Manual IP News and Unitary Patent News edited by Arnold & Siedsma
 
Unified Patent Court News edited by Bristows
 
Kluwer Copyright Cases edited by IViR
 
Kluwer Patent Cases edited by Brinkhof
 
IP Law Daily - Selected US Cases edited by CCH
 
Volume 2019 - Issue 17
August 2019
 
 
 

News

 
General Information (3)
 
 
Damages not the only basis to decide infringement cases: Ireland Supreme Court
 
The Supreme Court of Ireland has recently held in Merck Sharp &Dohme Corp v. Clonmel Healthcare Ltd. that, to decide intellectual property infringement disputes, "the preferable approach is to consider the adequacy of damages as part of the balance of convenience" assessment.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 19 Aug 2019
 
Ireland Full text
 
 
 
 
 
Jordan implements User Satisfaction Survey tool
 
The Jordanian Industrial Property Protection Directorate has implemented the User Satisfaction Survey (USS) tool with effect from 5 August 2019.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 19 Aug 2019
 
Jordan Full text
 
 
 
 
 
Russia set to extend protection to geographical indications
 
On 26 July 2019, the Russian President signed a draft law that amends the Civil Code and the Federal Law to recognise geographical indications as intellectual property.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 19 Aug 2019
 
Russian Federation Full text
 
 
 
 
 
Ratifications (1)
 
 
Canada ratifies Patent Law Treaty
 
On 30 July 2019, Canada acceded to the Patent Law Treaty (PLT) by depositing its instrument of ratification with the Director General of the World Intellectual Property Organization, thus becoming the 42nd contracting party to the Treaty.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 19 Aug 2019
 
Canada Full text
 
 
 
 
 
Patents/Utility Models (5)
 
 
Concerns raised over Australia’s IP Amendment Bill 2019
 
On 25 July 2019, the IP Amendment (Productivity Commission Response Part 2 and Other Measures) Bill 2019 was introduced in the Australian Parliament. Many fear that the bill, if passed, will adversely affect innovations in the information and communication technology (ICT) and biotechnology areas.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 19 Aug 2019
 
Australia Full text
 
 
 
 
 
Brazil launches e-Patents/Opinion system
 
The Brazilian Intellectual Property Office (INPI) has recently launched the e-Patents/Opinion system that will enable users to access patent examiners’ opinion documents and expedite filing.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 19 Aug 2019
 
Brazil Full text
 
 
 
 
 
Germany will not ratify UPCA as long as consequences Brexit are not known
 
Even if the German constitutional complaint against the Unified Patent Court Agreement is dismissed, the German government will not proceed with ratification of the UPCA until the consequences of the Brexit are entirely clear.

The German Justice Ministry made this clear last week in answer to questions of parliament. In a letter it stated: ‘The issue of the withdrawal of the United Kingdom from the European Union (so-called Brexit) and its implications for European patent reform play an important role in the further implementation process of the Unified Patent Court. The real and legal implications of withdrawing from the Convention must be examined and agreed at European level. This opinion is currently not finalized, not least because significant factors of the expected exit are not yet known.’ (Drucksache 19/12106)
 
Author(s): Kluwer IP Reporter
 
Source: Unitary Patent NewsDate: 19 Aug 2019
 
European Union, Germany, United Kingdom Full text
 
 
 
 
 
UPC ratification: ‘German government cannot wait for Brexit’
 
The German government will have to complete the ratification of the UPCA as soon as the constitutional complaint against it has been dismissed.

This is argued in an article of Kather Augenstein, in reaction to the government’s answers to parliamentary questions. The government says it wants to know what the consequences of the Brexit are, before it completes the ratification formalities.

Kather Augenstein: ‘If – as is to be expected – the Federal Constitutional Court declares the ratification act and thus also the UPC to be in accordance with the constitution, Steinmeier will be bound to sign the act. That would make it effective. And the Federal Government is again obliged to implement passed laws, i.e. to deposit the instrument of ratification for Germany directly (…)’.
 
