Worldwide: Intellectual Property News

Last Updated: 21 December 2007
Article by Charles Alexander



The United States District Court finds that eBay intentionally violated MercExchange's patent

The United States District Court has found that eBay intentionally infringed a patent owned by MercExchange through use of eBay's 'buy it now' feature and ordered eBay to pay $30 million in damages. However, eBay has already released a statement saying that they are planning to appeal the case. MercExchange is alleging, in another motion, that they are owed profits since 2003 related to the 'buy it now' feature, which MercExchange estimates account for about 39% of eBay's revenue.

Further information can be accessed at:

University of Edinburgh withdraws appeal over biotechnology patent

The University of Edinburgh has withdrawn an appeal relating to its patent concerning embryonic stem cells. In 2002 the patent was limited to exclude embryonic stem cells, and this decision had subsequently been appealed by the University. As a result of the recent withdrawal of the appeal, the patent remains valid only for a method of genetically modifying stem cells. The University has now exhausted its legal options to widen the scope of the patent. Further information can be found at:

European Patent Office revokes Amazon's gift order patent

The European Patent Office (EPO) has revoked Amazon's software patent for 'gift orders' following an opposition hearing. The EPO found that the patent is not inventive. The patent was for a method allowing people to buy gifts online and have the gifts shipped to the recipient after the recipient confirmed their postal address. The patent, originally granted in 2003, was opposed by Fleurop Interflora Businesses, a flower delivery company, the German Society of Information Sciences and the Foundation for Free Information Infrastructure, both non-governmental organisations. The EPO emphasised that their decision on the gift order patent would not necessarily apply to Amazon's controversial one-click patent.

Further information can be accessed at:



Court finds no copyright in label, but packaging likely to mislead or deceive consumers

The Federal Court has found that a label comprising a photograph and descriptive text on packaging for photoboxes is neither an 'artistic work' nor a 'literary work'. The appellant, Woodtree Pty Ltd, submitted that the words and the placement of the photograph on the label were elements of an overall design which constituted a 'drawing' and that the label was a literary work- a compilation. The Court rejected these arguments. However, the Court found that by marketing the photoboxes in a very similar get-up, the respondents were likely to mislead or deceive consumers into believing that the products came from the same source as the appellant's product.

The case can be accessed at:


Canadian Court takes a tough stance against repeat counterfeiters

Canada's Federal Court has found in favour of Louis Vuitton (LV) in a case concerning counterfeit LV products. LV had been attempting to prevent the sale of allegedly copyright and trade mark infringing goods by two individuals since at least 2001. However, LV's attempts had failed despite two court judgments, seizures and other actions being brought. In the most recent action, the two defendants had provided no response and thus LV brought a motion for default judgment. The court found in favour of LV on the balance of probabilities, awarding substantial damages, including $C100,000 in punitive damages. The court described the defendants' conduct as 'reprehensible, scandalous and outrageous'.

The case can be found at:

France adopts strategy to combat online piracy

The French Government has announced that it will set up an independent body to address online copyright infringement. The body, with the help of Internet service providers (ISPs), will send warnings to individuals who share files over the Internet. If downloaders refuse to comply with the warnings, they risk having their Internet account suspended or terminated. The plan is backed by representatives of ISPs, music producers and artists and the proposal is expected to be submitted to the French parliament in the next session.

Further information can be accessed at:

Trade marks


Full Federal Court finds in favour of Strandbags over Colorado trade Mark

The Full Federal Court has found in favour of Strandbags in its dispute with Colorado Group Limited (CGL) regarding the use of the trade mark 'Colorado'. CGL, the owner of the registered mark 'Colorado' for bags, wallets, purses and belts, alleged that Strandbags had infringed its trade mark rights and engaged in passing off and misleading and deceptive conduct by using the mark on backpacks. However, the Court held that this use did not amount to infringement, as backpacks were not goods 'of the same kind'. Moreover, the Court found that the word 'Colorado' alone is not inherently adapted to distinguish the goods of CGL from goods of other persons and was not used in such a way as to become distinctive. The Court also dismissed the claims that Strandbags had engaged in passing off or misleading or deceptive conduct.

