This week in IP: Law firms leave Russia while IP offices cut and extend ties, and more
Restaurants sue Google; Albright overruled on transfer again; Europol counterfeiting report published; Avanci expands VW deal; Stolichnaya vodka rebrands
Russia allows IP compulsory licensing against sanctioning states
Russia’s prime minister Mikhail Mishustin announced on March 7 that rights owners from territories that had sanctioned Russia would not be entitled to any compensation for the unauthorised use of their intellectual property.
State-run news agency TASS previously reported on Saturday, March 5, that Russia’s Ministry of Economic Development was considering lifting restrictions on the use of IP to counter supply shortages.
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Other Managing IP stories published this week include:
USPTO halts Rospatent PPH while China extends Eurasian patent partnership
The USPTO announced yesterday, March 10, that it would terminate its Global Patent Prosecution Highway agreement with Russian intellectual property office Rospatent today, March 11.
In an extension of its decision to cease co-operation with officials from Rospatent and the Eurasian Patent Organization (EAPO) last week, the office said it would no longer grant requests to participate in the GPPH when such requests were based on work performed by Rospatent.
The USPTO also said that in pending cases where the office granted special status under the GPPH to applications based on Rospatent’s work, it would remove that status and return the applications to the regular processing and examination queue.
The news came just one day after the EUIPO announced that it had ceased cooperation with Rospatent and the EAPO. The EU trademarks and designs office said it joined the broader EU in condemning, in the strongest possible terms, Russia’s unprovoked and unjustified military aggression against Ukraine.
In stark contrast, China’s IP office said on Tuesday, March 8, that it would extend the Eurasian Patent Organization Patent Prosecution Highway (PPH) pilot project for another year from April 1 2022.
The CNIPA also said that the relevant requirements and procedures for submitting PPH requests in the two offices remained unchanged.
These developments follow the EPO’s announcement from March 1 that it had suspended all cooperation with Rospatent and the EAPO.
The EAPO is an intergovernmental organisation established in 1995 by the Eurasian Patent Convention to govern the grant of Eurasian patents.
To date, Russia, Kazakhstan, Azerbaijan, Kyrgyzstan, Moldova, Armenia, Turkmenistan, Belarus and Tajikistan have ratified the convention.
The China-Eurasian PPH programme was launched in April 2018 and allows an applicant to request accelerated examination of a corresponding application at a second IP office if the claims under the initial application are approved by the first office.
Law firms shut Russia offices and ditch clients
Several global law firms with significant intellectual property practices pulled out of Russia and cut ties with their controversial Russian clients this week in reaction to the invasion of Ukraine.
Gowling WLG confirmed on Wednesday, March 9, that it was leaving Russia and not taking on new instructions from Russian clients, whether they were “sanctioned or not”.
The firm said it would end existing relationships with Russian clients in a manner that complied with its professional obligations.
London-based Linklaters became one of the first firms to exit Russia last Friday, March 4, 30 years after it established its Moscow office. The firm also pledged not to act for clients connected with or under the influence of the Russian state.
Norton Rose Fulbright followed suit on Monday, March 7, adding that it would donate profits from work with certain Russian clients to humanitarian causes in instances where it could not end relationships immediately.
Squire Patton Boggs is also shutting down its Russian practices.
Other major firms including Hogan Lovells have kept their Russian offices open. Hogan Lovells said it was reviewing the situation and complying with all sanctions.
Google hit with class-action suit from restaurants
Left-Field Holdings, which operates six Lime Fresh Mexican Grill locations, sued Google for allegedly using deceptive online ordering practices and violating the Lanham Act on Tuesday, March 8.
Law firms Keller Lenkner, Sperling & Slater and Hausfeld filed the suit at the District Court for the Northern District of California on behalf of the restaurants.
The plaintiffs alleged that the tech company directed consumers to websites that it owned after said users searched for restaurants on Google.
According to the complaint, Google prominently featured the restaurants’ trade names at the top of these pages and used them to capture food orders that it then sold to delivery services, such as DoorDash, Grubhub and Postmates.
The complaint claimed Google never obtained the restaurants’ approval to use their trade names and that this practice resulted in them paying hefty fees to delivery platforms.
Jason Zweig, partner at Keller Lenkner in New York, said the restaurant industry had already been gutted by COVID.
“Online orders have served as a lifeline to help them reach customers, make a slim profit, and continue employing their staff members.
“It is appalling that Google would take advantage of an industry going through such a challenging time and, through these deceptive and illegal practices, take a portion of their hard-earned profits for itself.”
The complaint further contended that while certain delivery services were licensed to sell the restaurants’ food on their own websites, these agreements did not authorise Google to do the same.
The plaintiffs said they were seeking actual and enhanced damages from the search engine company. They also asked for injunctive relief to prevent Google from using the class members’ trade names in connection with its online ordering services.
