This week in IP: Gazprom Neft talks TM strategy, ByteDance joins OIN, India offers fee reduction
Managing IP rounds up the latest patent, trademark and copyright news, including some stories you might have missed
Gazprom Neft interview: counsel discusses strategy behind well-known status and more
This week Managing IP spoke to the head of intellectual property at Gazprom Neft, Russia’s third largest oil producer, about some of the team’s recent trademark successes.
In the interview, Vadim Nyunayevtold Managing IP that the company has the largest Russian-owned trademark portfolio, and in 2019 even had the highest success rate of any brand in taking domestic trademarks from application to registration – just 4% of marks were refused.
He also spoke about the company’s recent victory in securing well-known trademark status for the look and feel of GPN’s gas stations, and delved into how the company manages its trademarks.
Other Managing IP stories published this week include:
TikTok parent company joins OIN
ByteDance, the parent company of social media platform TikTok, has joined Open Invention Network, OIN announced on Tuesday, August 17.
OIN cross-licenses Linux System patents among over 3,500 members. The network helps businesses manage litigation risk from both operating companies and non-practising entities (NPEs).
Lynn Wu, chief IP counsel at ByteDance in Beijing, said in a statement that the company viewed Linux and adjacent open-source software as key elements for its business.
“ByteDance’s participation in the OIN community shows our consistent commitment to shared innovation. We will continue to support it with patent non-aggression in core Linux and other important OSS technologies.”
Keith Bergelt, CEO of OIN, said in a statement that the network was glad that ByteDance was looking to do its part to mitigate global patent risk for open-source software by joining OIN, and demonstrating its commitment to collaborative innovation and patent non-aggression in open source.
In February, ByteDance also joined the LOT Network, whose participants sign up for an agreement where if any member company ever sells a patent to an NPE, that patent will be licensed to all of the network’s signatories.
India offers reduced patent fees for educational institutions worldwide
India’scommerce and industry minister Piyush Goyal announced on Tuesday, August 17, that educational institutions both at home and abroad will be eligible for an 80% fee reductionwhen applying for patents.
Until now, a reduction has only been available for government-owned institutions.
“I think it’s quite unfair that this is restricted only to innovation coming out of government institutions,” said Goyal at the National IP Awards 2020 ceremony, where the announcement was made.
The move means that the fee for filing, publication and renewal of patent applications filed by educational institutions will now come down to approximately INR 85,000 ($1,140) from around INR 425,000 ($5,715).
“I think this will be a great encouragement for universities and I do hope to see lots and lots of new universities and educational institutions participating in this,” he added, calling for universities across the globe to take benefit of the reduced fees.
However, the proposed reduction has yet to come in force and the Department for Promotion of Industry and Internal Trade is taking the necessary steps for its approval.
Goyal also highlighted that the timeline for patent examination has been reduced from 72 months in December 2016 to between 12 and 24 months in December 2020, and the government is assessing whether it can further reduce the timeframe.
INTA backs brand co-existence in CJEU filing
Industry body INTA filed an amicus brief at the Court of Justice of the EU on Tuesday, August 17, in support of a trademark and a trade name being able to co-exist.
The CJEU is hearing the case, MeeringTouringcars Amsterdam v Classic Coach Company, after it was referred from the Supreme Court of the Netherlands.
It concerns whether MeeringTouringcars Amsterdam can invoke its later-registered trademark against Classic Coach Company’s older trade name, which is unregisteredbut has local significance.
According to the filing,INTA argues that the earlier right can co-exist with the later trademark registration and does not constitute a barrier to it, nor can the owner of the later trademark object to the older unregistered right.
This is the second INTA filing with the CJEU in as many months. As Managing IP reported, the association filed a brief in June that supported so-called non-challenge clauses in trademark-related private contracts. That case is Leinfelder Uhren München v E Leinfelder.
Disney to face jury trial on film profits
The US District Court for the Northern District of California partly rejected Disney’s plea for summary judgment in a copyright, trademark, and patent infringement suit on Monday, August 16, holding that there are triable issues concerning three hit films.
A jury will now decide if allegedly infringed technology MOVA Contour, which precisely captures and tracks the 3D shape and motion of a human face – and was allegedly used by the defendants Disney and Twentieth Century Fox in three hit films – obliges them to give up a part of their profits.
The three films are ‘Deadpool’, ‘Guardians of the Galaxy’ and ‘Beauty and the Beast’.
Disney argued that it is entitled to summary judgment as the defendant Rearden cannot show a causal nexus between the motion pictures’ profits and the alleged infringement. Also, the profits derived from their alleged use of the copyrighted technology is not actionable.
However, the court concluded that Rearden had satisfied its evidentiary burden at the summary judgment stage and is entitled to present its causal nexus theories and evidence to the jury in respect of the three hit films.
Rearden had cited trailers of the movies and media interviews to support its claim that Disney advertised its use of MOVA and used MOVA-based clips in the trailers to drive interest in the films.
In respect of the other movies of interest – ‘Terminator: Genisys’, ‘Avengers: Age of Ultron’, ‘Night at the Museum: Secret of the Tomb’, and ‘Fantastic Four’ – the court granted the defendants’ motion for summary judgment as Rearden failed to show a causal nexus between the alleged infringement and profits derived.
Optis Wireless snags $300m in royalties against Apple
A jury ordered Apple to pay $300 million to Optis Wireless Technology and related companies for patent infringement on Friday, August 13.
The related companies included Optis Cellular Technology, Panoptis Patent Management, Unwired Planet and Unwired Planet International.
The jury determined that the money, which is $200 million less than the sum Apple was originally ordered to pay last year, should be awarded as a lump sum rather than a running royalty for past sales.
Last August, in the first patent jury trial since the start of the pandemic, Apple was told to pay $506.2 million as royalty for past sales after the company had wilfully infringed five patents. The jury also ruled that the asserted claims were not invalid.
But Chief Judge Rodney Gilstrap with the District Court for the Eastern District of Texas vacated the damages determination this April and ordered a new damages trial because the jury should have been able to consider whether the patents were licensed under fair, reasonable and non-discriminatory terms.
In a statement to other media outlets, Apple said: “Optis makes no products and its sole business is to sue companies using patents they accumulate. We will continue to defend against their attempts to extract unreasonable payments for patents they acquire.”