Dawn Ellmore Employment's Blog

IP and Legal Industry Updates


May 2017

China’s Tencent Filed the Most Global Trade Mark Applications in 2016

Trade mark research company TrademarkNow recently published research on the top 50 global trade mark applications filed in 2016.

Tencent Holdings Limited (a Chinese investment holding company with subsidiaries providing media, entertainment, payment systems, internet and mobile phone value-added services) valued at US$279bn was found to have filed the highest number (4,100) of trade mark applications in 2016.  In second place with 3,600 filings was Korean technology manufacturer LG Electronics and in third place with 3,500 filings was US media giant Time Warner.

There were 5 other Chinese companies: LeEco, Alibaba, Huawei, Leshi Internet Information and Technology Corp and Baidu that appeared in the global top 50 companies by number of trade mark applications in 2016 showing a trend for the success of Chinese companies.

In 2016 WIPO confirmed China had become the first country to file 1 million patent applications in a single year (looking at 2015 patent data).  China was found to be driving Asian-led growth in innovation worldwide with 62% of global filing activity for patents is in Asia, 55% of global activity in trade marks is in Asia and 68% of design applications are in Asia.  In 2016 3.7 million trade mark applications were accepted by the Chinese authorities, an increase of almost 30% from the previous year.  This was also 7 times the volume of trade mark applications filed in the United States.

The full report can be accessed here:


Louis Vuitton to Take Trade Mark Case against My Other Bag to the US Supreme Court

European multinational luxury goods conglomerate LVMH (Louis Vuitton’s parent company) lost a number of trade mark lawsuits against American accessories brand My Other Bag founded in 2012 by Tara Martin.  My Other Bag prints animations inspired by iconic handbag designs on canvas tote bags which sell for approximately £30 to £45.  Louis Vuitton handbags by contrast sell for approximately £2,300 to £6,200.

The trade mark lawsuits between LVMH and My Other Bag started in 2014 when LVMH filed numerous claims for trade mark dilution, violation of fair use, dilution by blurring, trade mark infringement and copyright infringement against My Other Bag over its use of Louis Vuitton’s infamous Monogram and Damier product range.  LVMH lost the actions for the following reasons: lack of market proximity between the products and unconvincing evidence of consumer confusion.  In 2016 the Second Circuit Court of Appeals upheld a ruling that My Other Bag’s use of Louis Vuitton’s trademark could be classed as parody.

LVMH now looks set on taking the trade mark infringement claim to the US Supreme Court on appeal after My Other Bag asked the courts to make LVMH pay its legal fees of almost $1m.


Research with Chief Executives show Trade Mark Management Budgets Remain Broadly Steady

The intellectual property management company Lecorpio recently carried out its second annual “Trade Mark Management Study” where it asked corporate company chief executives about changes to their trade mark budgets (including both money and staff) and trade mark portfolio size over the past year.  73% of respondents said their portfolios had remained the same size while 27% said their portfolio had increased.  The results of the study found the following:

Money available this year compared to past year for

a) Registering trade marks

  • 82% of respondents said their budgets had remained the same
  • 18% said their budgets had increased

b) Trade mark policing

  • 64% said their budgets remained the same
  • 36% said their increased


  1. c) Trade mark watching and clearance
  • 90% of respondents’ budgets were the same
  • 10% budgets had increased

e) Trade mark prosecution

  • 18% said budgets had increased

Staff available this year compared to past year

  • 63% reported no change in the size of the internal team managing trade marks
  • 18% experienced cuts
  • 19% said they relied less on outside counsel for trade mark-related work
  • 9% increased outsourced work

The survey results suggest that although budgets are generally holding at stable levels they are also under increased scrutiny with executives under pressure to get a better return on investment.  Where there have been budget increases there is some evidence to suggest that these increases are not keeping pace with increases in portfolio size.  The tends for in-house vs outsourced work are interesting as for many work is being brought back in-house to save money while at other firms work is being outsourced where that is the more cost effective solution, particular for complex work.


UK to Ratify & Join Hague Agreement for International Industrial Designs Registration in 2018

The UK Intellectual Property Minister recently announced the UK will ratify the Hague Agreement for the International Registration of Industrial Designs by 31 March 2018 and is due to launch the service from 6 April 2018.

The Hague Agreement allows applicants to seek protection of registered designs/design patents in over 66 territories with one single application, representing a cost-effective solution to multi-regional design protection.

The European Union (EU) has been a Hague member for many years and so design protection in the UK is available through the Hague system by virtue of the UK’s membership of the EU.  Now the UK is no longer a member of the EU following the Brexit in June 2016 to leave the EU this has resulted in the need for the UK to join the Hague Agreement as a country in its own right.

The announcement of this latest legal develop is good news for applicants both in the UK and overseas but with UK business interests.


Intel Found Innocent of $2bn Infringement in Recent US Patent Trial

The case started in 2010 when AVM Technologies sued Intel on the basis that its Intel Pentium 4 and Core 2 designs infringed its intellectual property (of on US patent 5,859,547 for a dynamic logic circuit patent owned by AVM Technologies).  Joseph Tran is the President of AVM and also the co-inventor of the patent in question.  A number of patents from Joseph Tran’s earlier company, Translogic, had been licensed by Intel.  The 2010 court action was dismissed on account of insufficient evidence.

