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ISSUE090
26.04.2016
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The primary source of global intellectual property internet news and analysis
Value gap despite major
growth in digital music
There is a major value gap between digital
sales and revenue growth, according
to the International Federation of the
Phonographic Industry (IFPI).
Music is being consumed at record levels,
the IFPI Global Music Report 2016 has
found, but not enough revenue is returning
to artists and labels.
Digital sales became the primary revenue
stream for recorded music in 2015,
overtaking physical sale formats for the
first time. Digital revenues now account
for 45 percent of total revenues compared
to 39 percent for physical sales.
Google Books can proceed
after Supreme Court rejection
The US Supreme Court has declined to hear the
Google Books case, dealing a major blow to
authors looking to be compensated for the mass
digitisation project.
Justices handed down the decision to refuse
certiorari on 18 April, following the Authors
Guild’s appeal against the Court of Appeals for
the Second Circuit’s ruling that Google’s mass
digitisation of millions of books is a fair use
under copyright law.
The case has been raging since 2004 when a
group of university libraries allowed Google
to scan their collections to create a database
containing the full text of millions of works. It
was called the Mass Digitisation Project, but
was later rebranded as Google Books.
The Authors Guild, among others, claimed that
Google sought to profit from using its authors’
books without obtaining their permission,
prompting legal battles that have bounced
between the Second Circuit and the US District
Court for the Southern District of New York
since 2005.
A resolution was almost found in 2011 when
the Authors Guild and Google came to a
settlement, but the deal was quashed for being
anti-competitive.
Then, in October 2015, the Second Circuit
confirmed that “Google’s unauthorised digitising
of copyright-protected works, creation of a
search functionality, and display of snippets
from those works are non-infringing fair uses”.
Continued on p2
Total industry revenues increased 3.2
percent to $15 billion, leading to the
industry’s first significant yearly growth in
more than two decades. Digital revenues
now account for more than half of the
recorded music market in 19 countries.
Continued on p2
Counterfeit trade worth half
a trillion dollars
Global trade in fake goods was worth
almost half a trillion dollars in 2013, a new
report has claimed.
The report from the Organisation for
Economic Co-operation and Development
(OECD) and the EU Intellectual Property
Office (EUIPO) put the value of total global
imports at $17.9 trillion in 2013, meaning
counterfeits accounted for around 2.5
percent of the world’s trade, with a value
of $461 billion.
The report analysed nearly half a million
customs seizures around the world
between 2011 and 2013.
Continued on p2
Latest News
Google Books can proceed after
Supreme Court rejection
Continued from p1
“The purpose of the copying is highly
transformative, the public display of text is
limited, and the revelations do not provide a
significant market substitute for the protected
aspects of the originals. Google’s commercial
nature and profit motivation do not justify
denial of fair use,” the Second Circuit
explained in its decision.
online from playing by the same rules as other
online music services.
The European Commission acknowledged the
value gap issue in December 2015.
According to IFPI, the European Commission
plans to make its proposals on how to address
the value gap public this year.
The US Copyright Office is currently reviewing
the safe harbour provisions in the Digital
Millennium Copyright Act, although experts
The Authors Guild argued in its 31 December say that the process is not expected to result
2015 petition to the Supreme Court that in any significant changes to how online service
by “divorcing the fair-use enquiry from the providers are protected from liability.
Oracle and Google fail to reach a settlement
traditional goal of promoting creativity, the
ahead of the $9 billion copyright trial over
approach empowers judges to approve any Counterfeit trade worth half a trillion dollars the unauthorised use of Java in the Android
reuse of copyrighted works that those judges Continued from p1
operating system
deem socially beneficial”.
p4
It points to a larger volume than a 2008
Authors Guild president Roxana Robinson OECD study that estimated fake goods
called the Supreme Court’s decision “a accounted for up to 1.9 percent of global The Federation Against Software Theft and
imports, although the 2008 study used more V.i. Labs team up to launch an educational
colossal loss” for authors.
limited data and methodology.
campaign
aimed
at
businesses
that
unintentionally use unlicensed software
She said: “We filed the class action lawsuit
p6
against Google in September 2005 because, Up to 5 percent of goods imported into the EU
as we stated then, ‘Google’s taking was a in 2013 were fakes, according to the report,
plain and brazen violation of copyright law.’ with French, Italian and US brands being hit the
We believed then and we believe now that hardest by counterfeiters.
authors should be compensated when their
“This percentage is likely to have increased
work is copied for commercial purposes.”
further since then, with the growing importance
A Google spokesperson commented: “We are of ecommerce and the delivery of counterfeits
grateful that the court has agreed to uphold to consumers by parcel post,” commented
the decision of the Second Circuit which Jeremy Newman, managing partner at Rouse.
concluded that Google Books is transformative
“This is a shockingly high percentage for such
and consistent with copyright law.”
an economically and legally advanced region—
Value gap despite major growth in suggesting that the solution is not to be found
digital music market
in one country or region alone, but in a joined
Continued from p1
up global approach.”
