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This week in IP: controversial brands dumped, UK GI backtrack, Amazon clients safe

Managing IP rounds up the latest copyright, patent and trademark news, including some stories you may have missed

Brands dumped and reviewed

Following the uproar over the tragic killing of African American man George Floyd, several companies have announced that they are either dumping brands or reviewing their use because of said brands' use of racial stereotypes.

Aunt Jemima was the first food brand to announce on Wednesday that it is changing its logo. The 130-year-old, Quaker Oats-owned brand, which features on flour, pancake mix, and other foods, has long been criticised for depicting a caricature of a black maid that stemmed from slavery.

The same day, Mars tweeted that it will “evolve Uncle Ben’s visual brand identity”. Uncle Ben’s, a brand for parboiled rice and related food products, has been criticised for its image and use of the word “uncle”, because white US southerners once called black men by that term instead of ‘mister’.

Mrs Butterworth and Cream of Wheat have since followed suit and announced that they will also be conducting reviews of their controversial mascots.

This development has led to speculatation over whether other traditionally controversial brands such as the Washington Redskins – which aren’t necessarily connected to the African American community but have been strongly criticised for their offensive nature – might now voluntarily drop their names.

The US and EU courts blocked several legal efforts in 2020 and 2019 to invalidate trademarks on the basis that said marks were rude or immoral.

CJEU clarifies General Court procedure rules

The Court of Justice of the EU shed light on Article 188 of the Rules of Procedure of the General Court and Article 76(1) of regulation number 207/2009 yesterday when it concluded that the EU General Court had erred in dismissing arguments because they had not been put before the EUIPO.

Under Article 76(1), the EUIPO can only take into account acts, evidence and arguments submitted by the parties and the relief sought by them. Under Article 188, the pleadings lodged by the parties in proceedings before the General Court may not change the subject matter of the proceedings.

In its decision in Primart (C702/18), the CJEU set out that the General Court’s reasoning “misconstrued the scope” of Article 76(1).

The court said that “in the light of that obligation incumbent on the Board of Appeal, the articles cannot be interpreted as meaning that the arguments … will not form part of the subject matter of the proceedings before the General Court if they have not been put forward during the proceedings before the Board of Appeal.”

Barnier criticises UK attempt to reopen geographical indication talks

EU chief negotiator Michel Barnier criticised the UK government on Wednesday for attempting to reopen the agreement on geographical indications in Europe, which protect EU and UK food specialities such as champagne, prosciutto and Scotch whisky.

The UK and EU agreed last year to keep GI rights in place that protect more than 3,000 registered European food names and more than 80 British food and drink products from imitation as part of their Brexit withdrawal agreement.

Barnier, who was a key figure in the drafting of the agreement and has served as the European Commission’s task force head for UK relations since November 2019, told the European Parliament that the UK had given no indication on plans for a future regulation on state aid and food standards.

“Here the UK has even wanted to reopen the whole question of geographical indications, which are clearly protected in the withdrawal agreement,” he said in French during the preparation session for the European Council meeting of June 19 2020.

“None of that is compatible with the basis of a sustainable and ambitious agreement with a major country that is likely to remain our friend, ally and partner.”

He added that he remained convinced that an agreement was possible in the long term, but that the EU would never sacrifice the economic and political long-term interests of European consumers and institutions for the UK’s profit.

You can watch the full video of his speech and the rest of the plenary session here.

The news that the UK tried to reopen talks on GIs might come as a shock to food and drink lobbying groups, such as the Scotch Whisky Association, which last year were toasting the likelihood that these rights would be safe under the UK-EU Brexit deal.

Federal Circuit shuts down patent suits against Amazon clients

On Wednesday, the US Court of Appeals for the Federal Circuit blocked several patent infringement cases brought by a non-practising entity against some of Amazon’s content-focused corporate clients, including Buzzfeed, Vice Media and Ziff Davis.

In its precedential decision, the court said that PersonalWeb Technologies’ claims were barred under the doctrine of claim preclusion because they were the same issues litigated in a previous case against Amazon itself, which was dismissed with prejudice.

The Federal Circuit also rejected the NPE’s argument that the Kessler doctrine, which stems from the US Supreme Court’s Kessler ruling that follow-up suits against an ‘adjudged non-infringer’s’ customers are forbidden, did not apply.

The claims relate to Amazon’s S3 web storage system, which enables companies to store data, such as pictures or video, which can be downloaded by users when they visit those companies’ websites.

PersonalWeb sued Amazon in 2011 at the District Court for the Eastern District of Texas for infringement of its TrueName patents in this system, but the case was dismissed in June 2014. The NPE then targeted eight of Amazon’s customers with suits accusing them of infringing the TrueName patents through their use of the S3 system.

Amazon intervened on behalf of its clients by asking the District Court for the Northern District of California to dismiss the suits. The court ruled in favour of the ecommerce company and PersonalWeb appealed the matter to the Federal Circuit.

The NPE has not announced whether it will attempt to appeal the matter again to the Supreme Court.

Saudi Arabia broke WTO broadcasting rules

A World Trade Organization panel told the Kingdom of Saudi Arabia on Tuesday that it had breached global rules on intellectual property rights by allowing the improper screening of sports and movies by a pirate broadcaster.

The decision followed a complaint filed by Qatar in 2018 over illegal streaming of sports events from major Qatari-owned broadcaster beIN Sports, which has lost billions as a result of a Saudi pirate broadcasting operation called beoutQ.

The three-person WTO panel recommended that the Saudi government bring its measures into conformity with its obligations under the TRIPS Agreement on intellectual property.

Eric Solovy, a partner at Sidley Austin in Washington DC who helped secure this victory for Qatar, said: “At a time when IP is more important than ever for incentivising innovation and original works, this decision is of particular importance for the protection of economic growth around the world.”

“We are pleased to have utilised our deep experience in litigating issues of international IP law in front of the WTO to aid the government of Qatar.”

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