Never Too Late: if you missed The IPKat last week

The IPKat wishes you a nice new year ahead! At the same time, if you missed the IPKat posts during the festive season, it is now the time to catch up.

Eleonora Rosati wrote on the decision of the CJEU in the Tom Kabinet case (C-263/18). The CJEU ruled that there is NO such thing as ‘digital exhaustion’ of the right of distribution under Article 4 of the InfoSoc Directive. More specifically, the provision of e-books falls within the scope of the right of communication to the public, in respect of which there is no possibility of exhaustion.

Image rights

Eleonora also reported and commented on the decision of the Milan Court of First Instance in a dispute between Maradona, the famous former football player, and Dolce & Gabbana, the fashion house. The case concerned the unauthorised use of the name of Maradona on a jersey by D&G. The court found in favour of Maradona, awarding damages amounting to EUR 70,000.

Annsley Merelle Ward reported on the decision of the England and Wales Court of Appeal in Teva v Gilead. In the decision, the court dismissed Gilead’s appeal and agreed with Mr Justice Arnold’s decision in September 2018, which found that Gilead’s SPC protecting its combination HIV anti-retroviral drug, Truvada, was invalid.

Léon Dijkman reported on the decision of the Court of Appeal of the Hague in HE Licences v VG Colours. The court stayed the enforcement of a patent decision under appeal where an injunction was granted. This decision is of interest in that it is exceptionally rare for Dutch courts to stay enforcement of decisions.

The EPO generally likes applicants to abide by the Articles and Rules of the EPC. Therefore, it is not surprising that the Receiving Section of the EPO refused the recent European patent applications designating an AI inventor for contravening the relevant EPO provisions. Rose Hughes examined this refusal, which followed a mere 16 minutes of deliberation at an EPO hearing in Munich.

Antonella Gentile reported on the judgment of the CJEU in C-143/19 P. The court ruled that there is ‘genuine use’ of a collective mark where the mark is used in accordance with its essential function, which is to distinguish the goods or services of members of the association from others which have another origin, in order to create or preserve an outlet for goods or services.

Nedim Malovic reported on a decision of the General Court earlier this month, which confirmed that a sign comprising and depicting cannabis and weed leaves is contrary to public policy. This decision confirms the general principle that signs are not registrable if they might be perceived as encouraging the purchase of illegal goods or trivialising their consumption.

Hayleigh Bosher reviewed the latest edition of ‘International Copyright: Principles, Laws and Practice’ by Paul Goldstein and P. Bernt Hugenholtz. This is a comprehensive guide to the internal rules, practices and principles of copyright around the world.

She also reviewed Sabine Jacques’ book, ‘The Parody Exception in Copyright Law’. This is the first book in English to provide an in-depth study of the parody exception, comparing five jurisdictions to understand the meaning and scope of the defence and finding a fair balance for rights and parodists by also considering moral rights and contract law.

Our IP instinct is to condemn “fakes”, “deceptions”, “knockoffs”and more as going over to the Dark Side – however, is this always true? Neil Wilkof discussed the recent scientific research which tries to imitate the rhinoceros horns. It is hoped that these forgeries will be able to cause the market for rhinoceros horns to be flooded with the fake product, thereby lowering their market priced reducing the incentive for poachers to hunt the rhinoceros.

Never Too Late 245 [Week ending 15 Dec] Proving the existence of confidentiality agreements and the celestial teapot – T 2037/18 | [Guest Post] Federal Court in Australia Grants Injunction Restraining Unlawful Use of Scotch Whisky | Supreme People’s Court of China releases white paper on Chinese courts and the Internet judiciary | Never Too Late: if you missed The IPKat last week | General Election 2019 – possible copyright infringement, actually | The UK Government sheds light on the status of crypto assets and enforceability of smart contracts (Part I) | IPKat Book of the Year Awards 2019: Nominate your favourite IP Book of the year! | WIPO Public Consultation on AI and IP | CJEU rules on genuine use of collective trade marks

Never Too Late 244 [Week ending 8 Dec] Paris Court Grants Anti-Anti-Suit Injunction in IPCom v. Lenovo | Monday Miscellany | AG Bobek suggests broadening possibility to submit new arguments and evidence before General Court in trade mark opposition proceedings | Never Too Late: if you missed The IPKat last week | The implementation in France of the EU Directive relating to trade marks | Are too different whales conceptually identical? Fourth Board of Appeal finds likelihood of confusion despite some visual dissimilarities between marks | AG Campos advises CJEU to rule that Amazon might be potentially liable for trade mark infringement | Mandatory mediation in Greece: Odysseus reaches Ithaca | CJEU rules that “Aceto” and “Balsamico” are not individually protectable components of PGI “Aceto Balsamico di Modena” | In memoriam: D. C. Fontana, the creator of Mr. Spock from Star Trek | IP and the controversial “Hate Speech Bill” in Nigeria | TCL v Ericcson overturned on appeal in US; will go to jury trial | [Guest post] Conference report – More Than Just a Game came to Milan | [Guest Post] When you own an artwork, you don’t own the copyright: Danish artist wins injunction against watchmakers planning to cut up painting