GEW602: Basic IP

NOEL TITO DERECHO, MSME-I noel.derecho@gmail.com

Infringement Reports Related to Patent, Trademark,

Copyright, Utility Model, Industrial Design and
Geographical Indication
A. Patent Infringement Cases
1. Qualcomm wins Apple patent infringement case
By Sead Fadilpašić March 18, 2019

Apple has been found guilty for infringing on three Qualcomm’s patents and needs to pay up.

A jury in the US District Court for the Southern District of California found that Apple used three separate
technologies, belonging to Qualcomm, with a multitude of their devices, without the latter’s permission.

The devices that have this technology are iPhone 7, 7 Plus, 8, 8 Plus and X.

The three patents that were used are related to how devices connect to the internet when they boot up,
how they’re able to transfer data to and from the internet quickly, and how they can show rich visuals
without the battery suffering too much.

According to the court’s ruling, Apple needs to pay Qualcomm $31 million.

Don Rosenberg, Qualcomm’s executive VP and general counsel said these technologies allowed Apple to
become so big, so fast. “The three patents found to be infringed in this case represent just a small fraction
of Qualcomm’s valuable portfolio of tens of thousands of patents. We are gratified that courts all over the
world are rejecting Apple’s strategy of refusing to pay for the use of our IP,” he said.

This is just the latest in the string of lawsuits and legal shenanigans the two companies have kicked off in
the past couple of years. In late 2017, Qualcomm accused Apple of using its commercial influence to gain
access to the company's proprietary and highly confidential software at a source code level.

Earlier that year, Qualcomm sued Apple over “unfair licensing terms”.

Source: https://www.itproportal.com/news/qualcomm-wins-apple-patent-infringement-case/

2. Google and Microsoft settle patent dispute

Richard Waters in San Francisco OCTOBER 1, 2015

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 GEW602: Basic IP

Patent wars that plagued the early years of the smartphone industry moved a big step closer to
resolution on Wednesday, as Google and Microsoft reached a settlement to end some 20 patent lawsuits.

The terms of the deal were not announced but the agreement closely echoes a similar settlement between
Google and Apple last year and puts to rest a barrage of litigation between some of the tech industry’s
biggest names.

The battle over patents broke out as mobile companies like Motorola and Nokia tried to keep tech
companies from moving on to their mobile turf, and after the late Apple chief executive Steve Jobs tried
to block Google’s Android, which he believed had unfairly copied Apple’s iPhone technology.

The cases in both the Microsoft and Apple settlements all originally involved Motorola, the handset maker
Google acquired in 2012 as it amassed a patent portfolio to protect its Android mobile operating system
from legal attack. The internet company sold Motorola’s hardware business to Lenovo early last year but
was left with its outstanding litigation.

Microsoft and Google said in a joint statement that they had dismissed all outstanding patent litigation
between them. They also said they would co-operate in some patent and other areas in future, without
giving details.

While agreeing the ceasefire, however, the tech giants have not reached cross-licensing deals that would
prevent an outbreak of hostilities in future.

When settling litigation, tech companies often license their entire portfolios of patents to each other on
reciprocal grounds as a way to prevent future legal tensions, but Google has not announced such
agreements with either Microsoft or Apple.

The legal wars between Microsoft and Motorola began in 2010 when Microsoft launched a case claiming
that Motorola had demanded an unreasonably high royalty rate for using its patents for WiFi and video
compression technology.

The patents are part of industry-wide standards, putting Motorola under an obligation to license them to
others on “reasonable and non-discriminatory terms”.

The litigation spread to Germany and to other technologies as the two companies sought to outflank each
other in a widening number of markets. At one point, Motorola succeeded in persuading a German court
to bar sales of Microsoft products, though the software company fought back with a case in its home
district in Washington to suspend that ruling pending the outcome of US litigation.

Source: https://www.ft.com/content/7ecab5c6-67be-11e5-97d0-1456a776a4f5
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B. Utility Model Infringement Cases

1. Infringement of a utility model under the doctrine of equivalents: a recent
decision of the Milan IP Court
By Elena Martini|17 09 2015|

On 10 September, the IP Court of Milan issued an interesting ruling (no. 10164/15) on the infringement
of a utility model under the doctrine of equivalents. This indicates, as it is known, a doctrine elaborated
with reference to invention patents, and also codified for utility model patents by art. 82 (3) of the Italian
IP Code: in essence, a finding of infringement does not require that the utility model is copied in full (so-
called “literal infringement”), because it is sufficient that the same “innovative concept” contained in it is
reproduced.

