White Striped Sari is now a Registered Trade Mark

The famous blue and white striped pattern on Mother Teresa’s sari has now been registered as a trade mark at the government of India’s Trade Marks Registry.  The trade mark filing that was made in 2013 and published in 2016 (just before Pope Francis declared Mother Teresa a Saint) covers stationery items, textiles and for use in social and charitable services.  The registered trade mark (which covers both the pattern and colour combination) means that this blue and white striped pattern can no longer be used on clothing or stationery without permission from the Missionaries of Charity for fear of prosecution.

Mother Teresa first wore the now trademarked blue and white sari in 1948.  Similar saris are now woven by leprosy patients run by the Missionaries of Charity in Titagarh, India and supplied to nuns worldwide.

The Missionaries of Charity are highlighting the registered trade mark now following an influx in violations of the registered trade mark.



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