This week in IP: Israel and Morocco sign IP pact, Xiaomi renews AAC licence, and more
VR brand ‘crushed’ by ‘toxic’ Meta; UPC reveals amended opt-out system; UK ambassador supports Ukraine; Grand Board of Appeal sets date for first oral hearing; Manolo Blahnik wins 20-year China TM case; USPTO seeks public comment on PTAB processes
Risk of SPC waiver counterattack makes generics extra cautious
Generic industry reps were in a bullish mood at the start of this month when the EU’s supplementary protection certificate manufacturing waiver took full effect.
But their optimism was tapered with caution.
On July 1, the day the waiver’s transitional period ended, representative organisation Medicines for Europe remarked that the legislation shouldn’t be misused by innovators to block competition.
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Other Managing IP stories published this week include:
VR brand ‘crushed’ by ‘toxic’ Meta association
A virtual reality company was crushed by Facebook’s Meta rebrand, according to a complaint filed at a New York federal court on Tuesday, July 19.
Facebook rebranded as Meta Platforms in October 2021 to symbolise a shift to metaverse-related services.
According to the action filed at the District Court of the Southern District of New York, Meta Platforms ignored the pre-existing trademark rights of US virtual reality company MetaX.
The VR company, which says it specialises in multisensory live experiences, had previously operated under the name Meta.
It could no longer do so, it claimed, because of the toxicity associated with Facebook.
The company pointed to the numerous controversies attached to Meta Platforms and its services, such as Instagram’s impact on young girls’ mental health.
“Facebook has brazenly violated fundamental intellectual property rights enshrined in US law to obliterate a small business,” MetaX argued.
MetaX notified the social media company of its infringing conduct, but Meta Platforms responded that the companies offered drastically different goods and services, the complaint noted.
The plaintiff asked the court to bar Meta Platforms from using the name in association with VR and augmented reality services.
UPC reveals amended opt-out system
The Unified Patent Court published amendments to its Rules of Procedure that included significant changes to opt-out and transparency rules on Monday, July 18.
The new rules confirmed that all court opinions and judgments would be made public, a U-turn from the previous version Managing IP reported on in April.
They also added a mechanism for withdrawing an unauthorised opt-out of a European patent from the system, a scenario not previously covered in the Rules of Procedure.
The amended rules also clarified that an opt-out must cover all designations of a European patent (EP), even in territories that were not UPC member states.
The previous version suggested patent owners couldn’t opt out EP designations for non-UPC member states.
In an explanatory note, the UPC’s Administrative Committee said the wording was inconsistent with the indivisibility of an opt-out application.
“[The old wording] implies that the UPC solely has jurisdiction over UPCA contracting member states, which is not the case,” the note says.
Amendments also included a new section that allowed oral hearings to be held via videoconference at a judge’s discretion.
The UPC Administrative Committee adopted the rules at its July 8 meeting and will publish a consolidated version before September.
UK ambassador supports Ukraine’s IP system
The UK's permanent representative to the WTO in Geneva issued a statement responding to Ukraine’s call for assistance and support for its innovation and IP system on Wednesday, July 20.
Speaking during the 60-second series of meetings at WIPO’s Assemblies of the Member States, Simon Manley said the UK fully supported Ukraine’s proposal, which was intended to ensure the country’s innovation community received support during the Russian invasion.
He also highlighted the UKIPO’s efforts to support Ukrainian IP owners and innovators during the conflict.
These efforts included using maximum flexibility available in law to consider requests for extensions of time, reinstatements and restorations, supporting 130 Ukrainian academics under the UK’s Researchers at Risk programme, and providing funding to support Ukrainian academic institutions.
The ambassador also said WIPO needed to do more.
“While the UK has made these and other efforts on a bilateral basis, we also believe that in the multilateral space, there are positive actions that WIPO can undertake to support the innovation landscape in Ukraine.”
He pointed out that most international organisations have convened discussions on the impact of the Russia-Ukraine war following a UN General Assembly resolution urging the immediate peaceful conclusion of the conflict.
“WIPO too should make its unique contribution to this global effort,” he said.
Israel and Morocco sign IP pact
Israel and Morocco signed their first IP agreement in Geneva to enhance their bilateral relationship on Monday, July 18.
The Israel Patent Office’s executive director Ofir Alon and the director general of the Moroccan Office of Industrial and Commercial Property, Abdelaziz Baqiqi, signed the memorandum of understanding in the presence of WIPO director general Daren Tang.
The agreement, signed during the 60-second series of meetings of WIPO’s Assemblies of the Member States, will automatically renew every five years.
