This week in IP: Brexit threatens designs, Ferrari wins parts battle, Nokia enforces injunction

In-house counsel at high-street retailers told Managing IP’s Max Walters this week that they would have to think creatively about securing design protection, after it was announced that the EU and the UK had failed to agree reciprocal protection for unregistered Community designs.

They noted that this breakdown of agreement could make the UK a less attractive place to disclose designs and might threaten events such as the London Fashion Week.

James Sweeting, head of legal at fashion brand Superdry in the UK, said designers could be reluctant to exhibit at such events because a first disclosure in the UK would leave the brand vulnerable to rip-offs on the EU mainland.

Read the full article by clicking here.

Other Managing IP stories we published this week include:

Iancu: there’s a lot still to be done – for me, or the next director

Opinion: is WIPO’s Tang right to head in a broader direction?

How five IP lawyers adapted to new jobs during COVID

ASEAN counsel target cooperation to beat COVID counterfeits

‘No return’: IP offices unpick COVID-19 impact

Why SCOTUS took on Arthrex – and what could happen next

Brands reveal fang-tastic clearance tips for seasonal items

The Court of Justice of the EU found on Thursday, October 22, that proof of trademark use can be demonstrated by individual parts, accessories and used goods, in a case that should see Ferrari maintain protection for the name of its iconic car, the Testarossa.

In 2017, a court in Germany ordered that Ferrari's German trademark for the 'Testarossa' name, which means ‘redhead’ in Italian, be revoked. 

The CJEU set out that although the car itself hadn’t been manufactured since the 1990s, the company has continued to manufacture vehicle parts, so it could continue to trademark the brand name.

“A trademark is put to genuine use by its proprietor where that proprietor provides certain services connected with the goods previously sold under that mark, on condition that those services are provided under that mark,” the court wrote in its judgment for joined cases C–720/18 and C–721/18.

The Dusseldorf Higher Regional Court referred the case to the EU’s high court for a preliminary ruling after a lower court agreed with Autec that Ferrari should lose the rights to the 'Testarossa' name because it hadn’t used the mark in more than five years.

The case will now go back to the higher regional court in Germany for its final judgment.

Mark Caddle, partner at law firm Withers & Rogers in the UK, pointed out that Ferrari also owns an EU trademark for 'Testarossa'. 

"This is also being attacked on grounds of non-use, and a decision in favour of Ferrari to uphold the registration for 'automobiles' is presently under appeal at the EUIPO's Grand Board of Appeal."

Nokia announced on Tuesday, October 20, that it would pay a collateral of €3.25 million ($3.84 million) to enforce its injunction against Chinese company Lenovo in Germany for infringing its video-compression technology patents.

The Finnish telecoms company won the injunction from the Munich Regional Court on September 30 after it ruled that the defendant, a Chinese computer firm, was an unwilling licensee because its engagement in licence negotiations was insufficient.

The injunction will stop the sales of Lenovo PCs, laptops and tablets that use Nokia’s standardised H264 decoding or encoding functionalities in Germany, but will not affect already-purchased products.

“Legal action is never our preferred option, but Lenovo have been unwilling to enter into discussions, despite a clear judgment confirming their unauthorised use of Nokia’s patented technology,” said a Nokia spokesperson.

“Lenovo can easily resolve this matter by accepting their responsibilities and agreeing a licence on fair terms. Our door is open for Lenovo to resolve the matter through good-faith negotiation.”

Nokia has active cases against Lenovo in the US, Brazil and India. The company has been on a winning streak this year, having won the lawsuit it filed against Daimler in Mannheim, and the case brought against it and Avanci in the Northern District of Texas.

China passed a new amendment to its patent law on Saturday, October 17, that will establish patent term extensions, higher damages for infringement, and other changes that are largely considered to be patent friendly.

China’s top legislative authority, the Standing Committee of the National People’s Congress, passed the amendment with 29 provisions, which will go into effect on June 1 2021.

Among the changes are an early resolution of pharma patent disputes (patent linkage) and a newly added grace-period-type provision to address the COVID pandemic.

The COVID-related provision permits initial disclosure of inventions for public benefit to address national emergencies without compromising the novelty of an invention in a patent application.

Asia reporter Karry Lai outlined reactions to the then-proposed changes from the congress earlier this year.

Former WIPO director general Francis Gurry has taken a new job as a strategic adviser at an IP-holding company, it was announced on Wednesday, October 21.

IPH, which offers a range of IP services in the Asia-Pacific region and is based in Australia, made the statement less than three weeks after Gurry formally left his position at WIPO.

IPH CEO Andrew Blattman said the company was pleased to have secured an executive of Gurry’s calibre as a strategic adviser.

“Under Francis’s leadership, WIPO has been at the forefront of managing the impact of rapid technological change on international patent and copyright systems and ensuring that the IP system continues to serve its fundamental purpose of encouraging creativity and innovation,” he said.

“We will be able to draw on Francis’s unparalleled knowledge, insights and experience in global IP matters for the benefit of our clients and our IP professionals across the group.”

Managing IP interviewed Gurry when he was still director general earlier this year.

The World Trade Organisation last week failed to agree on a landmark proposal to temporarily waive certain provisions of the TRIPS Agreement for intellectual property relating to COVID-19 therapeutics.

The governments of India and South Africa had asked the WTO to waive these property rights so that medical products could be more easily accessed, especially by low-income countries.

They had argued in their WTO submission that unless a waiver was issued, there would be significant concerns that diagnostics, medicines and vaccines would not be available promptly in sufficient quantities.

Several WTO members opposed the proposal, arguing instead that non-efficient and underfunded healthcare and procurement systems, spiking demand and a lack of manufacturing capacity were much more likely to impede access to such therapeutics.

The waiver proposal will be heard again by the council before the end of the year, after which it will go to the WTO general council for consideration.

For more stories on IP as it relates to the COVID pandemic, click here.