The primary source of global intellectual property internet · PDF file ·...
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Value gap despite major growth in digital music There is a major value gap between digital sales and revenue growth, according to the International Federation of the Phonographic Industry (IFPI). Music is being consumed at record levels, the IFPI Global Music Report 2016 has found, but not enough revenue is returning to artists and labels. Digital sales became the primary revenue stream for recorded music in 2015, overtaking physical sale formats for the first time. Digital revenues now account for 45 percent of total revenues compared to 39 percent for physical sales. Total industry revenues increased 3.2 percent to $15 billion, leading to the industry’s first significant yearly growth in more than two decades. Digital revenues now account for more than half of the recorded music market in 19 countries. Continued on p2 Counterfeit trade worth half a trillion dollars Global trade in fake goods was worth almost half a trillion dollars in 2013, a new report has claimed. The report from the Organisation for Economic Co-operation and Development (OECD) and the EU Intellectual Property Office (EUIPO) put the value of total global imports at $17.9 trillion in 2013, meaning counterfeits accounted for around 2.5 percent of the world’s trade, with a value of $461 billion. The report analysed nearly half a million customs seizures around the world between 2011 and 2013. The US Supreme Court has declined to hear the Google Books case, dealing a major blow to authors looking to be compensated for the mass digitisation project. Justices handed down the decision to refuse certiorari on 18 April, following the Authors Guild’s appeal against the Court of Appeals for the Second Circuit’s ruling that Google’s mass digitisation of millions of books is a fair use under copyright law. The case has been raging since 2004 when a group of university libraries allowed Google to scan their collections to create a database containing the full text of millions of works. It was called the Mass Digitisation Project, but was later rebranded as Google Books. The Authors Guild, among others, claimed that Google sought to profit from using its authors’ books without obtaining their permission, prompting legal battles that have bounced between the Second Circuit and the US District Court for the Southern District of New York since 2005. A resolution was almost found in 2011 when the Authors Guild and Google came to a settlement, but the deal was quashed for being anti-competitive. Then, in October 2015, the Second Circuit confirmed that “Google’s unauthorised digitising of copyright-protected works, creation of a search functionality, and display of snippets from those works are non-infringing fair uses”. Continued on p2 The primary source of global intellectual property internet news and analysis Continued on p2 Google Books can proceed after Supreme Court rejection ISSUE090 26.04.2016 www.ipprotheinternet.com
Transcript of The primary source of global intellectual property internet · PDF file ·...
Value gap despite major growth in digital music
There is a major value gap between digital sales and revenue growth, according to the International Federation of the Phonographic Industry (IFPI).
Music is being consumed at record levels, the IFPI Global Music Report 2016 has found, but not enough revenue is returning to artists and labels.
Digital sales became the primary revenue stream for recorded music in 2015, overtaking physical sale formats for the first time. Digital revenues now account for 45 percent of total revenues compared to 39 percent for physical sales.
Total industry revenues increased 3.2 percent to $15 billion, leading to the industry’s first significant yearly growth in more than two decades. Digital revenues now account for more than half of the recorded music market in 19 countries.
Continued on p2
Counterfeit trade worth half a trillion dollarsGlobal trade in fake goods was worth almost half a trillion dollars in 2013, a new report has claimed.
The report from the Organisation for Economic Co-operation and Development (OECD) and the EU Intellectual Property Office (EUIPO) put the value of total global imports at $17.9 trillion in 2013, meaning counterfeits accounted for around 2.5 percent of the world’s trade, with a value of $461 billion.
The report analysed nearly half a million customs seizures around the world between 2011 and 2013.
The US Supreme Court has declined to hear the Google Books case, dealing a major blow to authors looking to be compensated for the mass digitisation project.
Justices handed down the decision to refuse certiorari on 18 April, following the Authors Guild’s appeal against the Court of Appeals for the Second Circuit’s ruling that Google’s mass digitisation of millions of books is a fair use under copyright law.
The case has been raging since 2004 when a group of university libraries allowed Google to scan their collections to create a database containing the full text of millions of works. It was called the Mass Digitisation Project, but was later rebranded as Google Books.
The Authors Guild, among others, claimed that Google sought to profit from using its authors’ books without obtaining their permission, prompting legal battles that have bounced between the Second Circuit and the US District Court for the Southern District of New York since 2005.
