Newsletter May 2021

None of the drivers on the podium was from Scuderia Ferrari, nonetheless, and the Ferrari trademark I’m mentioning, has nothing to do with the famous red cars, Enzo Ferrari or motor racing…or does it?

Earlier this year, Formula 1 signed a sponsorship deal with Ferrari[1], but not the Ferrari one would first think of in this context. This Ferrari or “Ferrari Trento” is a leading and very old wine trademark in Italy and other parts in the globe; the Ferrari trademark for wines was already there, decades before the first Ferrari car was even designed. In that regard, Ferrari Trento’s deal with Formula 1 looks to deliver a powerful statement on the quality of Italian sparkling wine as a premium beverage in a field in which French champagne has long been exclusively used as the elixir reserved for the fastest drivers on Earth: The ones on the Formula 1 podium.

Thus, when watching the live transmission from Imola, we had two Ferraris competing for light pixels in our screens, but oddly enough, they were different Ferraris and only one was a car.

Can this be problematic? From a trademark law point of view, the case seems quite straightforward: both Ferrari for wines and Ferrari for cars are registered trademarks, both are very well-known -at least in Italy- in their respective fields, and therefore -according to standard parameters in trademark litigation- there should be no chance of even insinuating infringement. But what about the average consumer? What about the viewers in countries in which Ferrari Trento is not sold or has ever been sold? Is it odd to think that, when watching an event taking place in Italy, during the celebrations that occurred after the Emilia Romagna Grand Prix, at no less than the Enzo & Dino Ferrari circuit -the circuit that honors Ferrari’s founder-, and in the context of the Formula 1 world championship -in which the most famous and oldest brand competing is Ferrari-, the name displayed in the bottles or the carpet had something to do with the car manufacturer? Without prior knowledge of the other Ferrari trademark, it seems obvious.

Further, what would happen if either Ferrari trademark were not registered in a certain country? Would these previously described events help the other Ferrari registered trademark in an opposition litigation arguing that sparkling wines and cars are two somehow related or connected categories of products and that an average consumer may believe both are developed by the same producer?

Inspired by the Paris Convention, Chilean trademark law provides the tools for challenging applications filed for trademarks that are similar or identical, even if they were filed for different and unrelated products as long as: (i) they have some type of connection to the goods distinguished by the other well-known trademark; and (ii) it is likely that the applied for protection will harm the interests of the holder of the well-known registered trademark. Therefore, with events like the one that that took place this year in Imola, could Ferrari -the car manufacturer- potentially argue such type of connection with sparkling wine and a potential harm in its interests with an identical trademark registered for sparkling wine considering that driving and drinking do not mix well? At least in Chile, we will never know, since both trademarks have been long registered, but a question remains on the suitability of legal provisions that extend the spectrum of protection of very well-known trademarks beyond its products or strictly related products.

Another avenue for looking into this is trademark dilution. This new sponsorship deal means that the Ferrari name will be on the podium of every race regardless of the pecking order after the checkered flag, but not in the way the car manufacturer probably would have hoped. With the Ferrari name being associated with victory and winning by new and different means and products, the enchantment and appeal of the other Ferrari may be eroded. Now the Ferrari name will have even more space in the racing world, but not exclusively related to one manufacturer, not unequivocally distinguishable.

For some, one Ferrari blocking, diluting or leading to confusion with regards to the other Ferrari would seem irrational considering the size of both trademarks and that they are clearly two very different products, but in an increasingly interconnected world, when this type of vague connection arises or can be fabricated out of the most unexpected events, we could potentially have, in the blink of an eye, two very well-known trademarks facing each other, racing to court, and presenting a case that seems illusory in theory, but that reality has made quite possible. It is all fiction and conjectures at the time being, but one thing is clear: there was a lot of Ferrari on that podium, but none of it was red.