Omar Zniber, Morocco’s ambassador to the United Nations in Geneva, said: “This memorandum of understanding demonstrates our willingness to develop a partnership in innovation, creativity and high technology.”
Both countries have agreed to strengthen knowledge-sharing between their IP offices and help small and medium-sized businesses secure protection for their innovations.
Meirav Eilon Shahar, Israel’s ambassador to the United Nations in Geneva, said the agreement would enable entrepreneurs and innovators to build a more prosperous and sustainable future.
“We value this bilateral cooperation and will work to expand it.”
Grand Board of Appeal sets date for first oral hearing
The EUIPO’s Grand Board of Appeal will hold its first oral hearing in the Iceland v Iceland case on September 9, the office announced on Wednesday, July 20.
The GBoA will consider an invalidity request made by the Icelandic Ministry of Foreign Affairs against British supermarket brand, Iceland. It is the first time an oral hearing has been ordered by the GBoA.
The case deals with the alleged descriptiveness and non-distinctiveness of the figurative and word marks for ‘Iceland’ in relation to a range of goods and services.
By ordering an oral hearing, the GBoA is expected to gain a better understanding of the logic of the parties at the time of filing. The move also demonstrates that the boards have the same means available to it as a court.
In 2019, the EUIPO’s Cancellation Division invalidated two EU trademarks (EUTMs) for ‘Iceland’ owned by the supermarket on the basis that they were descriptive of the geographic origin of the goods and services.
Iceland’s government, plus two non-governmental agencies, joined forces to invalidate the EUTMs. Iceland Foods appealed the finding and, subsequently, the EUIPO’s Board of Appeal referred the cases to the GBoA.
The session begins at 9.30am (CET) on September 9. Interested parties can register to attend online.
Sex and the City shoe brand wins two-decade trademark battle
Shoe brand Manolo Blahnik has won a trademark battle in China more than 20-years after falling victim to the country’s first-to-file system, the company said this week.
In a statement on Tuesday, July 19, the firm – which is named after its Spanish founder – said it had won its case at the Supreme People's Court of China, the country's highest court.
Manolo Blahnik had taken numerous actions against Chinese businessman Fang Yuzhou since 2000 to dispute the validity of trademarks he had filed related to the ‘Manolo Blahnik’ name.
Manolo Blahnik's stilettos were made famous by celebrities sporting them and after their appearances in the popular TV series Sex and the City.
The shoe brand is one of several brands to have fallen victim to China’s first-to-file rule in the past.
But there have been signs of a shift in attitude, including amendments to the country’s trademark law in 2019, which took aim at bad faith trademark filings.
Kristina Blahnik, the niece of founder Manolo Blahnik, said: “This is a meaningful victory for my uncle, our family and our team, and I want to express gratitude to the Supreme People’s Court of China for its thorough and careful consideration of our long-standing case.”
USPTO seeks public comment on PTAB processes
The USPTO announced that it would seek public comment on director review, Precedential Opinion Panel review and internal circulation and review of Patent Trial and Appeal Board rulings on Tuesday, July 19.
The office stated that it had implemented interim processes to promote the accuracy, consistency and integrity of PTAB decision-making and it wanted to formalise these processes through notice and comment rulemaking.
The office wanted to know whether any changes should be made to the interim director review process. It asked whether only parties to proceedings should be permitted to request director review or whether third-party requests should also be allowed.
It also asked what standard of review the USPTO director should apply during the director review process and what standard should apply when deciding whether to grant sua sponte director review of decisions on institution.
The USPTO wanted input on whether the POP review process should remain in effect and whether any change should be made to the interim PTAB decision circulation and internal review processes.
Stakeholders must submit their comments on or before September 19.
The patent office developed its director review process after the Supreme Court ruled in US v Arthrex that the appointment of administrative patent judges to the PTAB was unconstitutional but that this problem could be fixed by giving the USPTO director more power to overturn decisions.
Xiaomi renews AAC licence
Consumer electronics company Xiaomi has renewed its licence to Via’s advanced audio coding patent pool, it was announced Wednesday, July 20.
Ran Xu, general manager of global business development and IP strategy at Xiaomi in China, the world’s third largest smartphone maker, said the company was happy to continue its agreement with Via’s AAC patent pool.
“Xiaomi customers will continue to enjoy this high-quality audio format.”
Heath Hoglund, president at Via Licensing in San Francisco, added: “We are delighted to renew our standard licence with Xiaomi, a company with a sophisticated approach to global licensing, dedicated to delivering innovative products to users around the world.”
Xiaomi previously signed a licence to Via Licensing’s AAC patent pool in January 2017. The standard term for AAC licences is five years.