Attendees of the IACC Spring Conference
in Florida can look forward to a keynote
In spite of the growth of the digital music In the period between 2011 and 2013, the US speech from Alibaba’s Jack Ma
market, consumption is not returning a fair topped the list of brands that were most affected
p7
remuneration to artists and record labels, by counterfeiting, at 20 percent. Fifteen percent
according to IFPI.
of Italian brands were affected, followed by
France and Switzerland, at 12 percent each.
“The value gap is the biggest constraint to
revenue growth for artists, record labels and Most fake goods originate from China as well
all music rights holders. Change is needed as middle income and emerging countries, said
and it is to policymakers that the music sector the report.
looks to effect change,” commented IFPI chief
executive Frances Moore.
“The findings of this new report contradict
the image that counterfeiters only hurt big
Some major digital services are able to companies and luxury goods manufacturers.
circumvent the normal rules that apply to music They take advantage of our trust in trademarks
licensing, according to the report. User upload and brand names to undermine economies and
services, for example, claim they do not need endanger lives,” said OECD deputy secretary Dr Judit Lantos and Dr Ildiko Komor Hennel
to negotiate licences for the music on their general Doug Frantz.
of Sár and Partners – Danubia Patent & Law
platforms, IFPI has found.
Office report on a controversial trademark case
Yahoo patents worth less than
p9
Such services claim protection from copyright $1 billion, argues law firm
safe habour provisions, but they are being
misapplied, IFPI said in its report. The rules Yahoo’s reported $3 billion patent portfolio Comings and goings at Procopio, Mayer
were not designed to exempt companies that is actually worth $772 million, according to Brown, Corrs Chambers and more
actively engage in the distribution of music Richardson Oliver.
p13
Contents
Latest News
Latest News
Conference Preview
Hungary Insight
People Moves
2
Intellectual Property
in an Innovative World
Latest News
The law firm delved into claims, “stated over online use of copyright and trademarks,
without any data to back up the analysis”, that according to Yang Borong, chief judge of the
have put the value of Yahoo’s patent portfolio Beijing court’s intellectual property tribunal.
in the billions.
Beijing courts heard 13,939 IP cases last
Yahoo is currently the subject of intense year, an increase of 24 percent from 2014.
takeover speculation after years of revenue More than 10,000 of those disputes had an
declines. The internet company reportedly online component.
owns 6,000 patents estimated to be worth up
to $3 billion and has sold or licensed more than Borong said: “We summarise difficulties in
$600 million in rights over the last three years. hearing IP cases on the internet and clarifying
web operators’ responsibilities in the guidelines,
The internet company’s portfolio is “sizeable”, helping city grassroots courts to effectively deal
according to Richardson Oliver, and it has with related disputes.”
acquired a number of assets from other
companies. But the price of its portfolio would The Beijing High People’s Court also
not be worth the $3 billion estimate on the announced that high profile IP cases, hearing
and documents will soon be made available
current market, the law firm said.
in English.
“The market is changing quickly and is down by
more than 60 percent compared to four years “We have had the idea to supply English
ago and continues to decline,” found the report. versions for some time, but due to the limited
number of English speakers in the court, the
Based on its analysis of the market, the firm first batch of cases could not been issued until
proposed that Yahoo’s total patent assets could now,” said Pan Wei, assistant to the court’s IP
expect an asking price of around $1.8 billion, tribunal chief judge. An initial batch of 10 IP
but for just the US patents, the price would be cases have been released in English.
$605 million.
“We also want both Chinese and foreigners to
Assuming that every patent sells, the firm understand our IP case hearings and keep our
placed the market price of the patents between work transparent.”
$393 million and $1.15 billion, and estimated
Yahoo’s portfolio value to be in the region of Oracle and Google fail to negotiate
$772 million.