In the case at issue, the contested product was the “Easy Clean Wiring” system for the well-known Vileda
mop, which is characterised by the fact that the bucket is equipped with a pedal that turns the inner drum
to facilitate the drying of the cleaning strips, with a mechanism like this:

This product was considered in infringement of Italian utility model no. 269122 by the owner and licensee
of the latter, which in turn covers a bucket with a pedal that activates a lever that makes the inner drum
turn:
 GEW602: Basic IP

In essence, in the utility model the pedal of the bucket pushes a straight-toothed element, which moves
two gears that in turn transmit the rotation to the inner drum. In the Vileda product, instead, the pedal
had one (curved) toothed side which directly acted on the two gears, without passing through any
straight-toothed element. Hence the exclusion of the literal infringement of the utility model by the expert
witness and, consistently, by the Judges.

Unlike the expert witness, however, the Judges believed that the Vileda product constituted an
infringement of the utility model under the doctrine of equivalents.

In reaching that conclusion, the Panel first noted that the “innovative concept” identified by the expert
witness (substantially coinciding with the straight-toothed element), and based on which the expert
witness had ruled out infringement under the doctrine of equivalents, was actually an underestimation.
The innovative concept, in the light of prior art taken into consideration, instead consisted “in the
conformation of the elements (already known, in themselves) that make up the device in question, and
that is the thrust unit (comprising also the straight-toothed element) and the transmission unit“.

The Judges then highlighted the principles governing infringement under the doctrine of equivalents
pursuant to art. 82(3) IP Code: “by making reference to the same “innovative concept”, the provision
implies that also different forms can be infringing if it can be considered obvious that the different forms
– having the same efficacy – are nothing but an obvious variant of the structure described in the patent,
i.e. they are already in themselves a normal alternative technique by which to achieve the same result. It
must therefore be assessed – recalling the principles dictated regarding equivalence in invention patents
(Italian Supreme Court, decision no. 9548/12), appropriately tailored to the specific scope of utility model
patents – whether the different shape of the tool or of the machine part, in allowing to achieve the same
end result, is original, as it provides a response which is not trivial nor repetitive of the subject matter of
the previous patent. It must also be taken into account that infringement under the doctrine of
equivalents cannot be excluded in the case in which the product (or the process) is reproduced, even
partially, with a change to a single component, or to a single stage of the process, even if such a change is
not trivial or repetitive (Italian Supreme Court, decision no. 30234/11)“.
 GEW602: Basic IP

By applying those principles, the Judges concluded that the simple removal of the straight-toothed
element, replaced by the curved toothed side of the Vileda pedal, was not enough to avoid infringement.
Having ascertained this, the Judges ordered Vileda to withdraw the product from the market and inhibited
it from further marketing the product, also fixing a penalty, and ordered that the proceedings continue
for the assessment of damages.

Source: http://www.martinimanna.com/infringement-of-a-utility-model-under-the-doctrine-of-
equivalents-a-recent-decision-of-the-milan-ip-court/

2. Firm succeeds in utility model infringement case for Pelikan

Louise Eckersley, 15 Mar 2012

Fieldfisher succeeds in utility model infringement case for Pelikan at the Higher Regional Court of
Düsseldorf

Munich, 15 March 2012 – Fieldfisher has successfully represented Pelikan, the manufacturer of stationery
and print cartridges, in a utility model infringement lawsuit against Brother. From now on Pelikan
Vertriebsgesellschaft mbH & Co KG is again permitted to distribute the replacement cartridges for Brother
LC980, LC985, LC1100 ink cartridges.

In March 2012, Brother Kogyo Kabushiki Kaisha abandoned a request for a preliminary injunction at the
Higher Regional Court of Düsseldorf. With the injunction Brother tried to prohibit the distribution of a
newly developed replacement cartridge by Pelikan in Germany claiming it violates the German utility
pattern DE 20 2008 017 957 (file reference: I-2 U 89/11).

After the patent senate of the Higher Regional Court Düsseldorf expressed substantial doubts about the
legal effectiveness of the utility model, Brother took back its request. Hence the injunction of 15
September 2011 with which the Regional Court Düsseldorf has prohibited Pelikan the distribution of the
new ink cartridge, loses its effect (file reference: 4b O 114/11).

In a parallel injunctive process regarding another utility model Pelikan has already won at first instance
(DE 20 2008 017 955). The Regional Court Düsseldorf also decided on 15 September 2011 that this utility
model was not harmed by the new ink cartridge from Pelikan (file reference:4b O 114/11). Brother has
not appealed against this judgement.

The proceedings regarding the main issue are in both cases still pending, but will not be heard before April
2013.

Source: https://www.fieldfisher.com/media/2012/03/firm-succeeds-in-utility-model-infringement-case-
for-pelikan
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C. Trademark
1. David versus Goliath: local soft drink maker takes on Coca-Cola in trademark
case
Tom Ekeberg, 24 December 2018

In anticipation of the court's decision in the recent trademark infringement case between The Coca-Cola
Company and O Mathisen AS (OM) (for further details please see "JallaXXXXXX: Coca-Cola accuses local
soft drink maker of infringing SPRITE mark"), this article looks at the development of the case.