A resolution was almost found in 2011 when the Authors Guild and Google came to a settlement, but the deal was quashed for being anti-competitive.
Then, in October 2015, the Second Circuit confirmed that “Google’s unauthorised digitising of copyright-protected works, creation of a search functionality, and display of snippets from those works are non-infringing fair uses”.
Continued on p2
The primary source of global intellectual property internet news and analysis
Continued on p2
Google Books can proceed after Supreme Court rejection
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Google Books can proceed after Supreme Court reject ionContinued from p1
“The purpose of the copying is highly transformative, the public display of text is limited, and the revelations do not provide a significant market substitute for the protected aspects of the originals. Google’s commercial nature and profit motivation do not justify denial of fair use,” the Second Circuit explained in its decision.
The Authors Guild argued in its 31 December 2015 petition to the Supreme Court that by “divorcing the fair-use enquiry from the traditional goal of promoting creativity, the approach empowers judges to approve any reuse of copyrighted works that those judges deem socially beneficial”.
Authors Guild president Roxana Robinson called the Supreme Court’s decision “a colossal loss” for authors.
She said: “We filed the class action lawsuit against Google in September 2005 because, as we stated then, ‘Google’s taking was a plain and brazen violation of copyright law.’ We believed then and we believe now that authors should be compensated when their work is copied for commercial purposes.”
A Google spokesperson commented: “We are grateful that the court has agreed to uphold the decision of the Second Circuit which concluded that Google Books is transformative and consistent with copyright law.”
Value gap despite major growth in digital music marketContinued from p1
In spite of the growth of the digital music market, consumption is not returning a fair remuneration to artists and record labels, according to IFPI.
“The value gap is the biggest constraint to revenue growth for artists, record labels and all music rights holders. Change is needed and it is to policymakers that the music sector looks to effect change,” commented IFPI chief executive Frances Moore.
Some major digital services are able to circumvent the normal rules that apply to music licensing, according to the report. User upload services, for example, claim they do not need to negotiate licences for the music on their platforms, IFPI has found.
Such services claim protection from copyright safe habour provisions, but they are being misapplied, IFPI said in its report. The rules were not designed to exempt companies that actively engage in the distribution of music
online from playing by the same rules as other online music services.
The European Commission acknowledged the value gap issue in December 2015.
According to IFPI, the European Commission plans to make its proposals on how to address the value gap public this year.
The US Copyright Office is currently reviewing the safe harbour provisions in the Digital Millennium Copyright Act, although experts say that the process is not expected to result in any significant changes to how online service providers are protected from liability.
Counterfeit trade worth half a trillion dollarsContinued from p1
It points to a larger volume than a 2008 OECD study that estimated fake goods accounted for up to 1.9 percent of global imports, although the 2008 study used more limited data and methodology.
Up to 5 percent of goods imported into the EU in 2013 were fakes, according to the report, with French, Italian and US brands being hit the hardest by counterfeiters.
“This percentage is likely to have increased further since then, with the growing importance of ecommerce and the delivery of counterfeits to consumers by parcel post,” commented Jeremy Newman, managing partner at Rouse.
“This is a shockingly high percentage for such an economically and legally advanced region—suggesting that the solution is not to be found in one country or region alone, but in a joined up global approach.”
In the period between 2011 and 2013, the US topped the list of brands that were most affected by counterfeiting, at 20 percent. Fifteen percent of Italian brands were affected, followed by France and Switzerland, at 12 percent each.
Most fake goods originate from China as well as middle income and emerging countries, said the report.
“The findings of this new report contradict the image that counterfeiters only hurt big companies and luxury goods manufacturers. They take advantage of our trust in trademarks and brand names to undermine economies and endanger lives,” said OECD deputy secretary general Doug Frantz.
Yahoo patents worth less than $1 bi l l ion, argues law f i rm
Yahoo’s reported $3 billion patent portfolio is actually worth $772 million, according to Richardson Oliver.
Latest NewsOracle and Google fail to reach a settlement ahead of the $9 billion copyright trial over the unauthorised use of Java in the Android operating system p4
Latest NewsThe Federation Against Software Theft and V.i. Labs team up to launch an educational campaign aimed at businesses that unintentionally use unlicensed software p6
Conference PreviewAttendees of the IACC Spring Conference in Florida can look forward to a keynote speech from Alibaba’s Jack Ma p7
Hungary InsightDr Judit Lantos and Dr Ildiko Komor Hennel of Sár and Partners – Danubia Patent & Law Office report on a controversial trademark case p9
People MovesComings and goings at Procopio, Mayer Brown, Corrs Chambers and more p13
Contents
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The law firm delved into claims, “stated without any data to back up the analysis”, that have put the value of Yahoo’s patent portfolio in the billions.