Oracle and Google have failed to reach a
The US Supreme Court’s 2015 Alice decision, settlement ahead of the $9 billion copyright
“gutted business method patents and damaged trial over the unauthorised use of Java in the
many software patents,” stated the firm. “Yahoo Android operating system.
is not immune to the negative impact.”
Company representatives discussed the case
Guidance planned for cyber disputes at the US District Court for Northern District
in China
of California on 15 April before Judge William
Alsup, but failed to agree on a settlement ahead
The Beijing High People’s Court has issued of the retrial over whether Google had a fair
guidance for city courts handling intellectual use defence to infringing Oracle’s copyright,
property disputes in the digital space, following according to court documents.
an increase of disputes in China’s capital.
The case is moving to retrial following the
The guidance will be based on two years Supreme Court’s June 2015 dismissal of
of research and study concerning disputes an appeal against a Court of Appeals for the
IPzen
4
Federal Circuit ruling that upheld the copyright
in, and reinstated Google’s infringement of, 37
Java application programming interfaces (APIs).
The Federal Circuit returned the case to district
court for a retrial on whether Google has a fair
use defence to its use of the APIs in Android, as
the original jury failed to return a verdict.
Recently unsealed court documents revealed
that Oracle is seeking $9.3 billion in damages
from Google.
Oracle filed a damages report along with expert
witness testimony in February, arguing that it is
entitled to $8.83 billion in apportioned profits,
plus $475 million in damages.
UDRP returns eBay and PayPal
domain names
PayPal and eBay have secured the return
of 13 infringing domain names from two
cybersquatters in South Korea.
A panellist at the World Intellectual Property
Organization’s Arbitration and Mediation Center
returned the domains to the ecommerce site
and digital payment service on 11 April.
Korean companies Noorinet and Linecom
registered the 13 domain names, which
included thaiebay.com and paypal-card.
com, containing eBay and Paypal trademarks
between May 2007 and July 2014.
eBay and PayPal, which was spun-off
as a separate company last year, filed a
Uniform Dispute Resolution Policy (UDRP)
on 11 January.
They argued that the disputed domain names
are confusingly similar to their trademarks, with
the addition of generic terms such as ‘card’ and
‘thai’ failing to distinguish the domains from
their registered rights, and were registered in
bad faith for “commercial gain”.
“The domain names are being used to attract,
for commercial gain, internet users to their
Stillwaters Law Firm
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Trademarks Patents Designs
Copyright Anti-counterfeiting
Border Enforcement Measures Domains
Data Protection IP Litigation
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IP Due Diligence Annuities
Transfer of Technology Piracy
Licensing Distributorship Franchising
Customs Related Assistance
Registrations Renewals Assignments
Latest News
websites by creating a likelihood of confusion,” Alex Hilton, CEO of FAST, said: “Often, the purposes, without resulting in the permanent
they argued. Noorinet nor Linecom responded legally inclined user has no idea that they are availability of content protected at EU level,”
using unlicensed software.”
said Abramavičius.
to the complaint.
Sole panellist Moonchul Chang agreed with
eBay and Paypal, finding that the domains
names substantially incorporated their marks,
without permission, for the sole purpose of
attracting internet users to “parking websites
with sponsored links”.
“Unsuspecting buyers can also be duped
when purchasing from online sites which
target buyers looking out for a bargain. It
is not uncommon that prices of counterfeit
software just below the usual price, giving the
application an air of legitimacy.”
“Having considered Noorinet and Linecom’s
registrations of multiple confusingly similar
disputed domain names incorporating eBay
and Paypal’s widely known trademarks,
together with the fact that Noorinet and
Linecom have also been the respondents in
over 60 domain name disputes, the panel
finds that these registrations constitute a
typical pattern of cybersquatting in bad faith.”
V.i. Labs recovers
software use.
revenue
for
One way to ensure this would be for
service providers to verify the member
state of residence of their subscribers, the
committee suggested.
The committee said it is “receptive” to the
proposal for a licensing agreement that allows
unpaid cross-border access to content.
It also supports EU action to ensure efficient
It has uncovered more than $16 billion in licence and transparent distribution of levies among
revenue opportunities since 2006, according to right holders.
its statement, and has recovered for than $1
billion for clients.