[1] https://www.motorsport.com/f1/news/f1-podium-sparkling-wine-ferrari-trento/5545176/

In the object and reasons for the introduction of the provisions relating to the setting up of an Appellate Board it was stated that it is being set up “for speedy disposals of appeals and rectification application which at present lies before High courts.”  Interestingly, reasons for switchover from IPAB to High court remains the same that is “for quick speedy disposal of appeals”. More precisely, the statement of objects and reasons of the Ordinance states that “the tribunals that were proposed to be abolished by the Ordinance are of the kind which handle cases in which public at large is not a litigant or those which neither take away any significant workload from High Courts nor provide speedy disposal. Many cases do not achieve finality at the level of tribunals and are litigated further till High Courts and Supreme Court, especially those with significant implications. Therefore, these tribunals only add to another additional layer of litigation.” This happens in all the tribunals which were created to share the work originally assigned under the constitution to the High Courts.

What prompted the Government for specifically targeting IPAB and subject it to undergo this switchover would go unanswered for want of parliament debate on this bill. However, unceremonious winding up of the functioning of IPAB though an urgent ordinance route does raise many eyebrows in IP fraternity in India. Truly, IP users were benefited during the last two decade or so, as many landmark and path breaking judgements were delivered by IPAB, which not only helped various IP users but also hastened the process of speedy delivery of justice in IP related matters.

IPAB was constituted on September 15, 2003 inter alia to hear appeals against the decisions of the Registrar under the Trademarks Act, 1999 and the Geographical Indications of Goods (Registration and Protection) Act, 1999. The jurisdiction of IPAB was later extended under the provisions of the Patents Act, 1970 in 2007 and under the provisions of Copy Right Act, 1957 in 2017. It is interesting to note that appeals in IPR cases were vested with High Court before this Board was created. As such, the proposal to abolish IPAB would amount to restoring the status quo and all the cases pending with IPAB would now be transferred to the Original and Appeal jurisdiction of the High Courts. If Creation of IPAB was a conscious decision to bring the best experts in the field of IPRs as technical members who would be helpful in adjudicating the technical and complicated scientific matters, particularly patent appeal cases while teaming up with experienced High Court judges, its dissolution is a move in haste leaving the working patent and trademarks agents and attorneys in fix. Most of these Advocates normally do not practice in High Courts and will they be allowed to continue as an advocate on record only the rules framed by respective High court would tell?  However, If the rules framed by Calcutta high court in respect of appeals under the old act [ High court order dated 15th September 1952] to be believed still applicable than

“22. Attorneys and advocates not entitled to practices on the original side, shall be entitled to act in such appeals, such advocates shall be entitled also to plead, but Advocates entitled to practice on the original side shall not be entitled to act.”

In any other situation where such rules are not framed by other high courts it would certainly create a situation where the patents agents would have to inform their existing clients to search for new Advocate to present their case and incur additional cost.

This hasty decision of the Government to disband the Intellection Property Appellate Board is step backward which would create an element of doubt in the minds of the new patent applicants like small entities such start up, SMEs and women inventors. Most of these applications are based on the new and complex technology which always come under the minute scrutiny of the patent office and face refusal orders. Approaching a court of law would require hiring an Advocate who practice before that high court. It may be difficult for patent attorney (facilitator) who helped the applicant to file the application at first place to take up his case if he is not practicing in the high court. Hiring a new advocate would be like reinventing the wheel for the applicant as  he has to start from the scratch to brief the new advocate who may not have a scientific background and hiring an advocate with scientific background would be quite expensive. Chances are that the financially starved invention of stratus, SMES and women invention whom government on one hand profess to promote may shy away from filing appeals in the courts for want of huge cost involved . Similarly, disbanding of IPAB, may result in grant of bad patent as an interested person, who does not have commercial interests but with only public interests, would avoid taking the tedious expensive and time-consuming route through a court. Unceremonious demise of Intellectual Property Tribunal may serve well to those who feels that let the bad patent stay in the patent register and a good patent remain outside the patent cover.

It is worth adding a few remarks about the role of IPAB in the Indian patent System in last two decades. All the judges who held the post of Chairman were experienced retired Judges of the high court and so were the technical members. Undoubtedly, they have performed their assigned function judicially with help of the experienced technical members. A cantina of jurisprudence left by the decisions of IPAB is a clear reminder to those who kept on clamouring for the independence of the IP tribunal. On the other hand Judges who would now get to resolve IP Disputes or Appeals would be a part of the general judicial system who play an active role in deciding non-IPR cases. In court of Appeal most of the  judges’ time is spent on cases unrelated to IPR. In United Kingdom  from where Indian patent System owes its existence, for example, this anomaly has been resolved by hiring the specialised Judges for adjudicating patent matters  post 1977 Patent Act amendment.

