Dawn Ellmore Employment's Blog

IP and Legal Industry Updates


June 2017

Huawei Considers Next Step Following Receipt of UK Court’s First Ever ‘FRAND’ Injunction

The Chinese networking and telecommunications equipment company Huawei technologies (ranked second in a list of the top 10 PCT patent applicants for 2016) was recently subject to the UK’s first ever patent infringement fair, reasonable and non-discriminatory (FRAND) injunction.  A FRAND injunction is granted to a defendant who is unwilling to enter into a FRAND licence.

The lawsuit between Huawei and UPI has been going on for more than three years and this court decision is the latest development.  The UK High Court ruled that Huawei must pay licensing fees to use patents related to 4G technologies in its devices from US software company Unwired Planet International (UPI) that now owns the patents.  If Huawei refuses to do this it will face a sales ban in the UK.  The FRAND injunction would stop automatically if Huawei agrees to enter into a FRAND licencing agreement with UPI.

It is possible that Huawei cold try to appeal the court ruling but commentators believe it is more likely that the company will try to reach a settlement agreement with UPI.

Huawei opened its first office in the UK in 2001 and from that date onwards has continually increased investment within the country meaning that the UK is an important country to Huawei.  Huawei issued a statement that the UK court’s decision would not adversely affect its business operations in the UK or in other countries.


Taj Mahal Palace is the First Indian Building to Become an Official Trade Mark

The Taj Mahal Palace was built in 1903 and acted as a triangulation point for the Indian Navy to show them the way towards the harbour.  The Taj Mahal Palace, an iconic 114-year-old building, in Mumbai, India has just become an official trade mark.  This hotel now joins the worldwide elite trademarked properties including the Empire State Building (New York, USA), the Eiffel Tower (Paris, France) and Sydney Opera House (Sydney, Australia).

This is the first time since the Trademark Act came into force in India in 1999 that a trade mark registration of an architectural design has been made.  The Indian Hotels Company (who run the Taj Mahal Palace as their flagship hotel) said that they applied for the trade mark registration in order to protect the distinctiveness of the building.


Gene Simmons Tried to Trademark Devils Horns Rock Hand Gesture but Withdrew USPTO Application

Israeli-American hard rock bass guitarist and singer for the hard rock band Kiss Gene Simmons has been in the IP news recently after he attempted to trademark a hand gesture he claimed he invented.

In the trade mark application to the United States Patent and Trademark Office (USPTO) Simmons applied for the trade mark in the context of “entertainment, namely, live performances by a musical artist; personal appearances by a musical artist”.  The trade mark that was sought was described as follows: “a hand gesture with the index and small fingers extended upward and the thumb extended perpendicular.”  This means that the claimed trade mark hand gesture was the ‘devils horns’ rock symbol but with an added thumb sticking out at the side.  It was the gesture itself that was claimed, rather than image or depiction of the gesture.  Simmons noted in the USPTO trade mark application the first date that he used/invented the hand gesture which was 14 November 1974.

Less than two weeks after filing the trade mark application with the USPTO Simmons withdrew the application.  There were several suggested obstacles with the application if it were to have proceeded, noted below:

  • hand gestures in and of themselves cannot function as trade marks.
  • the hand gesture was identical to the American Sign Language sign for “I love you”
  • John Lennon on the cover of Yellow Submarine in 1966 uses the same hand gesture backwards.
  • Simmon’s application has drawn a fair amount of criticism.


Asian-American Rock Band The Slants Won Supreme Court Ruling in Trade Mark Dispute over Band Name

Asian-American rock band The Slants recently won a US Supreme Court Ruling in a trade mark dispute over the band’s name that some regard as an ethnic slur.

The band initially tried to register the band’s name as a trade mark at the U.S. Patent and Trademark Office (USPTO) but the application was denied because of the Lanham Act, that prohibits any trademark that could “disparage … or bring … into contemp[t] or disrepute” any “persons, living or dead,” as the court states..

Band members of The Slants said they wanted to reclaim the name that is often seen as a slur and that they had experienced as such in the past.  By reclaiming the name as their band’s identity they hoped to bring empowerment to the phrase.  In this recent ruling the Supreme Court deemed that members of the Asian-American rock band The Slants have the right to call themselves by a disparaging name.

Some say this decision is a victory for free speech and the decision from this case could inform arguments over many other future cases.  This Supreme Court ruling could have a broad impact on how the First Amendment is applied in other trade mark cases in the US.