Abramavičius added: “In the long term,
we should proceed towards greater
Michael Goff, marketing director at V.i. Labs, convergence between national copyright
added: “We are working with hundreds of systems and aim to harmonise the legal
GCHQ ‘rumbled’ Harry Potter leak software companies to help them identify those framework for the remuneration of authors,
users who may not even know that the product creators and artists.”
UK surveillance agency GCHQ stepped in to they are using is pirated.”
prevent the sixth Harry Potter leaking online,
Oracle recovers orracle.com
the publisher has claimed.
“There is an army of users who would be
horrified to know that the applications they Oracle has secured the return of an infringing
Bloomsbury Publishing Nigel Newton said were using day-to-day are pirated.”
domain name from a typosquatter.
GCHQ agents contacted him ahead of
publication of The Half Blood-Prince to warn Cross-border accessibility must not The World Intellectual Property Organization’s
him that they’d found a copy online, but it was corrode copyright
Arbitration and Mediation Center ruled in favour
a fake.
of Oracle on 4 April.
Removing unjustified geo-blocking must
Newton revealed that GCHQ agents read a page not lead to the abolition of the territoriality Panellist George Souter ruled that the domain
of the copy over the phone to a Bloomsbury of copyright, according to local and regional name orracle.com was registered in bad faith.
editor to confirm its authenticity.
EU representatives.
Oracle accused the registrant on 17 February
GCHQ, or the Government Communications The EU’s Committee of the Regions held a of registering orracle.com in bad faith.
Headquarters, is in charge of the UK’s cyber plenary discussion in Brussels on 8 April,
intelligence efforts.
concluding that the European Commission’s The domain name is confusingly similar
plans for a portability right must be narrow to the Oracle trademark, according to the
The agency would only say in a statement: in nature.
complaint, with the “mere addition” of a
“We don’t comment on our defence against
second ‘r’ to ‘Oracle’.
the dark arts.”
As part of its Digital Single Market strategy,
which aims to modernise EU copyright for Oracle claimed that the registrant has no
Newton went on to describe the lengths the digital age, the European Commission is rights or legitimate interests in the domain
that Bloomsbury had to go to stop The Half consulting on the introduction of a cross-border name, which directed users to a pay-perBlood-Prince from leaking, including going on portability right that would break down member click website and others not associated with
complete security lockdown and fending off state borders, allowing the use of content the software company.
covert attempts to bribe staff to steal copies.
licensed in one jurisdiction in another.
The registrant, who registered orracle.com
FAST and V.i. Labs tackle unintentional Arnoldas Abramavičius, head of the in November 2004, did not reply to Oracle’s
copyright infringement
Lithuanian delegation at the Committee of UDRP complaint.
the Regions, drafted the committee’s opinion
The Federation Against Software Theft on a portability right, which largely supports Souter found that because Oracle’s well-known
and V.i. Labs have teamed up to launch an the portability of online content services trademark was incorporated in its entirety, with
educational campaign aimed at businesses that between EU member states.
no additions beyond a “non-distinctive element
unintentionally use unlicensed software.
and the legally irrelevant .com”, orracle.com
The abolition of geo-blocking should secure was registered in bad faith.
Working with FAST, V.i. Labs aims to raise both flexibility for consumers and the same
the issue of unpaid licences and accidental degree of respect for the creative and “The use of a domain name in connection
copyright infringement.
commercial value of the content, according to with the use of a website with a pay per click
the committee.
facility directing users to third-party websites is
Based on research from Adobe, Disney and
potentially damaging to the trademark owner.”
Microsoft, 83 percent of software ‘pirates’ in “Rights holders need to be sure that portability
markets like the UK are in fact legally inclined covers only the most common examples The domain name was returned to Oracle on
victims of software piracy, according to FAST.
of travel for business, tourism or study 4 April.
6
Conference Preview
Mark Dugdale reports
Bringing intermediaries
to the forefront
Attendees of the IACC Spring Conference in Florida can look forward to a keynote
speech from Alibaba’s Jack Ma, as well as protection and enforcement discussions
The International AntiCounterfeiting Coalition (IACC) is organising
its Spring Conference in Orlando, Florida, in partnership with the
International Chamber of Commerce’s Business Action to Stop
Counterfeiting and Piracy (BASCAP). The theme of this year’s
conference will be rights holders and intermediaries working together
to stop fakes.
“The problem of counterfeiting is too pervasive and complex for
any single company or industry to combat on its own,” explained
Barchiesi. “By bringing intermediaries to the fold, we are offering our
current membership a new way to work with them directly on this
issue while coordinating a collective effort to developing solutions to
global counterfeiting and piracy.”