The case can be accessed at:


Spam Arrest allowed to retain trade mark

The US Patent and Trademark Office (USPTO) has found in favour of Spam Arrest, a provider of software for filtering email spam, allowing Spam Arrest to retain its trademark. Hormel Foods Corp, the company that sells Spam processed meats, sued Spam Arrest arguing that there was likelihood of confusion and dilution. The USPTO found that it is not likely that the use of 'Spam Arrest' as a trade mark in relation to computer software designed to eliminate unsolicited commercial email, would cause confusion. In particular, it was held that the marks as a whole are different in both connotation and commercial impressions as the word 'spam' in Spam Arrest's trade mark would be viewed as having its generic meaning of unsolicited commercial electronic mail. In addition, the USPTO found that there was no dilution through either blurring or tarnishment of Hormel's trade mark.

The case can be accessed at:

Gateway prevented from blocking registration of rival's gateway trade mark

The European Court of First Instance has found in favour of Fujitsu-Siemans (Fujitsu) in a trade mark dispute with computer manufacturer Gateway Inc, concerning Fujitsu's application to register 'ACTIVY Media Gateway'. The Court held that Gateway could not prevent Fujitsu registering the mark as there was no phonetic or visual similarity between Gateway's mark and Fujitsu's 'ACTIVY Media Gateway' mark. The Court noted that from a visual point of view, 'Gateway' is not an element which stands out in the trade mark, rather the word 'ACTIVY' stands out and therefore constitutes the distinctive and dominant element in the trade mark. In addition, the word 'gateway' is a term commonly used in the computing industry, deeming it highly descriptive of the goods and services covered by the mark. The action was defended by the Office for the Harmonisation for the Internal Market as an agent for Fujitsu. The Court dismissed the appeal, and ordered Gateway to pay costs.

The case can be found at:

Danone loses Wahaha trade mark dispute

The Hangzhou Arbitration Commission has found that the Wahaha trade mark belongs to the Chinese drinks maker, Wahaha Group. The French food maker Danone and Wahaha Group had set up five joint venture companies in 1996 and Danone alleged that all the trade marks should have been transferred to these companies. In April this year, Danone claimed that Wahaha had commenced selling products illegally branded with the mark, that were competing with products produced by the joint venture companies. The key issue was whether the Wahaha trade marks had ever been transferred from Wahaha Group to the joint venture companies. Danone claimed that a transfer of trade mark agreement had been signed and that Danone had paid Wahaha Group for the transfer. However, Wahaha Group alleged that the trade mark transfer was rejected by China's Trade Mark Office (CTMO). China's trade mark law requires that for a trade mark assignment to be valid, it must be recognised by the CTMO. Danone has stated that it will appeal the arbitration decision.

Further information can be found at:

Passing Off

Full Federal Court finds in favour of 'Mythbusters' program

The Full Federal Court of Australia has found that the use of the name 'Mythbusters' in relation to the SBS television program 'Mythbusters' did not amount to passing off. Mr Knight, an author of books that refer to a group named 'Mythbusters', alleged that several companies involved in producing and distributing the series of television programs entitled 'Mythbusters' had engaged in passing off and conduct that was misleading or deceptive. The Full Federal Court held that it was reasonably open for the Federal Court to have found that the sales of Mr Knight's books were insufficient to cause a viewer to make the requisite connection between the TV show and the books. In addition, the Full Federal Court held that, as the Court found that the respondents' conduct was only capable of giving rise to confusion of an ephemeral nature, it was open to find that their conduct was not misleading or deceptive.

The decision can be accessed at:



French auction watchdog takes eBay to court

France's regulatory authority, the Council of Sales, has issued proceedings against eBay arguing that eBay's French website should be held to the same standards as French auction houses. Strict regulations require French auction houses to have a special permit from authorities, partially to protect consumers. eBay's French branch,, claims that it is merely an intermediary as customers put up items themselves and the site does not negotiate contracts or get involved in delivery and payment. However, the Council of Sales is arguing that is an auction house like any other and that the site currently has an unfair advantage by avoiding the strict regulations. Further information can be accessed at:

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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