“Section 96 (1) There shall be constituted, as part of the Chancery Division of the High Court, a Patents Court to take such proceedings relating to patents and other matters as may be prescribed by rules of court.

(2)The judges of the Patents Court shall be such of the puisne judges of the High Court as the Lord Chancellor may from time to time nominate.”

It is pertinent to note that though all the judges of the High Court have formal jurisdiction in patent cases but  in practice only the High Court’s patent specialists, the judges of the Patents Court, adjudicate these cases. This provision still applies today and working well in UK. It should also be noted that patent judges are selected from patent law practitioners with extensive experience and are not career judges, a usual practice in common law systems. This method produces better judges: a gamekeeper would likely to be better at his or her job if he or she were first a poacher. Interestingly, two main judges, Judge Floyd and Judge Arnold, both of whom possessed degrees in science and experience practicing patent law before their appointment in the Patent Court of the high court.

Those who feel that tribunals only add to another additional layer of litigation are wrong in their understanding the basic concept of a tribunal. IP Litigants also deserves to be treated with equity and at par with other common law litigants. Since right in IP particularly Patents is perishable more care and caution in adjudication is desirable. Just ping pong of IP cases from high courts to IPAB and back to of high courts clearly demonstrate that IP litigation is an orphan child of common law and Government is making stop gap arrangements to deal with such cases. If standing of a wrong patent/trademark monopoly is harmful, then the denial of a good patent/trademarks is equally harmful to the economy, industry, innovation, and the public at large. Without looking into the pros and cons of specialised courts it is worth to give it a chance to settle this imbroglio on patent dispute resolution mechanism in India once for all. However, if this move is not connected to such policy objectives, then the U-turn by the Government would be a step backward as it will take some time for the commercial courts to adjudicate on the specialised appeal /revocation / rectification matters under patents, trademarks and copyright law.

Oracle originally sued Google for copyright infringement, asserting Google copied elements of Oracle’s Java code pertaining to an API. Google argued it only copied what was necessary (the API) to permit interoperability of its software (Android) with mobile apps. APIs allow programmers to use prewritten code to build certain functions into their own programs without having to write new code to perform those same functions. The district court found Google infringed Oracle’s copyright, and that Google’s use did not qualify as a fair use. Ultimately, Google appealed to the U.S. Supreme Court.

In rendering its decision, the U.S. Supreme Court determined Google’s limited copying of the API to be a fair use, as including the API in Google’s Android software was necessary to support interoperability with apps created by developers. Moreover, Java was intended to be used with desktops and laptops, while Android was developed for use with smartphones. It is also recognized Java and Android operated in fundamentally different ways. The Court also focused not on the amount of code copied, but rather whether the code copied was the heart of the work’s creative expression. In this case, it was determined the API portion copied by Google was not the heart of Java’s creative expression. In weighing the factors, the Court determined Google’s implementation and adaptation in creating Android transformative, resulting in fair use.

The revisions are as follows.

1. Developing new procedures (e.g., digitalized procedures) to address the expansion of the COVID-19 pandemic
(1) The revised act introduces a system that allows the parties concerned to conduct oral hearings, etc., using the web conference system without appearing in the appeal court at the discretion of the chief appeal examiner.
(2) The revised act is to allow users to pay patent fees, etc., using bank transfers in advance (abolishment of advance payment by revenue stamps) or using credit card payments at the counter.
(3) The revised act is to simplify the procedures for informing applicants of the decisions on registration of their designs or trademarks filed as international applications (e.g., allowing the JPO to electronically send such notifications via the International Bureau instead of sending the applicants by postal mail which may stop in response to the expansion of the COVID-19 pandemic).
(4) The revised act is to stipulate a new rule for the exemption of patent surcharges during a predetermined period, targeting right holders who, due to the COVID-19 pandemic, natural disasters, or other similar reasons, have failed to meet the due date for the payment of patent fees.