In that context, Alibaba Group executive chairman Jack Ma has
been confirmed as the conference’s keynote speaker. The Spring
Conference will take place between 18 and 20 May.
He added: “We’re excited that Alibaba, one of our strongest partners,
has joined the IACC and we look forward to their membership as a
further step in enriching our existing dialogue and partnership.”
Ma founded Alibaba in 1999 and the company has gone on to
own the leading ecommerce websites in China. During his keynote
speech at the Spring Conference, Ma will address the importance
of ecommerce and the industry coming together to collectively fight
brand counterfeiting.
Matthew Bassiur, head of global IP enforcement at Alibaba,
commented: “Alibaba is committed to protecting IP rights. In joining
the IACC, a recognised global leader in anti-counterfeiting, we
strengthen our continued efforts in tackling this problem head-on.”
Six sessions over the course of 18 to 20 May at the Spring Conference
will thrust intermediaries into the limelight.
Bob Barchesi, president of the IACC, said: “The Spring Conference
provides a communication channel between different parties to
engage with one another and discuss practical and innovative
solutions to counterfeiting and piracy.”
The last session on 19 May will focus on ecommerce, which the IACC
described in its conference agenda as a “complex, interconnected
network of intermediaries” that delivers “a seamless range of online
services to consumers and businesses”. But this has presented
criminal networks with an enormous opportunity to market, sell and
distribute counterfeit and pirated goods.
Jeff Hardy, director of BASCAP, added: “We are delighted to be
partnering with the IACC on this important event focusing on
how intermediaries and rights holders can work together to stop
counterfeiting and piracy.”
The IACC’s panel will explore some of the intermediaries involved
in the online supply chain, including ecommerce marketplaces,
search engines and other players, and discuss some of the voluntary
programmes being implemented to limit access of illicit traders.
Alibaba was recently confirmed as the first intermediary member of
the IACC.
The IACC, whose membership was previously restricted to brands,
law firms, associations, investigators, product security specialists,
government agencies and universities, will accept intermediaries as
‘general members’.
Attendees of the conference on 20 May will be treated to three
sessions touching on online counterfeiting and piracy, with
panellists on the first considering how the policies and procedures
of search engines and social media are enforced to mitigate illegal
content and products.
“[This] status is reserved for companies that are not directly or
substantially impacted by counterfeiting, but whose industry
position or policies make them a potential partner with the
IACC in its mission to combat counterfeiting and piracy,” the
IACC explained.
The session before lunch will focus on hitting counterfeiters and
pirates in the pocket.
Panellists from credit card companies, brands and law enforcement
will discuss innovative ways they have been able to strike
counterfeiters and pirates, as well as how bad actors have been
able to evade detection, in a bid to underscore the need for brands,
intermediaries and governments alike to keep pace.
The coalition has a strong relationship with China’s Alibaba, so it’s
unsurprising that the ecommerce giant is the first intermediary to
join its ranks as a general member. They signed a memorandum
of understanding in 2013 and jointly launched the MarketSafe
programme in 2014.
Finally, panellists will consider the role internet hosting services,
domain registrars and registries and how they can be employed
to strike those who sell counterfeits and unlicensed content. The
panel will look at the current system and the approaches and best
practices for blocking domain name abuses and seizing existing
illegal and illegitimate sites. IPPro
MarketSafe sees the the IACC and its participating members work
to identify and take down infringing listings on Alibaba ecommerce
platforms Taobao and Tmall via an expedited removal procedure
“that has resulted in a 100 percent take-down rate when companies
stand behind their claims”.
7
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Hungary Insight
A recent trademark decision in Hungary clarified ‘against the public order’ as an
absolute ground for refusal. Dr Judit Lantos and Dr Ildiko Komor Hennel of Sár
and Partners – Danubia Patent & Law Office report on how the case proceeded
The Budapest-Capital Regional Court has recently issued an
interesting decision about a rarely used prohibitive stipulation of
the Trademark Act. Essentially, the court ruled that a trademark
application for the word mark ‘Police’ for certain commercial
services is not against the public order. This decision clearly
interprets the notion of “being against public policy or order” and
draws attention to the importance of procedural questions and
details emerging in a case.
trademark law, in which it is stipulated that trademarks that are
contrary to public policy or accepted principles of morality will not
be registered, as they form an absolute ground for refusal.
