Dawn Ellmore Employment's Blog

IP and Legal Industry Updates



Brexit Negotiations will Begin on 19 June 2017

Michel Barnier who is leading the Brexit negotiations for the EU has confirmed that negotiations are due to begin on 19 June 2017 following the UK Parliament’s reconvention post the General Election.  Mr Barnier hopes to submit his first report to EU leaders regarding the status of the Brexit negotiations on 23 June 2017 which is exactly a year after the UK voted to leave the EU.

According to the report, negotiations are planned to take place in four-week cycles, each focusing on a different “key issue”.  Crucial topics of discuss will no doubt include the following:

  • the future relationship between the UK and the Unified Patent Court system.
  • Copyright
  • trade marks
  • designs
  • SPC’s
  • other aspects of IP law which are governed wholly or in part by EU legislation.

These Brexit negotiations have been said to be the most important negotiations in the UK’s history.


New Balance Wins China IP Lawsuit

New Balance Athletic Shoe Inc recently won an intellectual property dispute in China.

Chinese manufacturers copy products but sell them with a slight modification of the brand name.  For the copied New Balance shoes, customers were faced with similar looking products called New Boom, New Barlun and New Bunren — brand names that were protected under China’s trademark law.

The Suzhou Intermediate People’s Court recently fined five companies US$250,000 for breaching an injunction issued in September 2016 prohibiting them from selling shoes with the US shoemaker’s signature slanting “N” logo.


Snapchat Bought Important Geofilters Patent for $7.7 Million

Snapchat is an image messaging and multimedia mobile application (app) created by Evan Spiegel, Bobby Murphy, and Reggie Brown and developed by Snap Inc which was released in 2011 and mainly used by teens and young adults.  One distinct feature of the pictures and messages sent through Snapchat is that they are only available for a limited period of time before becoming inaccessible.

Snapchat is reportedly worth $25bn and had 160 million daily users in 2016.  Snapchat is an app which is free to download and use.  The company gets its revenue by selling adverts (that play as short video clips between posts on the app) to companies that sponsor the lenses and filters used to augment photos (these sales represented $404.5m in revenue in 2016).

Snap, Inc., the company behind Snapchat was recently in the news after it reportedly paid $7.7 million for a “geofilters” patent.  The patent was entitled “Methods and Systems of providing visual content editing functions” and covers filters that are loaded from the internet rather than using the app’s local data so users do not need to update the app whenever a new filter is added to get the benefit of using it.  Although the purchase price of the patent was expensive it is easy to see why Snapchat require the patent for its business model as it could have been blocked from selling geofilters in the future if the patent was sold to a competitor company.


High Court Ruled Apple’s IWATCH Trade Mark Invalid

The trade mark application for IWATCH was submitted by a third party and assigned to Apple in 2015.  Apple’s IWATCH trade mark was found to be invalid after the High Court’s verdict (initiated via an appeal by Apple) agreed with the IPO’s original findings of refusing the trade mark because the mark was not distinctive and was descriptive of the goods applied for.

Trade marks that are descriptive of the goods or services applied can still be registered but only if the applicant can prove the trade mark has acquired distinctive character.  Apple tried to do this by arguing that the ‘I’ prefix in their previous trademarked products (e.g. iPhone, iPod and iPad) made it distinctive of the Apple brand but the IPO did not agree with this as they felt the ‘I’ prefix denoted internet which when combined with the descriptive term ‘watch’ results in IWATCH being descriptive of a watch like device with internet function.  The High Court agreed with the IPO’s rationale and further pointed to other brands using the ‘I’ prefix (e.g.  iPlayer, iSwatch) resulting in Apple’s defence being unsuccessful meaing Apple had ultimately not shown that IWATCH had acquired a distinctive character.


Nike Granted Denim Clothing Patent

Sportswear company Nike has a multitude of patents for shoes and clothing ranges but this latest granted patent covers denim and represents the first company’s first patent using this material.  The title of the patent is for “architecturally reinforced denim.”  The patented denim is said to have been especially designed for athletes as the fabric has moisture management, “stretch materials” and “performance zones.”  The patented fabric aims to offer comfort and protection while being fashionable and attractive.