This case has all of the ingredients to be a memorable trademark conflict. First, it is a classic example of a
David versus Goliath scenario – with a small local company fighting a large multinational. Further, it
includes a famous trademark, SPRITE (although this mark is arguably less famous than the name of the
company playing the part of Goliath). In addition, the alleged infringement initially fell under the
Trademark Act, but has come within the scope of the Marketing Control Act now that the accused infringer
has backed off (albeit not far enough to end the conflict). Finally, the case has been the subject of media
attention.

There is no reason to believe that OM was acting in anything but good faith when it decided to name its
drink Jallasprite. Its cola drink, Tøyen-Cola, was named in the same vein and consists of two elements:

the first is a fairly unexotic word associated with Oslo (Tøyen is a neighborhood east of downtown, often
thought of as being rundown); and

the second is a famous generic drink name.

Similarly, the word 'jalla' is associated with Tøyen (a popular satirical radio show on NRK radio was called
Radio Yalla and pretended to be a pirate radio from Tøyen), whereas SPRITE is a trademark. This is where
the problems begin.

When OM was first confronted by Coca-Cola, it probably thought that it had a good defence. Parties with
no experience of trademark law and concepts such as trademark dilution will probably conclude that
Sprite and Jallasprite are distinct. The public are unlikely to believe that Coca-Cola would produce a
product called Jallasprite, and the bottles look significantly different.

Based on this belief, OM probably thought that Coca-Cola was bullying it without any legal justification
and would back off if OM showed no sign of giving in.

For people with some insight into trademark law and practice, Coca-Cola's continued efforts are
unsurprising. It is also unsurprising that the case was picked up by Vårt Oslo, a newspaper whose readers
are almost guaranteed to side with the local David against the giant Goliath. OM could not have expected
to influence the courts, but it may have hoped that Coca-Cola would find the media attention too costly
and choose to back down. At any rate, the media attention probably had marketing value for OM.

All of this has inevitably led the parties to the courtroom: neither side appears to have any strong incentive
to back down before the case has been tried at least once.
 GEW602: Basic IP

For further information on this topic please contact Tom Ekeberg at Zacco by telephone (+47 22 91 04 00)
or email (tom.ekeberg@zacco.com). The Zacco website can be accessed at www.zacco.com.

The materials contained on this website are for general information purposes only and are subject to the
disclaimer.

ILO is a premium online legal update service for major companies and law firms worldwide. In-house
corporate counsel and other users of legal services, as well as law firm partners, qualify for a free
subscription.

Source: https://www.internationallawoffice.com/Newsletters/Intellectual-
Property/Norway/Zacco/David-versus-Goliath-local-soft-drink-maker-takes-on-Coca-Cola-in-trademark-
case

2. Under Armour Files Lawsuit Against Nike For Trademark Infringement

Monte Burke,

Late this afternoon, in a district court in Baltimore, Maryland, Under Armour filed a complaint against
Nike, alleging trademark infringement. The trademark in question is Under Armour’s advertising phrase,
“I Will,” which is part of a brand new marketing campaign. It is the first time that Under Armour has ever
sued Nike.

(Nike sued Under Armour back in 2003 over the use of the term “DRI-FIT”).

In the complaint (found below), Under Armour alleges that Nike

launched an advertising campaign for its performance apparel, footwear, accessories, sporting goods, and
related services that appropriates ‘I WILL’ prominently, repeatedly, and in a format and context that
imitates Under Armour’s longstanding use of its iconic I WILL trademark/tagline for these same types of
products and services.

Under Armour says that Nike has appropriated the phrase and has used it (and a variation of another UA
marketing phrase, “Protect this house”) in various online and social media outlets. The Nike tag line: “I
will protect my home court.” (Here's an example.)

Under Armour had revenues last year of $1.8 billion. Nike’s were $25 billion.

Under Armour founder and CEO, Kevin Plank, has long fashioned himself and his company as the scrappy
underdog to Nike. “We prefer to battle our competitors in the marketplace and on the field of play,”
Under Armour said in a statement.

Source: https://www.forbes.com/sites/monteburke/2013/02/21/under-armour-files-lawsuit-against-
nike-for-trademark-infringement/#69a1c1fe1278
 GEW602: Basic IP

D. Copyright
Famous copyright infringement cases (and what you can learn)
Kaitlyn Ellison

1. Rogers vs. Koons

Photograph: Art Rogers – 1985; Polychrome: Jeff Koons – 1988 (both via The Design Observer Group)

Case

Photographer Art Rogers shot a photograph of a couple holding a line of puppies in a row and sold it for
use in greeting cards and similar products. Internationally, renowned artist Jeff Koons in the process of
creating an exhibit on the banality of everyday items, ran across Rodgers’ photograph and used it to create
a set of statues based on the image.

