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A monthly column devoted to IP curiosities and controversies, named in honour of John of Utynam – who received the world’s first recorded patent in 1449 diary@managingip.com

It happened to Tylenol, Firestone and Vioxx. What can trade mark counsel do to minimise the effect of a product recall on a brand?

In Korea, an employee has the right to obtain reasonable remuneration for a work-for-hire invention when he or she transfers a patent right or the right to obtain a patent, or grants an exclusive licence to the employer in accordance with a contract or service regulation. The employer's expected profit from the work-for-hire invention is considered when determining the reasonable remuneration. A recent Supreme Court opinion provides insight on whether an assignee's expected profit, in addition to an assignor's expected profit, should be considered when determining the remuneration if both the patent for the work-for-hire invention and the relevant business are transferred from the assignor to the assignee.

On September 21 2010, the Government of Vietnam promulgated Decree 97, which provided stronger administrative sanctions for violations of industrial property in Vietnam, replacing Decree 106 from dated September 2000 on the same issues. Decree 97 defines categories of acts considered violations, various forms and levels of penalties, remedies and procedures for imposing sanctions, as well as competence of local authorities to handle such violations.

As a company begins to develop its brand and create goodwill, it is often faced with a problem known as reverse confusion. Reverse confusion occurs when a junior user (often a bigger company) subsequently adopts a mark that is confusingly similar to that of the senior user (often a smaller entity) and engages in such extensive advertising and promotion that it overwhelms the senior user's reputation. The result is that consumers are led to believe mistakenly that the goods of the senior user originate with the junior user. This can be particularly problematic when the junior user is much larger, such that consumers believe that the senior user copied the junior user even though the senior user was the first to use the mark.

The Milo mark The device mark The terms chocolate and malt drink immediately conjure up images of Nestlé's popular beverage Milo. The drink has been so popular that the company often projects very large market share figures. Although the beverage itself and the term Milo have been used for over half a century, the evolution of the brand and the logo witnessed the addition of the device seen opposite, a geometric shape that framed the word Milo. In this case, Nestlé successfully registered the marks Milo and the Thai equivalent . However, the company faced an uphill battle to register the logo.

ATaiwanese company applied to register a trade mark containing the wording Apple Line and a device in Class 16 (paper products) and Class 18 (bags, leather goods, and umbrellas) in 2007, and the two applications subsequently matured into registrations. Apple Inc filed opposition actions, alleging, among other things, that the registered mark was similar to its famous marks, including Apple and the Apple logo. While the Taiwan IPO acknowledged the fame of Apple Inc's marks, it did not consider the two parties' marks to be similar to such an extent as to engender consumer confusion. The IPO expressed that (1) apple is the name of a common fruit, the marks Apple and the Apple logo are not creative and have a low degree of distinctive quality; and (2) since there are various trade mark registrations containing the word apple or an apple device, consumers may readily discern such trade marks.

Our earlier reports have covered the injunction sought by Nestlé based on trade mark law with the Court of Commerce of St Gaul against the sale of Nespresso-compatible coffee capsules by the Swiss discounter Denner. Another action has been brought forward by Nestlé with the Court of Commerce of Zurich in this regard, but based on two patents from its portfolio for the Nespresso coffee capsule system. The subject matter of the two patents is a coffee extraction method and the capsule containing coffee as a closed package. The Zurich court found no patent infringement for both patents and denied the injunction. For the method patent the court considered that the coffee machines by which the extraction method is performed by the buyers of the machines had been brought on the market with the consent of Nestlé and thus the use of the extraction method was a lawful act performed by the buyers of the machines. Accordingly, the Court found that there can be no contributory infringement of Denner by the sale of coffee capsules to be used in such a lawful use of the machines. This conforms to Swiss law and practice regarding contributory infringement. For the patent on a coffee capsule the Court found that the Denner capsules, which are not fully closed but have holes, do not fall within the scope of the patent since these capsules do not provide optimum conservation and hygiene and a good reproducibility of the extraction. The Court considered that the Denner capsules may lose ground coffee through the holes so that the amount of coffee for the extraction may not be constant for each capsule. The Denner capsules are sold in air-tight sachets but the Court found it had not been made credible that these sachets have the same technical effect as the patented closed capsules.

It is hard to imagine that anyone would attempt to cancel the Teflon trade mark in Cyrillic (TEOJIOH) as not being used on the Russian market. But someone did. This was Pilot Ltd, a large Russian trading company. It was selling kitchenware and filed a cancellation action against the trade mark TEOJIOH (registration number 140510) with the Russian Chamber of Patent Disputes.

The Supreme Administrative Court, by virtue of a judgment of January 18 2011 (case II GSK 56/10), dismissed a cassation complaint against a judgment of the District Administrative Court in Warsaw. That case resulted from a complaint filed by Novartis against a decision of the Polish Patent Office on dismissal of an opposition in respect of a trade mark registration in the name of Farmaceutyczna Spoldzielnia Pracy Galena. The judgment is final and valid.