Yahoo is currently the subject of intense takeover speculation after years of revenue declines. The internet company reportedly owns 6,000 patents estimated to be worth up to $3 billion and has sold or licensed more than $600 million in rights over the last three years.
The internet company’s portfolio is “sizeable”, according to Richardson Oliver, and it has acquired a number of assets from other companies. But the price of its portfolio would not be worth the $3 billion estimate on the current market, the law firm said.
“The market is changing quickly and is down by more than 60 percent compared to four years ago and continues to decline,” found the report.
Based on its analysis of the market, the firm proposed that Yahoo’s total patent assets could expect an asking price of around $1.8 billion, but for just the US patents, the price would be $605 million.
Assuming that every patent sells, the firm placed the market price of the patents between $393 million and $1.15 billion, and estimated Yahoo’s portfolio value to be in the region of $772 million.
The US Supreme Court’s 2015 Alice decision, “gutted business method patents and damaged many software patents,” stated the firm. “Yahoo is not immune to the negative impact.”
Guidance planned for cyber disputes in China
The Beijing High People’s Court has issued guidance for city courts handling intellectual property disputes in the digital space, following an increase of disputes in China’s capital.
The guidance will be based on two years of research and study concerning disputes
Federal Circuit ruling that upheld the copyright in, and reinstated Google’s infringement of, 37 Java application programming interfaces (APIs).
The Federal Circuit returned the case to district court for a retrial on whether Google has a fair use defence to its use of the APIs in Android, as the original jury failed to return a verdict.
Recently unsealed court documents revealed that Oracle is seeking $9.3 billion in damages from Google.
Oracle filed a damages report along with expert witness testimony in February, arguing that it is entitled to $8.83 billion in apportioned profits, plus $475 million in damages.
UDRP returns eBay and PayPal domain names
PayPal and eBay have secured the return of 13 infringing domain names from two cybersquatters in South Korea.
A panellist at the World Intellectual Property Organization’s Arbitration and Mediation Center returned the domains to the ecommerce site and digital payment service on 11 April.
Korean companies Noorinet and Linecom registered the 13 domain names, which included thaiebay.com and paypal-card.com, containing eBay and Paypal trademarks between May 2007 and July 2014.
eBay and PayPal, which was spun-off as a separate company last year, filed a Uniform Dispute Resolution Policy (UDRP) on 11 January.
They argued that the disputed domain names are confusingly similar to their trademarks, with the addition of generic terms such as ‘card’ and ‘thai’ failing to distinguish the domains from their registered rights, and were registered in bad faith for “commercial gain”.
“The domain names are being used to attract, for commercial gain, internet users to their
over online use of copyright and trademarks, according to Yang Borong, chief judge of the Beijing court’s intellectual property tribunal.
Beijing courts heard 13,939 IP cases last year, an increase of 24 percent from 2014. More than 10,000 of those disputes had an online component.
Borong said: “We summarise difficulties in hearing IP cases on the internet and clarifying web operators’ responsibilities in the guidelines, helping city grassroots courts to effectively deal with related disputes.”
The Beijing High People’s Court also announced that high profile IP cases, hearing and documents will soon be made available in English.
“We have had the idea to supply English versions for some time, but due to the limited number of English speakers in the court, the first batch of cases could not been issued until now,” said Pan Wei, assistant to the court’s IP tribunal chief judge. An initial batch of 10 IP cases have been released in English.
“We also want both Chinese and foreigners to understand our IP case hearings and keep our work transparent.”
Oracle and Google fail to negotiate
Oracle and Google have failed to reach a settlement ahead of the $9 billion copyright trial over the unauthorised use of Java in the Android operating system.
Company representatives discussed the case at the US District Court for Northern District of California on 15 April before Judge William Alsup, but failed to agree on a settlement ahead of the retrial over whether Google had a fair use defence to infringing Oracle’s copyright, according to court documents.
The case is moving to retrial following the Supreme Court’s June 2015 dismissal of an appeal against a Court of Appeals for the
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websites by creating a likelihood of confusion,” they argued. Noorinet nor Linecom responded to the complaint.