Koons sold several of these structures, making a significant profit. Upon discovering the copy, Rodgers
sued Koons for copyright. Koons responded by claiming fair use by parody.

Outcome

The court found the similarities between the 2 images too close, and that a “typical person” would be able
to recognize the copy. Koon’s defense was rejected under the argument that he could have used a more
generic source to make the same statement — without copying Rogers’ work. Koons was forced to pay a
monetary settlement to Rodgers.

Significance

This is one of those famous cases that encompassed a larger issue in the art world, the issue of
appropriation art. Can you build upon another’s work to create your own original piece? And if you do so,
does that constitute derivative work?
 GEW602: Basic IP

It also brought up the issue of photography as art, was photography just a documentation of the world,
or is it a creative and artistic product? Neither of these issues was entirely answered by the case, of course,
but it has also become a reference used in many cases afterward.

You can parallel this with vector-tracing a photograph for your design. Are you creating a derivative work
that subtracts value from the original artist?

2. The Associated Press vs. Fairey

Photograph: Mannie Garcia – 2006 (via The New York Times); Poster: Shephard Fairey – 2008 (via
Wikipedia)

Case

Famous street artist Shephard Fairey created the Hope poster during President Obama’s first run for
presidential election in 2008. The design rapidly became a symbol for Obama’s campaign, technically
independent of the campaign but with its approval.

In January 2009, the photograph on which Fairey allegedly based the design was revealed by the
Associated Press as one shot by AP freelancer Mannie Garcia — with the AP demanding compensation for
its use in Fairey’s work. Fairey responded with the defense of fair use, claiming his work didn’t reduce the
value of the original photograph.

Outcome
 GEW602: Basic IP

The artist and the AP press came to a private settlement in January 2011, part of which included a split in
the profits for the work.

Significance

Though there wasn’t a court case and an actual verdict, this case created a lot of discourse around the
value of work in these copyright battles. It’s unlikely that Garcia’s work could have ever reached the level
of fame it did, if not for Fairey’s poster. Garcia himself stated he was “so proud of the photograph and
that Fairey did what he did artistically with it, and the effect it has had,” but still had a problem with the
fact that Fairey took the image without permission and without credit for it’s originator.

Credit, credit, credit! On 99designs you cannot use licensed work — but in the right circumstances you
can use stock imagery. When doing so, make sure everyone knows the source.

Source: https://99designs.com/blog/tips/5-famous-copyright-infringement-cases/
 GEW602: Basic IP

E. Geographical Indication
1.Guimaras growers to seek GI status for mangoes
By BusinessMirror - April 21, 2016

Mango growers have committed to start developing a “code of practice” to push for the certification of
Guimaras mango as a geographical indication [GI].

Rose Griesser, chairman of the Guimaras Mango Growers and Producers Development Cooperative, made
this commitment during a recent meeting with European Union (EU) Ambassador Franz Jessen in the
province.

Griesser told Jessen the cooperative’s code of practice is an initial step to pushing for the application for
certification of Guimaras mango as a GI.

“Geographical indications support rural development, new job opportunities and add value to products,”
Jessen said in a statement.

GIs are distinctive signs used to identify a product as originating in the territory of a particular country,
region or locality where its quality, reputation or other characteristic is linked to its geographical origin.

Jessen said Guimaras mangoes have strong potential, and farmers could expand their international export
market should they take advantage of the opportunities the protection and familiarity the Guimaras
mango can provide.

The EU envoy was with Mihai Sion, chargé d’affaires (ad interim) and German Deputy Ambassador Michael
Hasper for a two-day mission to Guimaras Island.

Meanwhile, the Guimaras mango farmers were among the beneficiaries of workshops and trainings
designed to assist producers and processors in crafting the code of practice for Guimaras mango as a GI
that will be duly certified by the Intellectual Property Office of the Philippines (Ipophl). Marketing GIs,
international standards on food safety, packaging and labeling for the Guimaras mangoes was also
covered in these capacity-building activities.

Jessen also called on farmers to take advantage of the Generalized System of Preference Plus (GSP+) status
granted to the Philippines in 2014.

The GSP+ scheme allows for a significant reduction of customs tariffs on Filipino export products, and has
led to a marked increase of export to the EU.

The EU grants the GSP+ status to generate economic benefits that will help the benefiting country not
only economically, but also to assume its responsibilities under core international conventions on human
and labor rights, environmental protection and good governance.

To boost the competitiveness of specific Philippine products in the global market, the Trade Related
Technical Assistance Project 3 has mobilized experts to support the Ipophl in developing, promoting and
protecting the Guimaras mango as a GI.
 GEW602: Basic IP

The Guimaras mango GI serves as a label that characterizes the mangoes as both originating in Guimaras,
as well as reputedly fresh and sweet.