Author(s): Kluwer IP Reporter
 
Source: Unitary Patent NewsDate: 19 Aug 2019
 
European Union, Germany, United Kingdom Full text
 
 
 
 
 
U.S. apex court rules federal agencies cannot initiate review proceedings under AIA
 
On 10 June 2019, the U.S. Supreme Court held in Return Mail, Inc. v. U.S. Postal Service that federal agencies cannot avail of itself any post-grant proceedings created under the America Invents Act (AIA) of 2011 to challenge third-party patents.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 19 Aug 2019
 
United States of America Full text
 
 
 
 
 
Trademarks (5)
 
 
Cyprus introduces modified online services for trade marks
 
On 15 July 2019, the Cypriot Department of Registrar of Companies and Official Receiver (CY DRCOR) introduced a new service for trade mark e-filings, as part of the European Cooperation Projects of the European Union Intellectual Property Office.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 19 Aug 2019
 
Cyprus Full text
 
 
 
 
 
Malta enacts new trademark law
 
Aimed at transposing provisions of the European Union Trademarks Directive (EU) 2015/2346 into the Maltese national trademark law, the Maltese government had published Act XII of 2019 in the Government Gazette on 9 April 2019, which repealed and replaced Malta’s existing Trademarks Act with effect from 14 May 2019.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 19 Aug 2019
 
Malta Full text
 
 
 
 
 
U.S. Supreme Court to decide on requirement of willfulness for awarding profits in infringement cases
 
On 28 June 2019, the U.S. Supreme Court granted certiorari in Romag Fasteners Inc. v. Fossil Inc., et al., which will determine whether willful infringement is a prerequisite for an award of an infringer’s profits under the Lanham Act.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 19 Aug 2019
 
United States of America Full text
 
 
 
 
 
USPTO mandates electronic filing of trademark applications
 
On 31 July 2019, the United States Patent and Trademark Office (USPTO) published the final rule in the Federal Register mandating applicants to file all trademark-related applications and documents electronically via Trademark Electronic Application System (TEAS). The new rule will come into effect on 5 October 2019.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 19 Aug 2019
 
United States of America Full text
 
 
 
 
 
USPTO issues exam guide on digitally created or mockup specimens
 
The United States Patent and Trademark Office (USPTO) has issued an examination guide regarding digitally created/altered or mockup specimens under the Trademark Act.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 19 Aug 2019
 
United States of America Full text
 
 
 
 
 
Industrial Models and Designs (1)
 
 
Chilean registered designs data now on DesignView
 
On 22 July 2019, the National Institute of Industrial Property Office of Chile (INAPI) integrated Chilean registered designs data into the DesignView search tool, raising the number of intellectual property offices to join DesignView to 69.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 19 Aug 2019
 
Chile Full text
 
 
 
 

Cases

 
Copyright (1)
 
 
Poland: Word trademark as a work protected by copyright law, Court of Appeal of Wroclaw, I ACa 617/18, 27 September 2018
 
A word (verbal) sign (trademark) in which neither the choice of words nor their arrangement and connection are a manifestation of a creative invention, and nor are they original or create a result that could be defined as the manifestation of intellectual activity of a person with an autonomous creative value, is not a work of authorship within the meaning of art. 1 point 1 of the Copyright Act.
 
Author(s): Marcin Balicki, Jagiellonian University
 
Source: Kluwer Copyright CasesDate: 19 Aug 2019
 
Poland Full text
 
 
 
 
 
Patent (18)
 
 
Netherlands: Nikon Corporation vs ASML Holding N.V., District Court of The Hague, C/09/537395 / HA ZA 17-848, 18 July 2018
 
Patents are not held de facto standard essential if there would be possible design-arounds.
 
Author(s): Bart van Wezenbeek, V.O. Patents & Trademarks
 
Source: Kluwer Patent CasesDate: 19 Aug 2019
 
Reporter for: Netherlands
 
Netherlands Full text Full text as PDF
 
 
 
 
 
Netherlands: Nikon Corporation vs ASML Holding N.V. (2), District Court of The Hague, C/09/539155 / HA ZA 17-956, 06 June 2018
 
The Court found Nikon's patent invalid due to lack of inventive step.
 
Author(s): Bart van Wezenbeek, V.O. Patents & Trademarks
 
Source: Kluwer Patent CasesDate: 19 Aug 2019
 
Reporter for: Netherlands
 
Netherlands Full text Full text as PDF
 
 
 
 
 
Netherlands: Nikon Corporation vs ASML Holding N.V. (3), District Court of The Hague, C/09/541038 / HA ZA 17 1076, 01 August 2018
 
A reversal of the burden of proof cannot be honoured if there was still means for the plaintiff to investigate the alleged infringing device.
 
