Patent Law – Week 5

Patent Infringement
General
1. Are you pro-patent? Anti-patent? Somewhere in-between?
What do you think the most popular answer to this will be?
2. What is the most prevalent justification for the patent system?
3. What objections can be made to the patent system?
4. Should it matter whether an infringer was aware of the infringement at the
time of releasing their product?

Frameworks
5. What was the impact of the TRIPS Agreement on patent laws around the
world?
6. What Treaty or Convention that we have reviewed has had the most
negative effect on global patenting?
7. What Treaty or Convention has had the most positive effect on global
patent systems?
8. If you could introduce one single-provision Treaty to be implemented
globally, what would that provision set out?

Patents & Medicine

9. Were patents a barrier to the development of Covid vaccines? Why/Why
not?
10.Do patents hinder access to medical treatment? If so, is this effect
localised or regional? How does it manifest?
11.List three measures that could be introduced to reduce the impact of
patents on consumer access to medicine?
12.Would the introduction of these measures impede business investment in
R&D in the field of medical innovation? How could this effect be
mitigated? What measures could be introduced?
Covid Litigation
- Moderna is suing Pfizer and BioNTech
- https://www.pharmtech.com/view/moderna-files-suit-against-pfizer-and-
biontech

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 Trademarks
What is a Trademark?
- Brand identity which distinguishes a company’s products or services
- E.g. Words, phrases, design, logo, symbol
- Identify the origin of the product to the consumer
- Gives the owner the right to exclude others from using the brand, or similar
- How would this be distinguished from a Design Patent?

History of Trademarks
- First ever Trademark system was a requirement to distinguish bread from
certain bakers in France in the 1200s
 Protect the consumer
- But also - Roman blacksmiths branded their swords
 Protect the brand
- The first Trademark framework was introduced in France and UK in the
1800s
- Prohibited copying a Trademark “with intent to defraud”
- A more formal framework was developed and introduced in 1938 in the UK
 Applications
 Publication for opposition prior to grant
 Intent-to-use

Why Trademarks?
- Origin of the product
 Connemara socks
- Reputation of the brand for quality, durability, cost- effectiveness..
 Apple, LandRover, Honda
- “Goodwill”
 Monetary value of a brand (if it were to be sold)
- Protect the consumer – bread
- Protect the producer – swords

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Applying for a Trademark
- Apply for Trademark at Regional IP offices
 Intellectual Property Office of Ireland – IPOI
 European Intellectual Property Office – EUIPO
 US Patent and Trademark Office – USPTO
- Application  Publication  Opposition Period  Grant
- In Ireland, takes roughly 8 months. But can be from 2-24 months depending
on jurisdiction
- Unregistered Trademark™ vs Registered Trademark®
- Also, in the US – a Service Mark℠

Trademark Criteria and Exclusions

Requirements
- Distinctive (novel)
- Genuine use/intent to use
- Clear identification of what goods/services the applicant is seeking to
protect
Exclusions
- Cannot be “likely to confuse”
- Already in use by competitors
- Overly descriptive
- Any feature of the goods which is required to obtain a technical result
- Any feature which gives “substantial value” to the goods
- Deceptive (e.g. Regional claim)
Criteria
- it must be a sign
- that sign must be capable of graphic representation; and
- the sign must be capable of distinguishing the goods or services of one
undertaking from those of other undertakings.

What can be covered?

- Device

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 - Brand
- Label
- Name
- Signature
- Word
- Letter
- Numeral
- Product shape
- Packaging
- Colour
- Combination of colours
- Smell
- Sound
- Taste
- Movement (gif, hologram)
- Multimedia
- or any combination of the above...!
- Article 15(1) TRIPS: "any sign...capable of distinguishing the goods or
services of one undertaking from those of other undertakings“
- Article 4 Council Regulation (EC) No. 40-94 of 20 December 1993: "any
signs capable of being represented graphically...provided that such signs
are capable of distinguishing the goods or services of one undertaking
from those of other undertakings"

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Unregistered Trademarks
- Arise through use of the Mark alongside the product or service
- Varies by jurisdiction
- E.g. Germany:
 must be used in Germany,
 occupy the commercial space,
 protection only applies locally, and can be duplicate owners

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  “sufficient degree of consumer recognition” 20% - 50% depending on
distinctiveness

Genericide
- But... if a mark becomes synonymous with that product or service to the
extent that the trademark owner can no longer enforce its proprietary
rights, the mark becomes generic.
- “Trademark erosion”
- Examples of brands who fought trademark erosion: Nintendo, Xerox, Band-
Aid, Lego..
- Examples of brands who lost: Ps, Google, Henry