Five years later AVM re-filed their lawsuit claiming Intel continued to infringe the patent in further Intel designs (including: Sandy Bridge, Ivy Bridge and Haswell).

The $2bn estimate for damages related to the alleged patent infringement related to the broadness of the claims made within the law suits.  Intel tried on multiple occasions to have the case dismissed but was unsuccessful in this attempt.  Finally in 2017 a US jury recently decided (following a 6 day patent trial looking at years of arguments and hundreds of submissions) that Intel had not infringed on US patent 5,859,547, thus upholding earlier court decisions on the same basis of insufficient available concrete evidence.  This decision was the latest and final decision in a long seven year legal battle between AVM Technologies and Intel.


Nestlé Fails to Secure 3D KitKat Shape Mark in the UK

Transnational food and drink company Nestlé that owns and manufactures the popular confectionary brand KitKat has been trying to trademark the four fingered 3D KitKat shape in the UK for many years.  The KitKat shape has already received trade mark registration in Germany, France, Australia, South Africa and Canada.

The European Court of Justice previously ruled the four-fingered shape, breaking apart with a snap, was not distinctive enough to merit a trade mark and that such a designation would not comply with European law.  A 2016 UK High Court ruling also denied the trade mark attempt.

The issue at the heart of this case was whether or not the product’s shape was sufficiently distinctive to the brand that it would warrant any other manufacturers from using a similar format.

After months of consideration the UK Court of Appeal judges found the KitKat shape was not a “badge of origin” meaning that customers would not rely on the shape alone to identify the confectionary item, even though market research showed it to be very well known.  They also ruled that the four-finger design had “no inherent distinctiveness”.

This latest UK judgement means that competitors will now be able to produce similar shaped products without the risk of future legal challenges.

Although Nestlé has been unsuccessful at both the UK High Court and Court of Appeal Nestlé could still try to take the case to the UK Supreme Court.


Google Files Patent Application for Infrared Sleep-Tracking Device

Google recently filed a patent application for a device that monitors a person while sleeping using infrared technology.  The device measures the amount of infrared radiation bouncing off the person and returning to the device which aims to give information on the person’s sleeping patterns and behaviours.  The patent also mentions the possibly of interpreting breathing and heart rate patterns.

Devices that have the ability to log a person’s sleeping patterns represents technology that is not new – there are currently several devices that do this on the market today.  What is unique about the device mentioned in this patent application is that it is a stand alone device, meaning that users do not have to wear other devices (such as wristbands or watches) in order for it to work.  The independent, passive nature of the device mentioned in this patent application is its unique selling proposition as it would not disturb people when they are sleeping so the behaviours recorded would be the truest possible versions of the person’s sleeping patterns.  The device merely monitors users sleeping patterns from a distance using infrared beams of radiation that cannot be picked up by the human eye.

The other benefit of the device mentioned in the patent application is that it connected to a home alarm system which rings the alarm or alerts another family member in the house if the device finds the user’s breathing suddenly becomes very low.  This device thus has great safety potential for monitoring the healthy sleep cycles of both children and adults.


Apple’s Latest Patent to Repel Water From iPhones

Apple recently had a patent published concerning the use of a hydrophilic coating on the speaker grille and inner side of Apple iPhones to repel water from the inside of iPhones.  The inner side hydrophilic coating would serve to speed up the removal of any water out from the iPhone.  The patent also mentions a sensor within the acoustic chamber which senses whether the device has any water within it.

The patent also mentions that Apple plans to add a specially designed speaker.  According to the patent application this speaker would have the ability to sense the water and then send an audio pulse blast (inaudible to the human ear) to repel the water out of the iPhone.

Many smartphones on sale today have a coating over the screen to repel much of the natural oil from the finger when touching the screen to avoid smears and smudges on the smartphone.  Apple’s patented use of a hydrophilic coating combined with speakers sending audio pulse blasts to expel water is a uniquely innovative development.


Land Rover’s Latest Patent Has Military Technology!

Land Rover recently patented a central tyre inflation system which aims to make going go off-road easier, improve fuel economy and correct tyre pressure for gradual wear and tear over time.

Although similar technology already exists in military vehicles, what is unique about Land Rover’s patented system is its ability to inflate or deflate tyres to specific pressures depending on the selected driving mode (which can be automatically detected based on sensory data).  Land Rover’s patent application for the central tyre inflation system has illustrations of 4 driving modes with associated tyre pressure levels, they are as follows:

1) on-road – most common setting for normal driving

2) economy – on this setting the tyres the tyres would fill with increased air pressure allowing for better fuel efficiency

3) off-road – at reduced speeds the tyres would deflate and once traction control finds the vehicle is stuck the tyres would inflate to the correct air pressure for the set off road condition.

4) recovery mode

The patented central inflation system would also be able to correct tyre pressure for general wear and tear over time which most consumers would find an added bonus.


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