Albright overruled again on motions to transfer
Judge Alan Albright was once again overruled on a motion to transfer by the US Court of Appeals for the Federal Circuit this week.
On Wednesday, March 9, the appellate court vacated Albright’s refusal to dismiss or transfer the patent infringement cases filed by non-practising entity StratosAudio against Volkswagen and Hyundai.
Albright, the de-facto patent judge at the District Court for the Western District of Texas, said Volkswagen and Hyundai had regular and established places of business in western Texas because independently owned and operated car dealerships had been established there.
The appellate court disagreed with this finding, noting that while the dealerships had such places of business within the western district, said dealerships were not agents of the car companies.
StratosAudio sued Volkswagen and Hyundai for patent infringement in the Western District of Texas in December 2020.
Volkswagen then filed a motion to dismiss or transfer to the District Court for the Eastern District of Michigan, and Hyundai filed a motion to dismiss.
Albright denied both motions in September 2021, which caused the car companies to petition the Federal Circuit for a writ of mandamus.
Counterfeiters profiting from pandemic, warns Europol
Counterfeiters have taken advantage of the COVID pandemic and adapted their strategies to meet growing demand, a joint report from the EUIPO and Europol found on Monday, March 7.
The latest Intellectual Property Crime Threat Assessment report found that the distribution of counterfeits was increasingly reliant on social media and e-commerce platforms – a trend exacerbated by the pandemic.
It combines operational findings and information available to Europol with data compiled by the EUIPO.
The agencies said that while counterfeits continued to originate mostly from outside of Europe, there was a growing trend of counterfeit manufacturing taking place within the bloc.
Authorities discovered an increase in the importation of counterfeit packaging materials and semi-finished products, indicating the presence of illegal manufacturing facilities in the EU.
Counterfeiters have also taken advantage of the global shortage of semiconductor chips, introducing difficult-to-trace counterfeit chips into the supply chain, the report warned.
EUIPO executive director Christian Archambeau commented: “This new threat assessment casts new light on the scope and trends of counterfeiting and piracy within the EU, and highlights the serious damage that can be caused to consumers’ health as well as the impact on legitimate businesses, particularly during these challenging times of COVID-19 recovery.”
Catherine De Bolle, Europol executive director, said the pandemic had presented new business opportunities to criminals, and called for cross-border action against fake goods.
She also highlighted the importance of stopping the counterfeit trade to the post-COVID economic recovery.
In December, Managing IP named De Bolle as one of the 50 most influential people in IP, owing to Europol’s anti-counterfeiting activities.
Avanci expands patent deal with Volkswagen to cover 4G
German carmaker Volkswagen has expanded its existing deal with Avanci to cover 4G standard essential patent licences, it was announced on Tuesday, March 8.
The 4G agreement will give Volkswagen access to technologies from 49 different companies, and will set the stage for the settlement of infringement suits filed against the car company by various 4G patent owners.
Taiwanese electronics company Acer agreed to dismiss its lawsuit against Volkswagen for the alleged unauthorised use of its 4G wireless technology in a filing before the US District Court for the Eastern District of Virginia on March 8.
Volkswagen had said in December that Acer’s claims were unfounded, but submitted before the court in late January that the parties were considering settlement options.
The 4G deal will probably also put to rest the SEP dispute filed before the Munich Regional Court by Avanci licensor IP Bridge against Volkswagen.
With the news of the extended deal with Avanci, Volkswagen has now caught up with its German competitors BMW and Daimler, which already have 4G agreements with the platform.
“Volkswagen has been a valued Avanci licensee since 2019, and we are very pleased to have expanded our relationship to license Volkswagen 4G connected vehicles under the essential patents of the 49 patent owners participating in the Avanci marketplace,” said founder and CEO of Avanci Kasim Alfalahi.
Stolichnaya vodka rebrands to shed Russian links
Stolichnaya, a brand of vodka with Russian associations, has changed its name to Stoli in a “direct response to Russia's invasion of Ukraine”, the company announced on Monday, March 7.
The vodka brand, which has previously been marketed as ‘Russian’, said it “unequivocally condemns the military action in Ukraine and stands in support of the Ukrainian people”.
The founder of the company, Russia-born billionaire Yuri Shefler, said the name and its association with Russia was no longer representative of the brand.
“While I have been exiled from Russia since 2000 due to my opposition to [Russian president Vladimir] Putin, I have remained proud of the Stolichnaya brand,” Shefler said in a company press release.
“Today, we have made the decision to rebrand entirely as the name no longer represents our organisation. More than anything, I wish for ‘Stoli’ to represent peace in Europe and solidarity with Ukraine.”
Stolichnaya started life as a Russian brand in the former Soviet Union. But in recent years, the vodka has been produced in Latvia by the Luxembourg-based SPI Group. Shefler now lives in Geneva, Switzerland.
The ownership of Stolichnaya and its trademarks has been disputed between the Russian state-owned company FKP Soyuzplodoimport and SPI Group.