Sole panellist Moonchul Chang agreed with eBay and Paypal, finding that the domains names substantially incorporated their marks, without permission, for the sole purpose of attracting internet users to “parking websites with sponsored links”.
“Having considered Noorinet and Linecom’s registrations of multiple confusingly similar disputed domain names incorporating eBay and Paypal’s widely known trademarks, together with the fact that Noorinet and Linecom have also been the respondents in over 60 domain name disputes, the panel finds that these registrations constitute a typical pattern of cybersquatting in bad faith.”
GCHQ ‘rumbled’ Harry Potter leak
UK surveillance agency GCHQ stepped in to prevent the sixth Harry Potter leaking online, the publisher has claimed.
Bloomsbury Publishing Nigel Newton said GCHQ agents contacted him ahead of publication of The Half Blood-Prince to warn him that they’d found a copy online, but it was a fake.
Newton revealed that GCHQ agents read a page of the copy over the phone to a Bloomsbury editor to confirm its authenticity.
GCHQ, or the Government Communications Headquarters, is in charge of the UK’s cyber intelligence efforts.
The agency would only say in a statement: “We don’t comment on our defence against the dark arts.”
Newton went on to describe the lengths that Bloomsbury had to go to stop The Half Blood-Prince from leaking, including going on complete security lockdown and fending off covert attempts to bribe staff to steal copies.
FAST and V.i. Labs tackle unintentional copyright infringement
The Federation Against Software Theft and V.i. Labs have teamed up to launch an educational campaign aimed at businesses that unintentionally use unlicensed software.
Working with FAST, V.i. Labs aims to raise the issue of unpaid licences and accidental copyright infringement.
Based on research from Adobe, Disney and Microsoft, 83 percent of software ‘pirates’ in markets like the UK are in fact legally inclined victims of software piracy, according to FAST.
purposes, without resulting in the permanent availability of content protected at EU level,” said Abramavičius.
One way to ensure this would be for service providers to verify the member state of residence of their subscribers, the committee suggested.
The committee said it is “receptive” to the proposal for a licensing agreement that allows cross-border access to content.
It also supports EU action to ensure efficient and transparent distribution of levies among right holders.
Abramavičius added: “In the long term, we should proceed towards greater convergence between national copyright systems and aim to harmonise the legal framework for the remuneration of authors, creators and artists.”
Oracle recovers orracle.com
Oracle has secured the return of an infringing domain name from a typosquatter.
The World Intellectual Property Organization’s Arbitration and Mediation Center ruled in favour of Oracle on 4 April.
Panellist George Souter ruled that the domain name orracle.com was registered in bad faith.
Oracle accused the registrant on 17 February of registering orracle.com in bad faith.
The domain name is confusingly similar to the Oracle trademark, according to the complaint, with the “mere addition” of a second ‘r’ to ‘Oracle’.
Oracle claimed that the registrant has no rights or legitimate interests in the domain name, which directed users to a pay-per-click website and others not associated with the software company.
The registrant, who registered orracle.com in November 2004, did not reply to Oracle’s UDRP complaint.
Souter found that because Oracle’s well-known trademark was incorporated in its entirety, with no additions beyond a “non-distinctive element and the legally irrelevant .com”, orracle.com was registered in bad faith.
“The use of a domain name in connection with the use of a website with a pay per click facility directing users to third-party websites is potentially damaging to the trademark owner.”
The domain name was returned to Oracle on 4 April.
Alex Hilton, CEO of FAST, said: “Often, the legally inclined user has no idea that they are using unlicensed software.”
“Unsuspecting buyers can also be duped when purchasing from online sites which target buyers looking out for a bargain. It is not uncommon that prices of counterfeit software just below the usual price, giving the application an air of legitimacy.”
V.i. Labs recovers revenue for unpaid software use.
It has uncovered more than $16 billion in licence revenue opportunities since 2006, according to its statement, and has recovered for than $1 billion for clients.
Michael Goff, marketing director at V.i. Labs, added: “We are working with hundreds of software companies to help them identify those users who may not even know that the product they are using is pirated.”
“There is an army of users who would be horrified to know that the applications they were using day-to-day are pirated.”
Cross-border accessibility must not corrode copyright
Removing unjustified geo-blocking must not lead to the abolition of the territoriality of copyright, according to local and regional EU representatives.
