This week on MIP: UPC one year on | Xiaomi faces double SEP claim

May 31 2024

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

Patent litigation trio have ‘eyes on the prize’ after Boies Schiller move

The opportunity to work for both plaintiffs and defendants in litigation helped draw a team of three patent litigators to Boies Schiller Flexner.

The firm announced on May 23 that Ryan Dykal, Jordan Bergsten, and Mark Schafer had joined as partners in the Washington DC office from Shook Hardy & Bacon.

To read the full article, click here.

EUIPO’s Grand Board of Appeal rejects ‘Covidiot’ application

The term ‘Covidiot’ is contrary to accepted principles of morality and should not be registered as an EU trademark, the EUIPO’s Grand Board of Appeal has found.

In a decision handed down earlier this month but published on Sunday, May 26, the Grand Board said the applied-for mark must be refused because when used in conjunction with goods and services including games it would “trivialise” one of the deadliest pandemics ever “in a way that is contrary to human dignity and

To read the full article, click here.

Elsewhere in IP

Satisfaction (almost) guaranteed

The EUIPO achieved its highest-ever customer satisfaction rating in 2023, the office said on Monday, May 27. According to the office, 91% of survey respondents expressed satisfaction with the office’s services, marking a slight increase from 90 % in 2022.

The survey, which garnered a participation rate of about 10%, was conducted among all users of the EUIPO’s services who have used these services during the previous 12 months.

SEP double

Xiaomi has been targeted in standard-essential patent litigation in France and India. The Chinese company has been sued by Sun Patent Trust in disputes filed concurrently at the Paris Judicial Court and the Delhi High Court on Wednesday, May 29. Sun Patent Trust is asking the courts to order Xiaomi to resume negotiations and to pay fair, reasonable, and non-discriminatory royalties.

Terminal disclaimers

Five former high-ranking USPTO officials have written to USPTO director Kathi Vidal opposing the office's latest terminal disclaimer proposal. Drew Hirshfeld, Andrei Iancu, David Kappos, Laura Peter, and Russell Slifer argued that the proposal would threaten “serious harm” to the US's innovation economy.

Under the USPTO's proposal, terminal disclaimer filers must agree that a patent with a terminal disclaimer will not be enforced if any claim in the original patent is invalidated by prior art.

On the bench

The Unified Patent Court revealed on Tuesday, May 28, that Andrea Postiglione, Anna-Lena Klein, and Marije Knijff have been appointed as judges in the Milan Central Division. Postiglione is a judge at the business section in the Court of Rome, Lena Klein is a judge at the Regional Court of Munich, and Knijff is a judge at the District Court of The Hague.

The Milan division is due to open on June 26.

Umbro returns

The UK Supreme Court has granted permission to appeal in the Iconix v Dream Pairs case, a dispute that concerns the double diamond trademark owned by sportswear brand Umbro.

Law firm Brandsmiths is acting for Iconix – the owner of the Umbro brand – and which was successful in the England and Wales Court of Appeal.

Nike victory

A German court has handed sportswear brand Nike a partial victory against Adidas in the companies’ trademark row.

The Higher Regional Court of Düsseldorf overturned a lower court’s decision which found that designs used by Nike on five different sets of trousers infringed Adidas’s ‘three stripe’ trademark. The court’s decision, handed down on May 28, overturned the infringement finding for four of the five designs.

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