Author(s): Bart van Wezenbeek, V.O. Patents & Trademarks
 
Source: Kluwer Patent CasesDate: 19 Aug 2019
 
Reporter for: Netherlands
 
Netherlands Full text Full text as PDF
 
 
 
 
 
Netherlands: Nikon Corporation vs ASML Holding N.V. (4), District Court of The Hague, C/09/542245 / HA ZA 17-1151, 22 August 2018
 
For wet immersion lithography machines, a dry lithography machine may form the closest prior art because it is a realistic departure point. Further, the skilled person would not need to be limited to the field of wet immersion lithography because at the moment of filing the patent there was not yet a workable wet immersion lithography system.
 
Author(s): Bart van Wezenbeek, V.O. Patents & Trademarks
 
Source: Kluwer Patent CasesDate: 19 Aug 2019
 
Reporter for: Netherlands
 
Netherlands Full text Full text as PDF
 
 
 
 
 
Netherlands: PlantLab Groep B.V. vs Wilk van der Sande B.V., District Court of The Hague, C/09/460541 / HA ZA 14-250C/09/527084 / HA ZA 17-176, 30 May 2018
 
In contrast to the validity advice provided by the Dutch patent office, the court found PlantLab's patent to be novel. However, the patent was held to be invalid due to lack of inventive step so this did not really help the patent proprietor.
 
Author(s): Bart van Wezenbeek, V.O. Patents & Trademarks
 
Source: Kluwer Patent CasesDate: 19 Aug 2019
 
Reporter for: Netherlands
 
Netherlands Full text Full text as PDF
 
 
 
 
 
Netherlands: Becton Dickinson B.V. vs B. Braun Melsungen AG, Supreme Court of the Netherlands, 17/00570, 18 May 2018
 
All court actions that relate to the enforcement of intellectual property rights, even if they relate to a secondary question, are subject to cost compensation according to European Directive 2004/48/EG.
 
Author(s): Bart van Wezenbeek, V.O. Patents & Trademarks
 
Source: Kluwer Patent CasesDate: 19 Aug 2019
 
Reporter for: Netherlands
 
Netherlands Full text Full text as PDF
 
 
 
 
 
Netherlands: Sisvel International S.A. vs Xiaomi Corporation, Provisions Judge of the District Court of The Hague, C/09/573969 / KG ZA 19-462C/09/574487 / KG ZA 19-487, 01 August 2019
 
Cases in which FRAND licences are discussed, and where if no licence is taken an injunction is requested, more closely resemble unpaid debt claims then IP-related cases and are thus less suitable for preliminary proceedings. Further, the fact that the case was complex, not only in relation to the patented subject-matter but also because of the international implications, led the judge to the conclusion that the case was not suitable for preliminary proceedings.
 
Author(s): Bart van Wezenbeek, V.O. Patents & Trademarks
 
Source: Kluwer Patent CasesDate: 19 Aug 2019
 
Reporter for: Netherlands
 
Netherlands Full text Full text as PDF
 
 
 
 
 
Netherlands: Inno Nautic Holding B.V. vs Cuckoo Company B.V., Court of Appeal of The Hague, 200.182.225-0, 08 May 2018
 
In a follow-up procedure for the determination of damages, cost components which were not mentioned in the decision in which damages were awarded may also be included.
 
Author(s): Bart van Wezenbeek, V.O. Patents & Trademarks
 
Source: Kluwer Patent CasesDate: 19 Aug 2019
 
Reporter for: Netherlands
 
Netherlands Full text Full text as PDF
 
 
 
 
 
United Kingdom: TQ Delta LLC v Zyxel Communications UK Ltd & anr, High Court of Justice of England and Wales, Chancery Division, Patents Court, [2019] EWHC 1089 (Pat), 17 April 2019
 
The Court rejected a claim that a new action brought by the claimant asserting additional patents from its portfolio was an abuse of process, finding that a radical change in position by the defendant had driven the need for the claimant to bring an action on other patents.
 
Author(s): Sara Moran, Associate Editor for Kluwer Copyright Blog and Landmark EU Copyright Cases
 
Source: Kluwer Patent CasesDate: 19 Aug 2019
 
United Kingdom Full text Full text as PDF
 
 
 
 
 
United Kingdom: TQ Delta LLC v Zyxel Communications UK Limited & anr, High Court of Justice of England and Wales, Chancery Division, Patents Court, [2019] EWHC 562, 11 March 2019
 
In a patent claim in respect of two patents concerning DSL technology which, according to the Claimant, are “essential” in that the relevant standards cannot be practised without infringement of the patents, the Court found the first patent valid and infringed, but the second patent obvious. Had the second patent been valid, it would also have been infringed.
 