The EU’s Committee of the Regions held a plenary discussion in Brussels on 8 April, concluding that the European Commission’s plans for a portability right must be narrow in nature.
As part of its Digital Single Market strategy, which aims to modernise EU copyright for the digital age, the European Commission is consulting on the introduction of a cross-border portability right that would break down member state borders, allowing the use of content licensed in one jurisdiction in another.
Arnoldas Abramavičius, head of the Lithuanian delegation at the Committee of the Regions, drafted the committee’s opinion on a portability right, which largely supports the portability of online content services between EU member states.
The abolition of geo-blocking should secure both flexibility for consumers and the same degree of respect for the creative and commercial value of the content, according to the committee.
“Rights holders need to be sure that portability covers only the most common examples of travel for business, tourism or study
Conference PreviewMark Dugdale reports
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The International AntiCounterfeiting Coalition (IACC) is organising its Spring Conference in Orlando, Florida, in partnership with the International Chamber of Commerce’s Business Action to Stop Counterfeiting and Piracy (BASCAP). The theme of this year’s conference will be rights holders and intermediaries working together to stop fakes.
In that context, Alibaba Group executive chairman Jack Ma has been confirmed as the conference’s keynote speaker. The Spring Conference will take place between 18 and 20 May.
Ma founded Alibaba in 1999 and the company has gone on to own the leading ecommerce websites in China. During his keynote speech at the Spring Conference, Ma will address the importance of ecommerce and the industry coming together to collectively fight brand counterfeiting.
Bob Barchesi, president of the IACC, said: “The Spring Conference provides a communication channel between different parties to engage with one another and discuss practical and innovative solutions to counterfeiting and piracy.”
Jeff Hardy, director of BASCAP, added: “We are delighted to be partnering with the IACC on this important event focusing on how intermediaries and rights holders can work together to stop counterfeiting and piracy.”
Alibaba was recently confirmed as the first intermediary member of the IACC.
The IACC, whose membership was previously restricted to brands, law firms, associations, investigators, product security specialists, government agencies and universities, will accept intermediaries as ‘general members’.
“[This] status is reserved for companies that are not directly or substantially impacted by counterfeiting, but whose industry position or policies make them a potential partner with the IACC in its mission to combat counterfeiting and piracy,” the IACC explained.
The coalition has a strong relationship with China’s Alibaba, so it’s unsurprising that the ecommerce giant is the first intermediary to join its ranks as a general member. They signed a memorandum of understanding in 2013 and jointly launched the MarketSafe programme in 2014.
MarketSafe sees the the IACC and its participating members work to identify and take down infringing listings on Alibaba ecommerce platforms Taobao and Tmall via an expedited removal procedure “that has resulted in a 100 percent take-down rate when companies stand behind their claims”.
“The problem of counterfeiting is too pervasive and complex for any single company or industry to combat on its own,” explained Barchiesi. “By bringing intermediaries to the fold, we are offering our current membership a new way to work with them directly on this issue while coordinating a collective effort to developing solutions to global counterfeiting and piracy.”
He added: “We’re excited that Alibaba, one of our strongest partners, has joined the IACC and we look forward to their membership as a further step in enriching our existing dialogue and partnership.”
Matthew Bassiur, head of global IP enforcement at Alibaba, commented: “Alibaba is committed to protecting IP rights. In joining the IACC, a recognised global leader in anti-counterfeiting, we strengthen our continued efforts in tackling this problem head-on.”
Six sessions over the course of 18 to 20 May at the Spring Conference will thrust intermediaries into the limelight.
The last session on 19 May will focus on ecommerce, which the IACC described in its conference agenda as a “complex, interconnected network of intermediaries” that delivers “a seamless range of online services to consumers and businesses”. But this has presented criminal networks with an enormous opportunity to market, sell and distribute counterfeit and pirated goods.
The IACC’s panel will explore some of the intermediaries involved in the online supply chain, including ecommerce marketplaces, search engines and other players, and discuss some of the voluntary programmes being implemented to limit access of illicit traders.
Attendees of the conference on 20 May will be treated to three sessions touching on online counterfeiting and piracy, with panellists on the first considering how the policies and procedures of search engines and social media are enforced to mitigate illegal content and products.
The session before lunch will focus on hitting counterfeiters and pirates in the pocket.