Studies show that sales value of GI-registered products can be more than double in similar products
without a GI.

The EU said it supports efforts of the Philippines to develop its own sui generis GI regulation so that
farmers can take advantage of the opportunities the protection and familiarity the products can bring.

Source: https://businessmirror.com.ph/2016/04/21/guimaras-growers-to-seek-gi-status-for-mangoes/

2. The Sparkling Wine War: Pitting Trademark Rights Against Geographic

Indications
Carol Robertson, June 30, 2009

"Masquerading as Champagne might be legal, but it isn't fair," reads a recent ad sponsored by the Office
of Champagne, USA, a trade group dedicated to the promotion of the interests of French champagne
producers. What is their complaint?—that certain U.S. winemakers are legally entitled to produce
sparkling wine in this country and label it "champagne."

The Historic Mystique of Champagne

Champagne (in French "le champagne") is a beverage produced in La Champagne. This region of
Northeastern France is known for its chalky soil, which contributes to the unique flavor of a sparkling wine
that has long been a favorite celebration beverage—at marriages, births, and, of course, the New Year.
Since the early nineteenth century, American vintners have attempted to produce a sparkling wine that
would rival champagne. In 1842, Louis Longworth of Cincinnati (known as the father of the American wine
industry) produced a bubbly wine from the native Catawba grape that was compared favorably to the
French product. In 1876, a New York Times correspondent encountered a sparkling wine called "Eclipse"
at Buena Vista Winery in California. By the end of the nineteenth century, a number of U.S. producers
were making sparkling wine and were not hesitant to call their products "champagne." Among these were
the Korbel brothers, who began producing a sparkling wine called "champagne" in California in 1882.

The misuse of place names to sell wine is as old as the American wine industry. Borrowing the name of a
well-regarded wine was a shorthand way for new winemakers to impart some of the cachet of a better-
known beverage to a new American product. Ironically, Prohibition facilitated the willingness of the
American consumer to substitute an inferior locally produced sparkling wine for the higher-quality French
product that only remained accessible to the wealthy. The weekly "Talk of the Town" feature in the New
Yorker from the late 1920s had numerous items about these connoisseurs. For example, bon voyage gifts
of legal champagne were presented to travelers heading abroad once the ships were safely out of the
United States' territorial waters. The less well-off contented themselves with less than authentic
"champagne" more likely produced in a nearby warehouse from cheap grapes or with so-called medicinal
champagne that could still legally be sold under the Volstead Act. And when Repeal enabled Americans
to once again legally toast their special events, their inexperienced palates could not appreciate the
difference between French champagne and an American sparkling wine bearing the same name.
 GEW602: Basic IP

To them, the word "champagne" had become synonymous with any sparkling wine. This was the situation
during much of the twentieth century. Sparkling wine was inexpensive to make, particularly if the
producer selected a method of production that was less costly and time intensive than the m&éthode
champenoise used in Champagne, such as by injecting finished wines with carbon dioxide or inducing
secondary fermentation in large tanks of still white wine made from inexpensive grapes. If anything, the
word "champagne" usually connoted a higher-quality wine and thus was a desirable addition to a sparkling
wine label. For example, when Jack and Jamie Davies acquired the old Schramsberg winery in 1965, they
produced a well-regarded sparkling wine using the méthode champenoise that was first served at state
dinners at the White House during the Nixon administration. They called it "Schramsberg Sparkling
Champagne." (The word "champagne" has since been dropped from the Schramsberg label.

Place Name Versus Trademark

There is a conflict between European wine producers and American wine producers over whether greater
importance should be placed on the name of a place where a wine is produced or the brand under which
it is sold. In America, historically, the trademark has been the most important feature, not the provenance
of the wine. But European producers have long recognized the importance of "terroir"—that wine made
from grapes grown in a particular location will have a unique taste. The word "terroir" has no English
translation. It means place, certainly, but also it implies soil characteristics, climate, and altitude, for
example. It represents also the learnings about wine production passed on from an earlier generation of
winemakers to their followers, that is, the craft of the winemaker. France's first laws designed to protect
geographic areas were enacted in the nineteenth century, as a means to deter fraudulent indication of
origin. In 1919, the French created the Appellation D'Origine Contrôl&ée (AOC), which required that the
true geographic origin of a wine be accurately represented and which remains in effect to this day. Starting
in 1989, the European Union (EU) passed a number of regulations governing wine products with a goal of
preventing descriptions that were incorrect or were likely to cause confusion or to mislead consumers.
These regulations were intended to apply not only to wines produced in Europe but also to wines
originating in other countries. They specifically prohibit the use of the name of a given region in the EU to
describe an imported wine.