The trademark applicant only learned about this unfavourable
development when it received the final refusal from the World
IP Organization (WIPO). In response, the applicant filed a very
detailed appeal against the refusal but in spite of all reasoning and
evidence, HIPO rejected the trademark application.
Police is a prominent luxury brand whose trademark is widely
known and used, primarily for eyewear. An international trademark
application for the word mark ‘Police’ was filed in Hungary in class
35, which covers goods and services such as eyewear and optical
products, perfumery and beauty articles, leather goods, and
clothing and footwear. The international trademark designated
several countries, including Hungary.
The applicant filed an appeal against the unfavorable decision at
the Budapest-Capital Regional Court. In its petition, the applicant
referred to the fact that it did not receive the provisional refusal
from HIPO, as well as it submitted a defence on the merits. The
Budapest-Capital Regional Court did not accept the fact that the
provisional refusal was not received by the applicant and upheld
the decision rejecting the trademark application.
The Hungarian Intellectual Property Office (HIPO) issued a provisional
refusal based on Article 3(1)(a) of the Hungarian Trademark Act,
which states that a mark may not enjoy trademark protection if it
is against the public order. This section fully corresponds to EU
At this stage of the proceeding, the case was transferred to our
offices, Sár and Partners and Danubia Patent & Law Office, from
a competing law firm.
The applicant only learned about this
unfavourable development when it received the
final refusal from WIPO. In response, the applicant
filed a very detailed appeal against the refusal, but
HIPO rejectedthe trademark application
Dr Judit Lantos, Partner, Sár and Partners – Danubia Patent & Law Office
9
Hungary Insight
The applicant also pointed out that ‘police’ is an English word
and not used to describe Hungarian security organisations. The
applicant also referred to the fact that it has received trademark
protection in several countries, including where English is the
official language, and that ‘police’ has also been used in different
contexts, such as in the case of the famous band, Police. Also,
the applicant stated that it has been using the ‘Police’ for a long
time, uncontested, while consumers have become familiar with its
products and brand.
The fact that both the domain name owned by the applicant,
policelifestyle.com, and the domain of the Hungarian state
defence organisation, police.hu, contain ‘Police’ made it very
challenging for the applicant to form a defence strategy against
the public order argument of HIPO.
But the Budapest-Capital Regional Court accepted the
arguments of the applicant and obliged HIPO to register
the trademark. Even though HIPO examined the use of the
designation with regard to being against the public order, the
Budapest-Capital Regional Court made a clear standpoint that
it is the designation itself that should be capable of, per se or
implicitly, being against the public order by its direct meaning
or by way of association.
The case was brought to the Court of Appeal, which accepted
the applicant’s arguments and ordered HIPO to carry out the
examination procedure once again, now in possession of the
reply of the applicant. Key evidence was a declaration from WIPO
that stated that the agency had sent the provisional refusal to
the applicant, but no record existed of the applicant receiving it,
because delivery records were only kept for six months, which
had since elapsed. This was important because the rules stipulate
that the burden of proof lies with the sender in confirming delivery,
rather than the applicant in confirming receipt.
Since the Trademark Act does not provide a definition for the
notion of “public order”, this excluding ground for registration
should be applied in the narrowest possible terms and only if
the mark’s meaning hinders the applicant in a specially reasoned
case to have an exclusive right to have trademark protection for
the designation.
It also has to be taken into account that the designation has
been widely used and has a good reputation. According to the
court, the use of ‘Rendőrség’, the name of Hungary’s civil law
enforcement agency, could be against the public order since it is
generally accepted that one may not use the name of state bodies
for commercial purposes.
The Court of Appeal accepted these arguments and annulled the
decision of HIPO and the first instance Budapest-Capital Regional
Court. The case was sent back to HIPO for re-examination. But in
its new decision, HIPO again established the existence of being
against the public order and rejected the trademark application.
But in this case, ‘Police’ is not the same as ‘Rendőrség’. The court
also took the fact into consideration that if in other countries,
especially where the name of the state defence body is the same
as the designation, the designation is not considered against the
public order, this cannot be otherwise in Hungary.
HIPO did not accept several arguments to the contrary, including
that the same trademark was registered in several countries,
it enjoys a good reputation and has been intensively used for
decades. According to HIPO, the question of good reputation has
no relevance when deciding the question of public order.