Author(s): Sara Moran, Associate Editor for Kluwer Copyright Blog and Landmark EU Copyright Cases
 
Source: Kluwer Patent CasesDate: 19 Aug 2019
 
United Kingdom Full text Full text as PDF
 
 
 
 
 
United Kingdom: TQ Delta LLC v Zyxel Communications UK Ltd & anr, Court of Appeal of England and Wales, Civil Division, [2019] EWCA Civ 1277, 18 July 2019
 
The Court of Appeal allowed ZyXEL's appeal, finding that in light of its waiver of its RAND licence rights, declaratory relief to determine the scope and terms of the licence which TQD was bound to offer to the two ZyXEL parties would no longer serve a useful purpose.
 
Author(s): Sara Moran, Associate Editor for Kluwer Copyright Blog and Landmark EU Copyright Cases
 
Source: Kluwer Patent CasesDate: 19 Aug 2019
 
United Kingdom Full text Full text as PDF
 
 
 
 
 
USA: Collabo Innovations Inc. v. Sony Corp., United States Court of Appeals, Federal Circuit, No. 2018-1311, 05 August 2019
 
IPR review of a pre-AIA patent is not unconstitutional and substantial evidence supported the Board’s claim construction and invalidity findings.

Substantial evidence supported the Patent Trial and Appeal Board’s claim construction and finding that the challenged claims of a video camera solid state imaging apparatus are invalid in view of prior art, the U.S. Court of Appeals for the Federal Circuit had held. The patentee’s argument that inter partes review of patents issued prior to enactment of the Leahy-Smith America Invents Act is unconstitutional was foreclosed by the Federal Circuit’s recent decision in Celgene Corp. v. Peter (Collabo Innovations, Inc. v. Sony Corp., August 5, 2019, Stoll, K.).
 
Author(s): Cheryl Beise, CCH
 
Source: IP Law Daily - Selected US CasesDate: 19 Aug 2019
 
United States of America Full text Full text as PDF
 
 
 
 
 
USA: Ajinomoto Co. Inc. v. ITC, United States Court of Appeals, Federal Circuit, Nos. 18-1590, 06 August 2019
 
The patentee successfully rebutted the Festo presumption exception as to the scope of surrender by amendment during prosecution because its amendment to the claim language was tangential to the relevant equivalent.

L-amino acid products made using a company’s newer strains of E. coli bacteria infringed upon another company’s patent, but those using older strains did not infringe because the patentee had narrowed the scope of its claims in such a way that excluded the competing products, the U.S. Court of Appeals for the Federal Circuit held in affirming a decision by the U.S. International Trade Commission. There was substantial evidence supporting the ITC’s rulings regarding equivalence, the claim limitations, and the validity of the written description (Ajinomoto Co., Inc. v. ITC, August 6, 2019, Taranto, R.).
 
Author(s): John W. Scanlan
 
Source: IP Law Daily - Selected US CasesDate: 19 Aug 2019
 
Reporter for: United States of America
 
United States of America Full text Full text as PDF
 
 
 
 
 
USA: Aten International Co. Ltd. v. Uniclass Technology Co. Ltd., United States Court of Appeals, Federal Circuit, No. 2018-1606, 06 August 2019
 
Jury’s noninfringement verdict could have been based on improper claim construction testimony, but ATEN failed to object at trial. Evidence did not support jury’s finding that one patent was anticipated.

The federal district court in Los Angeles did not err in rejecting ATEN International’s post-trial motions seeking to overturn a jury’s finding that ATEN competitor Uniclass Technology Co. and its customers did not infringe two ATEN keyboard-video-mouse switching technology patents, the U.S. Court of Appeals for the Federal Circuit has decided. Uniclass’s expert may have given improper claim construction testimony at trial, but ATEN waived this argument by failing to raise it below. However, because substantial evidence did not support the jury’s finding that one of the two patents-in-suit was anticipated by either of two asserted references, the district court erred in denying ATEN’s motion on invalidity. In a separate decision released contemporaneously, the Federal Circuit held that the district court did not abuse its discretion in denying the defendants’ motion for attorney fees (Aten International Co., Ltd. v. Uniclass Technology Co., Ltd., August 6, 2019, Moore, K.).
 