American View: Primacy of Trademark

As noted, American law has given primacy to protection of trademarks over geographic location; it is a
brand-driven economy. Since the early days of wine production in the United States, wineries have gone
to great lengths to protect their trademarks. As early as 1910, Italian Swiss Colony sued another wine
producer in an attempt to protect its trademark for its Chianti-style wine. As the wine economy has
become more global over the past 20 years, producers have grown more and more conscious of the
importance of their brands and have gone to greater and greater lengths to protect them. The goodwill
associated with a well-known wine label can translate into a premium price and substantial profits.

Europe's Stance: Geography Controls

For comparable reasons, Europeans wish to protect their place names. The French have long railed against
the common practice of U.S. winemakers to indiscriminately borrow French place names—such as
Champagne, Burgundy, or Chablis—to label wines that do not come from these specific regions and that
do not even closely resemble them. Lawsuits against this practice in the United States date back to the
 GEW602: Basic IP

early days of wine production and establish that these European place names have become, at least in
part, generic or semi-generic terms for wine types on American wines. The Europeans want to reclaim
these semi-generic names for use only on wines grown and produced in the original appellations. What
the Americans perceive as long-established trademarks related to generic names, the French view as
deceptive. While American law, accordingly, has established a wine labeling system that seeks to protect
these trademarks, countries forming the EU have developed a regulatory framework separate and apart
from trademark designations, designed to identify and protect the geographic regions historically
recognizable as sources of well-established and well-regarded products—such as champagne (so-called
geographic indications).

A Case for Geographic Indications

It is only recently that geographic areas, such as the Napa Valley, evoke any particular qualities in an
American's mind. With respect to the identification of geographic origin, the Bureau of Alcohol, Tobacco,
Firearms and Explosives, the federal agency responsible for wine regulation (the ATF), first established a
formal appellation program for wine in the United States in 1978. Current regulations separate place
names into three different classes: generic, semi-generic, and nongeneric. A geographic indication is
deemed generic if the name, while "originally having geographical significance," now merely designates a
"class or type of wine." (An example of a generic name is vermouth.) Nongeneric names are those that
can only be used "to designate wines of the origin indicated by such name," such as Californian or French,
or that become "distinctive designations" when they are "known to the consumer and to the trade as the
designation of a specific wine of a particular place or region, distinguishable from all other wines." These
include Bordeaux Rouge and Médoc. Semi-generic names are those that currently have "geographical
significance" but also designate "a class or type of wine." If a semi-generic name is used for a wine that is
from a region other than that indicated by the name—such as a sparkling wine produced in California—
the label must designate the wine's true place of origin, and the wine itself must reflect the qualities
typically associated with the semi-generic name. Under these regulations, a California wine producer, if
using a semi-generic name such as "champagne," would also have to identify California as the place of
origin—thus "California Champagne."

Because geographic indications can—much as trademarks—create value, and also because they are a
means for European winemakers to continue their historic dominance in an industry that has become
increasingly globalized, a conflict has developed between those who seek to protect their established
brands, such as Korbel (which has called its California sparkling wine "champagne" since the late 1800s),
and those who want to protect the image of traditional place names against interloping products that
weaken their prestige. The regulations of the EU would bar from the market a California sparkling wine
that bears the word "champagne" in its label on the grounds that this label would mislead the customer.
According to this view, "champagne" describes not any sparkling white wine, but only sparkling white
wine produced in the traditional manner in the Champagne region of France from grapes grown there.

International Protection of IP

This conflict came to the forefront in negotiations in December 1993 for the International Agreement of
Trade-Related Aspects of Intellectual Property Rights (or TRIPS). Recognizing wine appellations as valuable
intellectual property rights, article 23 of this agreement provides an enhanced level of protection for
geographic indications for wines and spirits. The principal aim of this section is to prevent geographic
 GEW602: Basic IP

indications identifying wines from becoming generic terms. Under provisions that took effect in 1996, all
signatory countries, which include the United States and member countries of the EU, agreed to protect
under their laws geographic indications. The major thrust of TRIPS is to ensure that consumers are not
deceived by misdescriptive geographic references on wine labels. Accordingly, TRIPS absolutely prohibits
the registration of any trademark containing a false geographic indication as a source of wine. However,
article 24 of TRIPS built in certain exceptions, and those exceptions protect the continued use of
geographic indications that were in trademarks in actual use before TRIPS became effective—such as
Korbel's "California Champagne."