As this absolute ground of refusal was dismissed, HIPO continued
the registration procedure of the trademark and issued its final
statement granting protection. IPPro
On appeal, the applicant drew the attention of the court to the
difference between its activities and those of the Hungarian police.
Since the Trademark Act does
not provide a definition for the notion of
“public order”, this excluding ground for registration
should be applied in the narrowest possible
terms, according to the court
Dr Ildiko Komor Hennel, Partner, Sár and Partners – Danubia Patent & Law Office
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IACC 2016 Annual Spring Conference
INTA 2016 Annual Meeting
Location: Florida
Date: 18-20 May 2016
www.iacc.org
Location: Florida
Date: 21-25 May 2016
www.inta.org
Join 550+ of the world’s top brands, government and enforcement
officials, intermediaries and service firms who will be in attendance
at this year’s IACC 2016 Annual Spring Conference. The focus will
be on intermediaries and the actions that they and rights holders
can collectively take to address counterfeiting and piracy
More than 9,500 brand management, trademark and other IP
professionals from all over the world attend INTA’s 2016 Annual
Meeting, which will host 300 customised educational offerings and
30 official networking events.
For more events visit www.ipprotheinternet.com/events/events.php
People Moves
Comings and goings at Procopio, Mayer
Brown, Corrs Chambers and more
Procopio has added internet and domain name lawyer Marina
Lewis as senior counsel to its office in San Diego.
She has patent, trademark, copyright and trade secret experience
across a range of technologies, including communications,
software and electronics and devices.
Editor: Mark Dugdale
[email protected]
+44 (0)203 750 6022
Lewis is serving a three-year term as the American Bar Association
representative on the IP constituency to the Internet Corporation
for Assigned Names and Numbers.
Deputy Editor: Stephanie Palmer
[email protected]
+44 (0)203 750 6019
Tom Turner, managing partner at Procopio, said: “We are thrilled to
have Lewis join our growing IP practice.”
“Lewis’s deep knowledge of domain and internet law is a perfect
complement to our IP counseling and IP litigation teams.”
Reporter: Tammy Facey
[email protected]
+44 (0)203 750 6017
Mayer Brown has recruited Sarah Deutsch as counsel in
Washington DC.
Contributors: Becky Butcher and Drew Nicol
[email protected]
She previously spent 23 years at Verizon where she managed
the company’s global intellectual property practice and team
responsible for copyright, trademarks, domain name enforcement
and portfolio management.
Marketing Director: Steven Lafferty
[email protected]
Designer: John Savage
[email protected]
+44 (0)203 750 6021
Deutsch also has experience in counselling, IP prosecution
and enforcement, online liability and cyber security and
related advocacy.
Associate Publisher: Carlos Northon
[email protected]
+44 (0)203 750 6023
Prior to working at Verizon, Deutsch was chief property counsel for
Bell Atlantic.
Publisher: Justin Lawson
[email protected]
+44 (0)203 750 6019
Corrs Chambers Westgarth has hired Jonathan Lawe Davies as
special counsel.
Account Manager: Clinton Hanson
[email protected]
+44 (0)203 750 6025
Davies previously ran his own IP boutique, Iperative.
He has also worked as corporate counsel at Amazon and general
counsel for technology company Ipernica.
Recruitment Manager: Chris Lafferty
[email protected]
+44 (0)208 663 9624
John Denton, CEO of Corrs Chambers Westgarth, said: “Davies’s
extensive IP experience will allow us to support our growing base
of start-up and well-established technology commercialisation
clients in western Australia.”
Office Manager: Chelsea Bowles
[email protected]
+44 (0)203 750 6020
McGlinchey Stafford has added Brian Koide as partner in its IP
team in Washington DC.
Office fax: +44 (0)20 8711 5985
Koide has served as lead and co-lead counsel for numerous patent
infringement disputes throughout his 20-year career.
Published by Black Knight Media Ltd
Stay connected with IPPro The Internet on Twitter,
Facebook and LinkedIn
He has litigated a wide range of technologies, including
smartphones, mobile apps and graphic user interfaces, representing
patent holders and accused infringers in patent infringement cases.
Published by Black Knight Media Ltd
Andrew Patty, co-chair of McGlinchey Stafford’s IP group, said:
“Koide is an outstanding IP attorney and litigator. He is a great
asset for our thriving Washington DC business and a top-level
resource for our clients.” IPPro
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