Author(s): Cheryl Beise, CCH
 
Source: IP Law Daily - Selected US CasesDate: 19 Aug 2019
 
United States of America Full text Full text as PDF
 
 
 
 
 
USA: Eli Lilly and Co. v. Hospira, Inc., United States Court of Appeals, Federal Circuit, No. 2018-2126, 09 August 2019
 
A ruling that Hospira’s proposed drug literally infringed Eli Lilly’s patent was reversed, but Hospira’s and Dr. Reddy’s use of pemetrexed ditromethamine was not substantially different from Lilly’s patented use of pemetrexed disodium.

The federal district court in Indianapolis erroneously found that pharmaceutical company Hospira literally infringed an Eli Lilly and Co. patent for a method of administering a chemotherapy drug, pemetrexed disodium, with vitamins, in light of the district court’s claim construction of "administration of pemetrexed disodium," when the Hospira product used a different salt of pemetrexed, the U.S. Court of Appeals for the Federal Circuit has decided. However, the Federal Circuit affirmed the lower court’s decision that Hospira’s planned pemetrexed product infringed the patent under the doctrine of equivalents, as well as a decision in a separate infringement action in the same district that a competing product planned by Dr. Reddy’s Laboratories, Inc. and Dr. Reddy’s Laboratories, Ltd. (collectively, "Dr. Reddy’s") also infringed under the doctrine of equivalents. The Federal Circuit affirmed the district court findings that Lilly did not surrender claim scope during prosecution of its patent and did not dedicate use of the defendants’ salt to the public, and that it was not precluded from contending that the defendants’ use of pemetrexed ditromethamine would infringe under an equivalents theory (Eli Lilly and Co. v. Hospira, Inc., August 9, 2019, Lourie, A.).
 
Author(s): Thomas Long, CCH
 
Source: IP Law Daily - Selected US CasesDate: 19 Aug 2019
 
United States of America Full text Full text as PDF
 
 
 
 
 
USA: Genetic Veterinary Sciences Inc. v. Laboklin GmbH & Co. KG, United States Court of Appeals, Federal Circuit, No. 2018-2056, 09 August 2019
 
The patent owner, a Swiss university, and its exclusive German licensee, were subject to jurisdiction in the United States.

The federal district court in Alexandria, Virginia, did not err in finding that the asserted claims of a patent—directed to in vitro methods for genotyping Labrador Retrievers, in order to discover whether the dog might be a genetic carrier of the disease Hereditary Nasal Parakeratosis—was directed to a patent ineligible natural phenomenon, the U.S. Court of Appeals for the Federal Circuit has held. The court also upheld the district court’s determination that personal and subject matter jurisdiction was proper over both the patent owner, a Swiss university, and the exclusive licensee of the patent, a German company, due to their commercial exploitation and enforcement of the patent in the United States (Genetic Veterinary Sciences, Inc. v. Laboklin GmbH & Co. KG, July 29, 2019, unsealed August 9, 2019, Wallach, E.).
 
Author(s): Cheryl Beise, CCH
 
Source: IP Law Daily - Selected US CasesDate: 19 Aug 2019
 
United States of America Full text Full text as PDF
 
 
 
 
 
USA: Iridescent Networks Inc. v. AT&T Mobility LLC, United States Court of Appeals, Federal Circuit, No. 2018-1449, 12 August 2019
 
The patent holder Iridescent’s argument that the term "high quality of service connection" did not guarantee any level of quality was rejected.

The federal district court in Tyler, Texas, correctly construed the term "high quality of service connection" in Iridescent’s asserted U.S. Patent No. 8,036,119 for an improved network connection as a term of degree that is limited to the minimum connection parameter requirements disclosed in Figure 3 of the ’119 patent, the U.S. Court of Appeals for the Federal Circuit has decided. The district court’s construction of "high quality of service connection" to mean "a connection that assures connection speed of at least approximately one megabit per second and, where applicable based on the type of application, packet loss requirements that are about 10-5 and latency requirements that are less than one second" was supported by the patent’s specification and prosecution history. Thus, the lower court’s judgment in favor of defendants AT&T Mobility and Ericsson (together, AT&T) based on the parties’ stipulation of noninfringement following claim construction, was affirmed (Iridescent Networks, Inc. v. AT&T Mobility, LLC, August 12, 2019, Reyna, J.).
 
Author(s): Peter Reap, CCH
 
Source: IP Law Daily - Selected US CasesDate: 19 Aug 2019
 
United States of America Full text Full text as PDF
 
 
 
 
 
USA: MTD Products Inc. v. Iancu, United States Court of Appeals, Federal Circuit, No. 2017-2292, 12 August 2019
 
Board’s obviousness finding was predicated on erroneous finding that claim term "mechanical control assembly" was not a means-plus-function term.