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 Reading for Week 6
Be able to answer the following questions:
- What was disputed in the case?
- What was the outcome?
- What were the relevant EU Regulations which applied?
- Why is this case important?
 Libertel Groep v Benelux Merkenbureau (case C-104/01)
 Adidas Sportschuhfabriken Adi Dassler KA v Charles O'Neill
& Company Ltd [1983] ILRM 112
 Supermac’s (Holdings) Ltd v McDonald’s International
Property Co Ltd (14787-C, EUIPO
 Supermac’s (Holdings) Ltd v McDonald’s International
Property Co Ltd (14788-C, EUIPO)
 Ralf Sieckmann v Deutsches Patent-und Markenamt [2002]
(case C-273/00)

Libertel Groep v Benelux Merkenbureau (case C-104/01)

- ECJ case between mobile phone companies
- What was disputed in the case?
 Can a colour be protected by trademark
 Trademark application in question contained the word “orange” and
an orange rectangle
- What was the outcome?
 Criteria: it must be a sign; that sign must be capable of graphic
representation; and the sign must be capable of distinguishing the
goods or services of one undertaking from those of other
undertakings.
 A colour can constitute a sign under the above definition, however:

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 o A mere simple description or physical sample is not sufficient –
as the description is not sufficient clear and precise, and the
physical sample not sufficiently stable or durable (over time)
o There must be a graphic representation, which must be “clear,
precise, self-contained, easily accessible, intelligible, durable
and objective”.
o The applicant must provide a clear, internationally recognised
digital colour identification code
o The colour must have distinctive character – must convey
particular characteristics of the product or service (eg. Origin,
quality, feature...)
o Must be accompanied by evidence of genuine use
- What were the relevant EU Regulations which applied?
 Article 3(1)(b)
- Why is this case important?
 Colours can be registered as trademarks if:
o Colour coveys a distinctive characteristic of the brand
o Colour is in use
o A sufficient description or internationally recognised colour
code is provided

Ralf Sieckmann v Deutsches Patent-und Markenamt [2002] (case C-273/00)

- ECJ case on the trademark of a scent
- What was disputed in the case?
 Whether the Applicant was entitled to trademark protection of the
scent: "methyl cinnamate"
 Description provided: "as balsamically fruity with a slight hint of
cinnamon"
 The case illustrates difficulties with the graphical representation of
scent marks, as the ECJ held that these representations, whether
individually or collectively, could not satisfy this requirement
- What was the outcome?
 Upheld the refusal of the German patent office to grant the
trademark

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  A chemical formula is not a sufficient description to protect a scent or
smell
 Does not meet the requirements of precision or clarity
 The written description provided by the applicant was insufficient
 A physical sample of the product was not “sufficiently stable or
durable”
- What were the relevant EU Regulations which applied?
 Article 3(1)(b)
- Why is this case important?
 Trademark applications for scents – requires a description of
sufficient clarity and/or a sample of sufficient stability and durability

Adidas Sportschuhfabriken Adi Dassler KA v Charles O'Neill & Company Ltd

[1983] ILRM 112
- Irish Supreme Court Case on sportswear design
- What was disputed in the case?
 Complainant sought an injunction against the Respondent to cease
and prevent the selling of sportswear products with the ‘three stripe’
design
 Respondent argued the ‘three stripe’ design was merely a fashion
trend within the industry
 O’Neills had been manufacturing sportswear with ‘varied numbers of
stripes’ for sale in Ireland since 1965
 Adidas entered the Irish market in very limited quantities in 1976
- What was the outcome?
 Injunctions: The balance of convenience.
 “the use of stripes of varying colours and numbers on sportsgear [is]
a fashion in the trade and O’Neill had done no more than to adopt
this fashion and to use on their products the same number of stripes
as Adidas did on their products.. In doing so, O’Neill had not
attempted to deceive or pass off and had in fact not done so”
- What were the relevant law which was applied?
 Injunctions: The balance of convenience when issuing an
interlocutory injunction

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  Trademarks Act 1996
- Why is this case important?
 SC gave consideration to:
o Fashion trend versus branding
o Brand activity within a jurisdiction

Supermac’s (Holdings) Ltd v McDonald’s International Property Co Ltd (14788-C,

EUIPO)
- EUIPO Cancellation Division revocation of the McDonald’s “Big Mac”
trademark
- What was disputed in the case?
 A trademark may be revoked in the absence of evidence of genuine
use.
 The Respondent provided evidence of use in the form of:
o Affidavits
o Brochures, posters, packaging
o Websites
o Wikipedia information
- What was the outcome?
 The mere existence of a trademark is not sufficient to demonstrate
its use
 Evidence of use must be provided from independent sources
 Evidence was insufficient as it originated from the Respondent
business, as opposed to evidence demonstrating consumer use
 No evidence was provided as to the exposure of consumers to the
trademarks evidenced (How could this question be answered for the
evidence provided?)
 Wikipedia entries are not reliable sources of information
- What were the relevant EU Regulations which applied?
 Article 3(1)(b)
- Why is this case important?
 Evidence of use must be consumer-focused, and must be
independently sourced

