This week on MIP: $96m SCOTUS ruling, SkyKick conclusion
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This week on MIP: $96m SCOTUS ruling, SkyKick conclusion

Supreme Court of the United States

We provide a rundown of Managing IP’s news and analysis coverage from the week, and review what’s been happening elsewhere in IP

SCOTUS vacates $96m foreign sales TM judgment

The US Supreme Court yesterday, June 29, vacated a damages award of $96 million in a trademark case that centred primarily on foreign sales.

The case, Abitron Austria v Hetronic, came from the Court of Appeals for the Tenth Circuit, which upheld a lower court’s decision to award $96 million to manufacturer Hetronic. Damages had been awarded even though 97% of the defendant Abitron’s infringing sales had occurred outside the US.

Click here to read the full story.

UK Supreme Court mulls potentially ‘chaotic’ SkyKick ruling

The UK Supreme Court will weigh whether rights owners must intend to use a trademark for certain goods and services following the end of a two-day hearing in the long-running Sky v SkyKick dispute yesterday, June 29.

The landmark case could reshape trademark filing strategies if the court backs a first-instance finding that marks that include terms such as ‘computer software’ in the goods and services are too broad.

Click here to read the full story.

Ethics, finances, and AI: MEPs grill EUIPO hopefuls

Candidates for the top job at the EUIPO made their case to politicians in a lively session at the European Parliament on Tuesday, June 27.

The Committee on Legal Affairs (JURI) put questions to each of the three candidates, one of the final steps before the Council of the EU picks the next executive director.

French-backed candidate and INTA CEO Etienne Sanz de Acedo defended himself against a suggestion from German member of European Parliament Marion Walsmann that he may have a conflict of interest due to his current INTA role.

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Negrão defends BoA productivity after MEP clash

EUIPO leadership hopeful João Negrão defended his record as president of the office’s Boards of Appeal in the same parliament hearing after a clash with a Danish politician.

Karen Melchior, a member of the European Parliament who also sits on the JURI committee, asked Negrão to explain a “decrease in productivity” at the BoA last year.

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German court hands Nokia victory over Oppo after 20-minute wait

Nokia saw off a patent infringement claim filed by Oppo after a rare snap judgment from the Mannheim Regional Court on Tuesday, June 27.

The court dismissed Oppo’s claim in a bench judgment issued about 20 minutes after the hearing concluded, sources close to the case revealed.

German courts normally issue judgments between four and six weeks after they have heard a case.

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InterDigital awarded extra $46m post-Lenovo FRAND judgment

The England and Wales High Court ordered Lenovo to pay an additional $46.2 million to InterDigital in the companies’ standard-essential patent battle on Tuesday, June 27.

The High Court said Lenovo should pay interest on the original $138.7 million that it had been ordered to pay, bringing the total amount owed to $184.9 million.

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Newron Pharmaceuticals SPC appeal dismissed in UK

The England and Wales High Court has dismissed Newron Pharmaceuticals’ appeal over a supplementary protection certificate application for a means of treating Parkinson’s disease.

The basic patent, titled ‘Methods for the Treatment of Parkinson’s Disease’, was granted on July 1 2009 and expires on April 7 2024.

Click here to read the full story.

Exclusive: ‘Russian warship’ EUTM faces new setback

An EU trademark application for the phrase ‘Russian warship, go fuck yourself’ looks likely to be dismissed by the EUIPO Boards of Appeal, Managing IP revealed.

The application was rejected in a preliminary communication seen by Managing IP. The communication was sent to the applicant's lawyers on June 13 by Gordon Humphreys, chair and rapporteur of the First Board of Appeal.

Click here to read the full story.

Other articles published by Managing IP this week include:

IP firms in China look to expand outreach amid political storms

In-house: Senate PTAB proposal unlikely to prevail

Taco Bell trademark case: in-house lack appetite to follow suit

US counsel: AI soundalikes may clear copyright infringement hurdle

Elsewhere in IP

UPC deal

Unified Patent Court leaders formally agreed to give Milan a section of the new court’s central division, alongside Paris and Munich, on Monday, June 26. The Administrative Committee unanimously approved a deal struck by the Italian, French, and German governments. The Paris section will hear pharmaceutical cases related to supplementary protection certificates, as rumoured earlier this year.

Newman latest

US Court of Appeals for the Federal Circuit Judge Pauline Newman sought a preliminary injunction to prevent her colleagues from suspending her on Tuesday, June 27. The brief was filed by her representative, the New Civil Liberties Alliance. It argued that the suspension was unconstitutional.

Genius denied

The US Supreme Court rejected lyric transcription website Genius's petition for writ of certiorari asking SCOTUS to revive its lawsuit against Google on Monday, June 26. Genius argued that Google had misappropriated its content by displaying allegedly copied lyrics in search engine results.

Brand leaders

China and the US represent the hubs of brand creation, a report by Clarivate has found. The data analytics firm’s Top 100 New Brands report assessed global trademark data covering 145 million individual trademark records. The report analysed applications filed worldwide in 2021 and 2022.

EPO review

The EPO’s Annual Review 2022, published on Wednesday, June 28, highlighted IT transformation and a renewed focus on patent quality as the office’s key focuses last year. The EPO said it also ramped up its environmental, organisational, financial, and societal impact initiatives. António Campinos, president of the EPO, said the office is “more agile, adaptable, and sustainable than ever before”.

UKIPO socials

The UKIPO launched new counter-infringement channels on social media platforms this week. Miles Rees, head of outreach campaigns, said: “Complementing our main corporate IPO accounts, they will act as a platform to share successes – including our counter-infringement partnership work and the IPO’s educational campaigns – with all those allied in the fight against IP crime.”

That's it for today, see you again next week.

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