The Patent Trial and Appeal Board erred in finding that the term "mechanical control assembly" used in two independent claims of a patent directed to a steering and driving system for zero turn radius vehicles had a sufficiently definite structure in the specification to evade § 112, ¶ 6, the U.S. Court of Appeals for the Federal Circuit has held. The Board conflated corresponding structure in the specification with a structural definition for the term and gave improper weight to out-of-context statements in the prosecution history. The Board’s obviousness finding predicated on erroneous claim construction was reversed and the case remanded (MTD Products Inc. v. Iancu, August 12, 2015, Stoll, K.).
 
Author(s): Cheryl Beise, CCH
 
Source: IP Law Daily - Selected US CasesDate: 19 Aug 2019
 
United States of America Full text Full text as PDF
 
 
 
 
 
Trademark (3)
 
 
USA: Hylete LLC v. Hybrid Athletics LLC, United States Court of Appeals, Federal Circuit, No. 2017-2057, 01 August 2019
 
Applicant Hylete LLC waived its right to object to the finding that there was a likelihood of confusion with opposer Hybrid Athletics’ composite common law mark.

The U.S. Court of Appeals for the Federal Circuit has affirmed the Trademark Trial and Appeal Board’s decision sustaining an application by Hylete LLC to register its stylized letter "H" mark for various items of athletic apparel in International Class 25. The court agreed with the Board that there was a likelihood of confusion with opposer Hybrid Athletics, LLC’s common law stylized "H" used for athletic apparel since 2008. Hylete’s only argument on appeal—based on the Board’s alleged failure to credit distinctions between Hylete’s applied-for mark and Hybrid’s "composite common law mark"—were raised for the first time on appeal and were therefore waived (Hylete LLC v. Hybrid Athletics, LLC, August 1, 2018, Reyna, J.).
 
Author(s): Cheryl Beise, CCH
 
Source: IP Law Daily - Selected US CasesDate: 19 Aug 2019
 
United States of America Full text Full text as PDF
 
 
 
 
 
USA: SportFuel Inc. v. PepsiCo Inc., United States Court of Appeals, Seventh Circuit, No. 18-3010, 02 August 2019
 
The large sports drink maker did not infringe a smaller company’s "SportFuel" mark and its use of the term "Sports Fuel" was fair use because it did not use the term as a trademark, and used it descriptively of its goods and in good faith.

The Gatorade Company and its corporate parent PepsiCo (together, Gatorade) did not infringe SportsFuel’s "SportFuel" trademark when Gatorade rebranded itself and began using the slogan "Gatorade The Sports Fuel Company" because Gatorade’s use of the term "Sports Fuel" was fair use under the Trademark Act, the U.S. Court of Appeals in Chicago has ruled. Gatorade did not use "Sports Fuel" as a trademark because it was not used as an indicator of source. Further, Gatorade used the term descriptively of its goods, and used the term fairly and in good faith. Therefore, a decision of the federal district court in Chicago was affirmed (SportFuel, Inc. v. PepsiCo, Inc., August 2, 2019, Kanne, M.).
 
Author(s): Peter Reap, CCH
 
Source: IP Law Daily - Selected US CasesDate: 19 Aug 2019
 
United States of America Full text Full text as PDF
 
 
 
 
 
USA: Luxottica Grp. SpA v. Airport Mini Mall LLC, United States Court of Appeals, Eleventh Circuit, No. 18-10157, 07 August 2019
 
Mall operators had actual or constructive knowledge of tenants’ infringement, including prior law enforcement raids and eyewear maker Luxottica’s notifications of trademark infringement.

A jury properly found that owners and landlords of the International Discount Mall in College Park, Georgia, had at least constructive knowledge that subtenants were infringing Luxottica Group’s Ray-Ban and Oakley marks by selling counterfeit sunglasses, the U.S. Court of Appeals in Atlanta has held. The court affirmed the jury’s verdict that the defendants were guilty of contributory infringement, because with that constructive knowledge, they continued to lease space to those subtenants (Luxottica Grp., SpA v. Airport Mini Mall, LLC, August 7, 2019, Pryor, J.).
 
Author(s): Robert Margolis, CCH
 
Source: IP Law Daily - Selected US CasesDate: 19 Aug 2019
 
United States of America Full text Full text as PDF
 
 
 
 
 
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