Panellists from credit card companies, brands and law enforcement will discuss innovative ways they have been able to strike counterfeiters and pirates, as well as how bad actors have been able to evade detection, in a bid to underscore the need for brands, intermediaries and governments alike to keep pace.
Finally, panellists will consider the role internet hosting services, domain registrars and registries and how they can be employed to strike those who sell counterfeits and unlicensed content. The panel will look at the current system and the approaches and best practices for blocking domain name abuses and seizing existing illegal and illegitimate sites. IPPro
Attendees of the IACC Spring Conference in Florida can look forward to a keynote speech from Alibaba’s Jack Ma, as well as protection and enforcement discussions
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Hungary Insight
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The Budapest-Capital Regional Court has recently issued an interesting decision about a rarely used prohibitive stipulation of the Trademark Act. Essentially, the court ruled that a trademark application for the word mark ‘Police’ for certain commercial services is not against the public order. This decision clearly interprets the notion of “being against public policy or order” and draws attention to the importance of procedural questions and details emerging in a case.
Police is a prominent luxury brand whose trademark is widely known and used, primarily for eyewear. An international trademark application for the word mark ‘Police’ was filed in Hungary in class 35, which covers goods and services such as eyewear and optical products, perfumery and beauty articles, leather goods, and clothing and footwear. The international trademark designated several countries, including Hungary.
The Hungarian Intellectual Property Office (HIPO) issued a provisional refusal based on Article 3(1)(a) of the Hungarian Trademark Act, which states that a mark may not enjoy trademark protection if it is against the public order. This section fully corresponds to EU
trademark law, in which it is stipulated that trademarks that are contrary to public policy or accepted principles of morality will not be registered, as they form an absolute ground for refusal.
The trademark applicant only learned about this unfavourable development when it received the final refusal from the World IP Organization (WIPO). In response, the applicant filed a very detailed appeal against the refusal but in spite of all reasoning and evidence, HIPO rejected the trademark application.
The applicant filed an appeal against the unfavorable decision at the Budapest-Capital Regional Court. In its petition, the applicant referred to the fact that it did not receive the provisional refusal from HIPO, as well as it submitted a defence on the merits. The Budapest-Capital Regional Court did not accept the fact that the provisional refusal was not received by the applicant and upheld the decision rejecting the trademark application.
At this stage of the proceeding, the case was transferred to our offices, Sár and Partners and Danubia Patent & Law Office, from a competing law firm.
A recent trademark decision in Hungary clarified ‘against the public order’ as an absolute ground for refusal. Dr Judit Lantos and Dr Ildiko Komor Hennel of Sár and Partners – Danubia Patent & Law Office report on how the case proceeded
Dr Judit Lantos, Partner, Sár and Partners – Danubia Patent & Law Office
The applicant only learned about this unfavourable development when it received thefinal refusal from WIPO. In response, the applicant filed a very detailed appeal against the refusal, but HIPO rejectedthe trademark application
Hungary Insight
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The case was brought to the Court of Appeal, which accepted the applicant’s arguments and ordered HIPO to carry out the examination procedure once again, now in possession of the reply of the applicant. Key evidence was a declaration from WIPO that stated that the agency had sent the provisional refusal to the applicant, but no record existed of the applicant receiving it, because delivery records were only kept for six months, which had since elapsed. This was important because the rules stipulate that the burden of proof lies with the sender in confirming delivery, rather than the applicant in confirming receipt. The Court of Appeal accepted these arguments and annulled the decision of HIPO and the first instance Budapest-Capital Regional Court. The case was sent back to HIPO for re-examination. But in its new decision, HIPO again established the existence of being against the public order and rejected the trademark application.
HIPO did not accept several arguments to the contrary, including that the same trademark was registered in several countries, it enjoys a good reputation and has been intensively used for decades. According to HIPO, the question of good reputation has no relevance when deciding the question of public order.
On appeal, the applicant drew the attention of the court to the difference between its activities and those of the Hungarian police.
The applicant also pointed out that ‘police’ is an English word and not used to describe Hungarian security organisations. The applicant also referred to the fact that it has received trademark protection in several countries, including where English is the official language, and that ‘police’ has also been used in different contexts, such as in the case of the famous band, Police. Also, the applicant stated that it has been using the ‘Police’ for a long time, uncontested, while consumers have become familiar with its products and brand.
