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This week in IP: litigation backlog demands rethink, Amazon wins TM ruling, Continental sues Nokia

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

Plaintiffs consider bench trials to combat litigation backlog

This week, Managing IP spoke to four in-house counsel, two private practice lawyers and one judge to reveal how courts and lawyers in the US are managing the COVID-induced trial holdup.

When courts shut down in response to COVID last year, lawyers and judges stepped up their game and learned the ropes of remote litigation.

But most jury trials could not be conducted remotely in 2020 and courts built up a significant backlog of intellectual property cases (and other matters), which has continued to be a source of frustration for in-house counsel managing litigation this year.

These lawyers must now decide whether to wait for a jury trial or find another way to resolve cases.

Some counsel told Managing IP that they want judges to decide their cases, or are considering mediation, while others say the delay will not have a significant effect on their litigation strategies.

Click here to read the full report

Other Managing IP stories published this week include:

Incoming health secretary unnerves pharma in-house counsel

3M trademark chief: COVID response was ‘strategy on steroids’

UK IP judiciary ‘back to where it was’ with new judge

Virtual trials creating hurdles for expert witness testimony

Five NPEs reveal new IP monetisation plans

Munich CJEU referral potential injunction ‘game changer’

Amazon handed victory in trademark case

Amazon has defeated a trademark infringement claim in a dispute centring on territorial IP rights.

Lifestyle Equities v Amazon was handed down on Wednesday, January 27, at the England and Wales High Court.

Mr Justice Green dismissed claims by Lifestyle Equities, owner of Beverley Hills Polo Club (BHPC), that Amazon infringed its trademark rights by allowing its branded goods to be listed on Amazon websites in the UK and the EU.

According to Lifestyle Equities, BHPC goods that have been lawfully manufactured, marketed and sold in the US with the consent of the US rights owner are being marketed and sold by Amazon in the UK and the EU.

The decision has already received criticism. In a LinkedIn post, UK attorney Aaron Wood said some aspects of the ruling were out of kilter with established law.

Wood added that the judgment found that Amazon is not targeting the UK, as only a small proportion of visitors come from the UK. However, Wood pointed out that Amazon.com ships to the UK, is in English, and lists prices in pounds if users select that option.

Wood also questioned the finding that sales from Amazon.com were not “use in the course of trade” as they were sales to the public who did not have businesses and were not going to sell them onwards.

Stobbs launches big data platform to help brand owners

Intellectual property and brand law consultancy Stobbs has launched a technology platform designed to help in-house teams improve the scope and value of their brands and IP.

Released last Friday, January 22, Iaidō uses big data to blend consumer-purchasing patterns with IP data to track the effectiveness of a brand’s trademark portfolio.

The technology is already being deployed by brands including drink and brewing multinational AB InBev (owner of Budweiser, Stella Artois and Corona among others).

By automating a series of manual processes, Iaidō will give users an instant picture of their IP performance together with practical insights.

Brand owners can track non-use threats across the globe and compare manufacturing and sales data.

Lewis Whiting, Iaidō founder and chief executive, said: “All large brands possess this type of data but rarely have reliable instant access to it on a day-to-day basis to inform the strategic management of their assets.

“This is a fundamental need, and our solution has been designed to fill the gap in the IP software industry that currently exists – a complementary platform rather than replacing any existing solution.”

Continental takes Nokia FRAND dispute to Delaware 

On Tuesday, January 26, Continental filed a complaint against Nokia in the Delaware Chancery Court to force the telecoms company to license standard essential patents on fair, reasonable, and non-discriminatory terms.

The complaint in Delaware is another battle in a much larger FRAND war that has heated up on both sides of the Atlantic.

Continental, an automotive supplier, alleges that it is a willing licensee and has been unable to reach an agreement with Nokia despite negotiations. 

The complaint is illustrative of wider FRAND disputes between patent owners and licensees on what is considered “fair”, and which courts should be allowed to establish FRAND rates when two parties cannot agree.

Nokia has insisted that licensing should take place with the end user, in this case Continental. 

Federal Circuit rejects Valeant appeal

On Tuesday, January 26, the US Court of Appeals for the Federal Circuit rejected a petition from drug maker Valeant for a hearing en banc of Valeant v Mylan.

The Federal Circuit ruled in Mylan’s favour in November 2020 that infringements only occurred in districts where abbreviated new drug applications were submitted, not where generic therapeutics were likely to be distributed once launched.

Valeant filed its en banc petition in December 2020. In its petition, the company wrote: “The panel’s opinion, if left untouched, would effect a detrimental and seismic shift in Hatch-Waxman pharmaceutical patent litigation that will increase uncertainty, delay, and costs, all at the expense of judicial economy.”

In previous conversations with Managing IP, counsel were divided over whether the ruling would empower generics to get more parallel cases heard in less common courts or whether it would only help Mylan.

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