2006 Agreement on Trade in Wine

Because of these exceptions to TRIPS, European producers have not believed that the United States is
serious about protecting geographic indications, despite the fact that bilateral discussions between the
United States and the EU to establish mutually acceptable guidelines to protect the rights of European
wine producers—but also to protect U.S. trademark owners—continued over the decade following the
signing of TRIPS. Finally, on March 10, 2006, the United States and the European Union entered into an
agreement intended to resolve this "wine war" (Agreement on Trade in Wine). This agreement attempts
to settle differences concerning winemaking practices and the labeling of a wine's place of origin. The first
substantive portion of the agreement prevents either party from blocking the importation of wine on the
basis of the other's winemaking practices. This section is viewed as benefiting American wine producers
who may export wine produced by techniques that are banned in Europe, such as adding wood chips to
give the product an enhanced oak flavor. In addition, however, the United States pledged to seek a change
in legal status for a set of 17 semi-generic terms to restrict their use solely to wines originating in the
applicable EU member state and to ensure that these terms are only used on wines produced in the EU.
These terms are Burgundy, Claret, Chablis, Champagne, Chianti, Malaga, Marsala, Madeira, Moselle, Port,
Retsina, Rhine Wine, Hock, Sauterne, Haut Sauterne, Sherry, and Tokay.Nonconforming wine labels are to
be blocked from the market.

However, there are certain exceptions in the agreement, most notably a grandfather clause to protect
winemakers who used an otherwise prohibited semi-generic term if the use occurred only on labels for
wine bearing the brand name for which the applicable Certificate of Label Approval (COLA) was issued by
the secretary of the treasury before the date of signing of the agreement. Congress codified these
provisions as part of the Tax Relief and Health Care Act of 2006. In return, the EU promised reciprocal
treatment for "names of viticultural significance" in the United States, such as "Napa," and in May 2007
Napa became the first U.S. wine region to receive geographic indication status within the European Union.

Not surprisingly, European wine producers reacted with outrage to the terms of this agreement. In their
view, the EU made a bad deal in accepting American production practices and agreeing to a grandfather
clause that sanctions the continued use of semi-generic terms by the larger American wine producers. By
some accounts, as much as 50 percent of bottles of sparkling wine sold in the United States carry the word
"champagne" on their labels. The legal position taken by American producers is that this term has become
generic for a quality sparkling wine and that they have long-established valuable trademark rights to those
names that they should be allowed to keep. As the wine economy becomes more global and grows more
competitive, however, there is a real risk that the names of popular U.S. wine-producing regions such as
 GEW602: Basic IP

Napa will be increasingly used on bottles of wine produced outside of the United States. Therefore, at
least a few U.S. winemakers have joined in a call to protect geographic indications.

And the Controversy Continues

While they continue to work out their legal differences in continued trade negotiations, French
champagne producers are escalating their public relations campaign—called "Unmask the Truth." Besides
placing high-profile advertising in national publications, the Office of Champagne, USA, has issued press
releases and has engaged consumers in a high-profile movement, including sponsoring an online petition,
to put pressure on U.S. lawmakers in support of a law prohibiting misleading labels. They have learned
that pressing their message solely through trade negotiations has not been effective and that other
methods, such as developing allies among U.S. winemakers, implementing consumer advocacy, and high-
profile media messaging, may be a more effective way to achieve their goal of limiting the use of the term
"champagne" to the sparkling wine produced in La Champagne.

Source: https://www.americanbar.org/groups/business_law/publications/blt/2009/05/03_robertson/
 GEW602: Basic IP

F. Industrial Design
1. Canada: "Wow Moments" and Industrial Design Infringement
Richard Stobbe, June 28 2016

An inventor had a "wow" moment when he came across a design improvement for cold-weather visors –
something suitable for the snowmobile helmet market. The helmet maker brought the improved helmet
to market and also pursued both patent and industrial design protection. The patent application was
ultimately abandoned, but the industrial design registration was issued in 2010 for the "Helmet Face
Shield" design, which purports to protect the visor portion of a snowmobile helmet.

AFX Licensing, the owner of the invention, sued a competitor for infringement of the registered industrial
design. AFX sought an injunction and damages for infringement under the Industrial Design Act. The
competitor – HJC America – countered with an application to expunge the registration on the basis of
invalidity. HJC argued that the design was invalid due to a lack of originality and due to functionality.

Can a snowmobile visor be protected using IP rights?

A registrable industrial design has to meet certain criteria: (i) it must differ substantially from the prior art
(in other words it must be "original"); (ii) it cannot closely resemble any other registered industrial designs;
and (iii) it cannot have been published more than a year before application for registration.

In AFX Licensing Corporation v. HJC America, Inc., 2016 FC 435 (CanLII), the court decided that AFX's
industrial design registration was valid but was not infringed by the HJC product because the court saw
"substantial differences" between the two designs. In summarizing, the court noted the following:

"First, the protection offered by the industrial design regime is different from that of the patent regime...
the patent regime protects functionality and the design regime protects the aesthetic features of any
given product." (Emphasis added)

The industrial design registration obtained by AFX does "not confer on AFX a monopoly over double-
walled anti-fogging face shields in Canada. Rather, it provides a measure of protection for any shield that
is substantially similar to that depicted in the ID 964 illustrations, and it cannot be said that the HJ-17L
meets that threshold."
 GEW602: Basic IP

The infringement claim and the expungement counter-claim were both dismissed.