The fact that both the domain name owned by the applicant, policelifestyle.com, and the domain of the Hungarian state defence organisation, police.hu, contain ‘Police’ made it very challenging for the applicant to form a defence strategy against the public order argument of HIPO.
But the Budapest-Capital Regional Court accepted the arguments of the applicant and obliged HIPO to register the trademark. Even though HIPO examined the use of the designation with regard to being against the public order, the Budapest-Capital Regional Court made a clear standpoint that it is the designation itself that should be capable of, per se or implicitly, being against the public order by its direct meaning or by way of association.
Since the Trademark Act does not provide a definition for the notion of “public order”, this excluding ground for registration should be applied in the narrowest possible terms and only if the mark’s meaning hinders the applicant in a specially reasoned case to have an exclusive right to have trademark protection for the designation.
It also has to be taken into account that the designation has been widely used and has a good reputation. According to the court, the use of ‘Rendőrség’, the name of Hungary’s civil law enforcement agency, could be against the public order since it is generally accepted that one may not use the name of state bodies for commercial purposes.
But in this case, ‘Police’ is not the same as ‘Rendőrség’. The court also took the fact into consideration that if in other countries, especially where the name of the state defence body is the same as the designation, the designation is not considered against the public order, this cannot be otherwise in Hungary.
As this absolute ground of refusal was dismissed, HIPO continued the registration procedure of the trademark and issued its final statement granting protection. IPPro
Dr Ildiko Komor Hennel, Partner, Sár and Partners – Danubia Patent & Law Office
Since the Trademark Act doesnot provide a definition for the notion of “public order”, this excluding ground for registration should be applied in the narrowest possible terms, according to the court
IACC 2016 Annual Spring Conference
Location: Florida Date: 18-20 May 2016www.iacc.org
Join 550+ of the world’s top brands, government and enforcement officials, intermediaries and service firms who will be in attendance at this year’s IACC 2016 Annual Spring Conference. The focus will be on intermediaries and the actions that they and rights holders can collectively take to address counterfeiting and piracy
INTA 2016 Annual Meeting
Location: Florida Date: 21-25 May 2016www.inta.org More than 9,500 brand management, trademark and other IP professionals from all over the world attend INTA’s 2016 Annual Meeting, which will host 300 customised educational offerings and 30 official networking events.
For more events visit www.ipprotheinternet.com/events/events.php
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People Moves
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Procopio has added internet and domain name lawyer Marina Lewis as senior counsel to its office in San Diego.
She has patent, trademark, copyright and trade secret experience across a range of technologies, including communications, software and electronics and devices.
Lewis is serving a three-year term as the American Bar Association representative on the IP constituency to the Internet Corporation for Assigned Names and Numbers.
Tom Turner, managing partner at Procopio, said: “We are thrilled to have Lewis join our growing IP practice.”
“Lewis’s deep knowledge of domain and internet law is a perfect complement to our IP counseling and IP litigation teams.”
Mayer Brown has recruited Sarah Deutsch as counsel in Washington DC.
She previously spent 23 years at Verizon where she managed the company’s global intellectual property practice and team responsible for copyright, trademarks, domain name enforcement and portfolio management.
Deutsch also has experience in counselling, IP prosecution and enforcement, online liability and cyber security and related advocacy.
Prior to working at Verizon, Deutsch was chief property counsel for Bell Atlantic.
Corrs Chambers Westgarth has hired Jonathan Lawe Davies as special counsel.
Davies previously ran his own IP boutique, Iperative.
He has also worked as corporate counsel at Amazon and general counsel for technology company Ipernica.
John Denton, CEO of Corrs Chambers Westgarth, said: “Davies’s extensive IP experience will allow us to support our growing base of start-up and well-established technology commercialisation clients in western Australia.”
McGlinchey Stafford has added Brian Koide as partner in its IP team in Washington DC.
Koide has served as lead and co-lead counsel for numerous patent infringement disputes throughout his 20-year career.
He has litigated a wide range of technologies, including smartphones, mobile apps and graphic user interfaces, representing patent holders and accused infringers in patent infringement cases.
Andrew Patty, co-chair of McGlinchey Stafford’s IP group, said: “Koide is an outstanding IP attorney and litigator. He is a great asset for our thriving Washington DC business and a top-level resource for our clients.” IPPro
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Comings and goings at Procopio, Mayer Brown, Corrs Chambers and more