Unified Patent Court System on Hold after German Ratification Suspension

The German ratifying legislation had been passed by the country’s parliament and was ready for signature by the German president.  The Unified Patent Court (UPC) system in Europe has been put on hold after the Germany’s Constitutional Court formally requested the German president refrain from signing the legislation into law while it considers a legal challenge that has been lodged.  Exact details of the grounds for the complaint and who has raised it are not yet known.

The UPC Preparatory Committee had previously stated that the original target date of December 2017 for the UPC to become operational was no longer achievable.  It is thought that a ruling on whether Germany should ratify the UPC system could take up to a year to be reached which would push the UPC operational timetable back to the end of 2018 or early 2019.  This delay in ratification by Germany could also impact the UK’s timeliness in ratifying the UPC.

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.


Amazon Patents System of Storing Stock Underwater

Amazon filed for a patent entitled Aquatic storage facilities” in September 2016 that was recently granted.  The aim of this patented system is to increase warehouse space by increasing storage space by depth.

The proposed system would create underground warehouses by wrapping containers of stock items in waterproof packaging with depth control devices (to raise and lower the items) and storing them in giant water pools submerged under current Amazon warehouse floors.

The patent also mentions the possibility of using airplanes or drones to drop packages (fitted with GPS tags) into natural rivers or lakes where they would be stored at the bottom of the water until they were needed and they could then be retrieved using a sonar signal.

You can read more about the patent here:

First Design Appeal Decision from the UK IPO

The Intellectual Property Act 2014 introduced a new appeal regime for designs.  The system of appeals to an Appointed Person acts as an alternative to the route of appealing to the High Court.

This case was significant because it was the first design case decision handed down by the UK Intellectual Property Office (UK IPO) under the Appointed Persons regime in a registered design law case.

The Union Jack designs that were at centre of this appeal were found to be invalid under the new Appointed Persons regime on account of the fact that the two registered designs were said to lack individual character because of the existing prior art (similar designs have been sold in the London souvenir market for many years).  The UK IPO therefore dismissed the appeal.


Need a Second Opinion whilst out Shopping? Adobe’s Latest Patent may have the Answer!

Shopping has often been referred to as a national pastime.  Most people love shopping for new purchasers, in fact research from the Great British Wardrobe Report found that people in the UK spend an average of £1042 per year on their wardrobes.  Whilst there has been a trend over recent years for consumers to spend more money online, in store purchasers still account for a high percent of retail value.

Potential consumers who enter a shop on their own can often find they wish a second opinion before committing to a purchase, especially on clothes and shoes.  Adobe has come up with an interesting new piece of patented technology which could help with this as it aims to give consumers a virtual second opinion (advice from someone of the shopper’s pre-determined group on whether to buy the particular item or look for other items in the store) via their smartphones.

The technology works by using a monitoring device that monitors users’ movement and activities within shops.  This data is collected and stored building a shopping record for each consumer allowing all consumers to be categorized into similar groups.  After determining the group the system sends the notifications to rest of the similar group members about your choice while you are present in the shop.

The system allows the shop visitors to provide feedback to each other, helping people make the right choice before buying a product.  The new technology means that lone shoppers will always have user buyer advice from people similar to themselves instantly available on their smartphones as a virtual second opinion for them.  The aim of Adobe’s patented technological solution is to increase customer satisfaction and increase conversions for products.  We have to wait and see how Adobe might implement this new technology.



Essential Smartphone Faces Trade Mark Infringement Allegations Prior to Launch

The American computer programmer, engineer, entrepreneur and venture capitalist Andy Rubin recently announced his upcoming Essential smartphone.  Unfortunately before the product launch the company behind the Essential smartphone has been named in a trade mark infringement claim over the name Essential.

In August 2016, US based Spigen (a company that designs and manufactures cases and accessories for mobile devices) registered a Class 9 trade mark for the term “Essential.” Class 9 trade marks cover computer and technology products (including smartphones and accessories).

In the trade mark infringement complaint Spigen’s attorneys allege that the use of the term “Essential” in the Essential smartphone is a violation of Spigen’s trade mark which cause consumers confusion over the product’s origin.  They have therefore requested that Rubin’s company cease and desist from using any marks using the term “Essential”.

Disputes such as these are often settled outside of court with settlement agreements.  However if such terms cannot be agreed it could forced a rebrand of the new Essential smartphone.


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