Source:http://www.mondaq.com/canada/x/504506/Patent/Wow+Moments+and+Industrial+Design+Inf
ringement

2. Honda Wins Landmark Patent Design Infringement Case in Thailand

Informed Counsel, February 28, 2018

Thailand has a reputation as a challenging country in which to enforce patent rights. The accuracy of this
perception can be debated, but precedent cases have certainly demonstrated that Thai courts have been
conservative in awarding damages to the winning party. In patent litigation cases, in particular, the courts
often award damages that, in the view of the winning party, represent only a fraction of the actual
damages caused by patent infringement.

However, Honda Motors Co., Ltd. (Honda) recently won a groundbreaking design patent infringement
case that should provide new optimism for patent owners. In rendering its decision, the Central
Intellectual Property and International Trade Court (Court) took two steps that made this a landmark case.
First, the Court granted significant, meaningful damages to Honda, as the patent owner. And second, the
Court took a novel approach in determining the prescription period for the infringer’s offense—a legal
principle that could be significant not only for this case, but also for future design patent infringement
cases.

Suspected Infringement of Honda’s Designs

Honda was granted protection for the designs of its Honda Wave 100S motorcycle in several countries,
including Thailand. This involved five separate design patents: (1) a handle cover with a headlight for a
motorcycle; (2) a front top cover for a motorcycle; (3) a center cover for a motorcycle; (4) a lens for a rear
combination lamp for a motorcycle; and (5) a motorcycle.

The Honda Wave 100S is one of the most popular motorcycle models in Thailand. Given this prominent
market position, Honda took a proactive approach to monitor the market for imitations of the Honda
Wave 100S motorcycle and its parts that would directly compete with Honda’s genuine products. Honda
discovered that a leading Chinese motorcycle company (the infringer) was manufacturing and selling two
suspected infringing motorcycle models in Thailand under its own brand. After conducting several forensic
analyses by experts and patent specialists, Honda concluded that these two models were infringing all five
of Honda’s design patents.

Having tried but failed to settle the dispute by amicable negotiations, Honda filed a civil suit against the
infringer on the grounds of design patent infringement. Before the Court could be convinced of the
infringement of Honda’s designs, Honda had to frame and present its arguments on various complex
issues.

Validity of Design and Standard of Proof

Validity of design is certainly one of the most common issues of dispute considered by the Court. The
infringer argued that all five of Honda’s design patents were not validly granted and filed a counterclaim
 GEW602: Basic IP

for cancellation of Honda’s design patents. The Court laid out the issues it would take under its
consideration:

That the design patent law intends to provide protection for the design aesthetics or the outer elements
of products (absent any considerations of their functionality); and

That the design must meet the necessary legal criteria for novelty (i.e., a new design must be different
from each prior art in substance).

In addition, the Court gave clear instructions that the standard of proof for all evidence must be “clear
and convincing.” Since the infringer failed to prove its claims, the Court concluded that all of Honda’s
design patents were new and valid and thus dismissed the infringer’s counterclaim for cancellation of
Honda’s design patents.

Consideration of Design Infringement

While the designs can vary in their details, the Court considered that the whole design or substantial parts
of the design must be identical or similar in order to be considered as infringement. The infringer argued
that its two motorcycle models did not infringe Honda’s patented designs, as there were many minor
differences between its motorcycles and Honda’s designs. Having compared the designs of both parties,
the Court ruled that the infringer had infringed Honda's design patents, opening the door for Honda to
claim damages.

Prescription Period and Amount of Damages

In an important development, the Court found that the prescription period for a criminal act could be
applied to this case. In general, patent infringement is considered to be both a criminal offense and a civil
offense. Although Honda initiated this case under a civil action, which normally means a prescription
period of only one year from the date the infringing act and the infringer became known, the Court applied
the longer prescription period of 10 years mandated for a criminal offense (from the date of committing
the offense) to calculate the amount of damages, citing section 448, paragraph two, of the Civil and
Commercial Code. This meant that Honda was able to claim a higher amount of damages due to the longer
prescription period allowed under a criminal action.

Ultimately, the Court awarded Honda damages of more than THB 16 million (about USD 500,000),
including lawyers’ fees, enforcement expenses, and interest, with the compensation amount being one
of the highest ever awarded in a patent infringement lawsuit in Thailand.

This is the first design patent infringement lawsuit that has applied a prescription period for a criminal act
in a civil lawsuit in Thailand. This victory not only highlights Honda’s success in being awarded a large sum
of damages, but also has implications for the way future litigation in design patent infringement cases will
be conducted and for the several notable legal principles laid down by the Court in this precedent decision.

Source: https://www.tilleke.com/resources/honda-wins-landmark-patent-design-infringement-case-
thailand