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 Trademark Infringement

EU Trademark Regulations 2019:

- Can address supply chain prior to infringing product release
- Infringing goods destined for third party countries can now be seized at
customs: Ireland no longer being used as transport hub
- Burden of proof on transporter to demonstrate absence of infringement in
destination jurisdiction
- Applications can only be opposed by third parties with previous registered
rights
 “Relative grounds” as opposed to “absolute grounds” of exclusion
criteria (being generic, descriptive, vital to the use of the device...etc)
- “Name Defence” now only applies to individuals, not companies (Smyth’s,
McDonald’s) - and only when used in good faith
- Use of a trademark (nominative fair use) in comparative advertising in a
misleading manner contrary to the Misleading and Comparative Marketing
Regulations 2007 can be considered Trademark Infringement.

Trademark Infringement & Defences

- Intent
 US: Intent does not need to be demonstrated, however
willful/intentional infringement may affect damages awarded
- Typically addressed with injunctions
- Trademark fair use (NOT equivalent to copyright fair dealing)
 Descriptive fair use: use of the components of a trademark in their
descriptive sense (eg. “Inhibitor” ™ as was used by WD-40 to
describe a product)
 Nominative fair use: use of a trademark to describe the products or
services of the trademark owner (eg. “Casio printer”, “Kodak
camera”)
- Laches
- Equity / “unclean hands” principle
- Pursue revocation of the Trademark

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 - Acquiescence (knowing, five years +)

Trademark Search Tools

- Ireland
 Intellectual Property Office of Ireland (IPOI)
 https://eregister.ipoi.gov.ie/query/TMQuery.aspx
- EU
 European Intellectual Property Office (EUIPO)
 https://euipo.europa.eu/eSearch/
- US
 United States Patent and Trademark Office (USPTO)
 https://tmsearch.uspto.gov/bin/gate.exe?
f=tess&state=4810:6vvjrz.12.1
- Link to all national patent offices
 https://www.tmdn.org/tmview/#/tmview/participating
- Global (searches almost all patent offices globally)
 TM View
 https://www.tmdn.org/tmview/#/tmview

Passing Off
- Passing off: Common law tort protecting unregistered trademarks
- “Passing off” goods or services as those of another, or misrepresenting an
association or connection between the goods or services and those of
another
- No requirement for intent to deceive/defraud
- Covers ‘trade dress’, ‘get up’ of any aspect of the product or service
- Can be brought as simultaneous causes of action
- Passing off does not require the brand/logo/registered trademark to be
used by the alleged infringer
- Cause of action to protect the goodwill of the holder of the unregistered
mark

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 - Significant emphasis on the perception of the consumer – “real risk of
confusion”
 Threshold for consumer awareness: “Moron in a hurry” – not a
careful examination by an observant and knowledgeable customer
 Can occur even when complainant and respondent are not in the
same business or trade
 May be dependent on the uniqueness of the brand/mark
- “Objective similarity”
- Can be a cause of action even when the brand is not active in the
jurisdiction – as long as goodwill can be evidenced
 Recognised brand name with value
- Celebrity case law – goodwill in name and reputation
- False claims of endorsement
- Rihanna v Arcadia Group Brand Ltd (Topshop)
 T-shirts with Rihanna’s image
 Implied endorsement of the product
 No consent obtained
 Damage to the goodwill of name and reputation
 Passing off

Infringement & Defences

- To assert passing off, complainant must demonstrate:
 Goodwill or reputation in the mark
 Alleged infringement is/is likely to cause confusion in consumers
 Damage has been or is likely to be caused
- Defences:
 Refute any one of the above criteria
 Use of own name (in the case of individuals)
 Acquiescence (knowing, five years +)

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 IP in Fashion & Clothing

Designs & Copyright

- Doctrine of separability: Protection for ‘separable design features’
involving ‘creative works of authorship’

Star Athletica, L. L. C. v. Varsity Brands, Inc. (03/22/2017)

- USSC: A feature incorporated into the design of a useful article is eligible
for copyright protection only if the feature
- (1) can be perceived as a 2D or 3D work of art separate from the useful
article, and
- (2) would qualify as a protectable pictorial, graphic, or sculptural work—
either on its own or fixed in some other tangible medium of expression—if
it were imagined separately from the useful article into which it is
incorporated.

Logos & Trademark

- Logos, indications of source/origin
- “Traditional manner” - clothing labels, “hang tags” as well as on front of the
clothing
- Can apply for trademark protection on a functional aspect of the clothing –
buckle, zip – but must demonstrate brand recognition by consumers based
on that functional feature alone

Patents & Useful/functional aspects of clothing or clothing manufacture

- Design patents: New, original, ornamental designs
- Copyright will not cover ‘useful’ inventions, and only works of authorship
- Materials
- Manufacturing methods
- Manufacturing machines
- Construction of garments

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