Nike denim patent

There has been notable consumer trend away from sportswear to blue jeans and casual shoes and this could explain why Nike has patented this technology in this fabric.

More information on this patent application can be viewed here:

Company Chief Executives Now More Aware of Trade Marks Value for Businesses

There are over 55 million active worldwide trade marks with 6 million trade mark applications filed in 2015.  The volume of trade marks applications continues to rise with an average annual growth rate of 7% over the last two years.  The amount of trade mark infringement cases resulting in court action has remained fairly consistent from 2005 to 2015, mainly due to negotiation and settlement deals rather than a reduction in trade mark infringement actions.

A recently published survey conducted by market research company Opinium looked at US, UK, Italian, Spanish, French and German company chief executives’ views on the positive and negative values of trade marks from a brand enforcement and trade mark infringement stand point.

Of the surveyed companies, the findings were as follows:

  • Factors considered most important when applying for a new trade mark included competitive positioning (45%) and whether a mark is “unique” (41%)
  • 20% had a process to actively watch more than 75% of their trade marks, although 50% watched only 26-75% of their marks.
  • 66% had plans to launch new trade marks within the next year.
  • 80% said they would likely launch more trade marks if clearance process were simpler.
  • 53% have taken some form of action against third party infringers
  • 80% believe trade mark infringement of their trade marks is increasing.


The UK Intellectual Property Office Publishes Corporate Plan 2017-2020

It is now generally accepted that intellectual property (IP) is valuable and important to the UK’s economic well-being with IP essential for innovation and growth.  The UK government aims to make the UK the best place to innovate, patent new ideas and set up and grow a business as well as to protect IP.  Progress is already being made with regards to a landmark voluntary code of practice agreement in place whereby search engines and creative industries help to prevent consumers ending up on infringing websites by decreasing infringing links in online search results.

The UK Intellectual Property Office (UKIPO) recently published its latest corporate plan covering 2017-2020.  The corporate plan outlines six IP goals as follows:

  1. Promoting UK Growth through IP policy
  2. Delivering High Quality Rights
  3. Ensuring IP rights are respected and appropriately enforced
  4. Educating and enabling business to understand, manage and protect their IP
  5. Improving skills and capability of our people
  6. Increasing efficiency and delivering value for money

More information on the UKIPO’s corporate plan can be found here:

How Legal is Memorabilia Containing The Pope’s Image?

There seems to have been a recent increase in tourist souvenirs and other memorabilia containing the representation of The Pope.  Some reasons for this include the great popularity of Pope Francis (the 266th and current Pope of the Roman Catholic Church) among Catholic people and the easy access to the Pope’s photographs online.  The use of unauthorised images, symbols and official coats of arms fall within the legal scope of trade mark as well as competition law for prosecution in Italy.

Protection of The Pope’s image and holy symbols are reportedly being stepped up after a statement by the Secretariat of State was released warning against unauthorised use and misuse of the image of Pope Francis.  Image right protection is particularly strong in Italy, in fact the law states:

“If the image of a person, their parents, their spouse or their children is used or published outside the cases in which use or publication is allowed by the law, or in such a way as to cause prejudice to the honour or reputation of the person themselves or their said relatives, a judicial authority upon request of the person, can repress the violation and order payment of damages.”

The Secretariat of State has also reportedly hired a law firm to monitor and repress any unauthorised third-party uses of the image of The Pope, sending cease-and-desist letters on behalf of the Vatican.

So it would seem that any memorabilia containing The Pope’s image or other holy symbols without prior authorisation from the ecclesiastical jurisdiction of the Catholic Church in Rome are illegal and should therefore be avoided.


Google and Android Companies Sign PAX Agreement to Share Software Patents

Google and Android companies (including Samsung and LG) recently announced a new patent software sharing agreement (Android Networked Cross-License) called PAX (meaning peace in Latin) which aims to defend them against future software patent lawsuits.

The agreement covers free patent software sharing on Android and Google Applications on multiple devices.  The type of patents that will be shared under the licensing agreement are not yet known.  The agreement is however expected to open up the Android ecosystem to smaller companies and make it harder for patent trolls to target Samsung.


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