2. Reviewing the protection of rights to address changes in corporate activities due to the advancement of digitalization, etc.
(1) In response to the increasing importation of counterfeit goods for personal use, the revised act is to recognize an act of bringing counterfeit products into Japan via postal mail, etc. by overseas businesses as an infringement of trademark rights.
(2) In response to the increasing complexity of patent license forms due to the advancement of digital technologies, the revised act is to remove the requirement for licensers to obtain the consent of the non-exclusive licensee when patent rights are corrected.
(3) The revised act is to relax the conditions on which right holders are allowed to restore their patent and other rights which have been forfeited due to the expiration of the timeframe for required procedures (patent, utility model, design and trademark). The previous condition "justifiable reason" for restoration of patents rights, etc. is to be relaxed to "unintentional".

3. Strengthening the foundation of the intellectual property systems
(1) In litigation involving patent right infringement, the revised act is to introduce a new system that allows courts to broadly call for opinions from third parties and to allow patent attorneys to provide consultation services under the system.
(2) In order to address the growing burden on examinations and digitalized procedures, the maximum amount of patent fees, trademark registration fees, trademark renewal fees and PCT search fees will be raised from the current level. The specific amount will be stipulated by the ordinance of the Cabinet.
(3) The revised act is to add consultation and other services on intellectual property rights related to new plant varieties and geographical indications to the scope of the businesses that patent attorneys are permitted to conduct. The revised act is also to take measures such as changing the name of the patent professional corporation and introducing a single-patent-attorney-corporation system.

As way of background, Mr. Thaler filed a patent application naming as the inventor the AI “DABUS.” The USPTO issued a Notice stating that the application was incomplete for failing to name the inventor(s). Mr. Thaler filed several petitions with the USPTO requesting that the AI be named as the inventor. In response to the petitions the USPTO held that an inventor must be a natural person, conception of an invention must be by a natural person and “U.S. patent law does not permit a machine to be named as the inventor in a patent application.”

Mr. Thaler sued the USPTO on August 6, 2020 in the US district court and earlier this year both parties filed motions for summary judgement. While there is no decision from the hearing, the comments from Judge Leonie Brinkema during the hearing suggested that the ability to name an AI as an inventor would require a change in the laws by the US Congress because the laws require that an inventor be an “individual.” Judge Brinkema stated, “I think you’ve got a huge uphill battle…because the statutory language is so crystal clear” and that Mr. Thaler was asking the court to legislate by holding that an AI could be an inventor on a US patent application.

The group organized its first webinar on April 16^th, an “Aperitivo di proprietà industriale” (IP’s Happy Hour) entitled “Vino, birra e IP: tra vecchie problematiche e nuove prospettive” (Wine, beer and IP: between old problems and new perspectives), a sparkly way to discuss some issues related to IP aspects of the commercialization of alcoholic products.

The discussion was lead by Lorenzo Micacchi, who provided a brief history of wine and beer recalling the most significant inventions, discoveries and IP-related events that characterize the wine and beer industries. Since the domestication of the grapevine in the Neolithic era, this industry has shown a continuous and solid tie with IP.

The first topic was about trademarks used for wines and beers, with a special focus on de facto trademarks and distinctiveness.

Valentina Malerba told us how, in recent years, the wine sector has significantly grown, with increasing attention focused on the "image" of the product and therefore on IP rights. Nevertheless, this figure has to be read in light of the historic features of the sector, characterized by family companies (and a large use of patronymics) for a long time. These considerations allow us to understand the Italian and EU case-law approach to some traditional IP issues in the wine sector. Alessandro Bura focused his attention on the beer sector instead. As happened in the wine sector, demand for beer has recently increased, following increased availability through large-scale distribution of craft brewery products. It follows that consumers are much more demanding and thus their attention when purchasing the product should be considered more than average. This has an impact on the assessment of trademarks’ distinctive character when approaching their validity or their infringement. When it comes to the indication of origin, EUIPO’s and Italian Courts’ decisions do not reach consistent results even amongst the same Division or Court.

The second topic was about the online commercialization of alcoholic products. Valeria Giugliano explained us that, as for all product categories, also for alcoholic beverages there has been a very important development of online trade in recent years. With regard to the Italian B2C e-commerce of wine, some peculiarities can be highlighted: the possible need for geoblocking outside the country, the possibility of setting up a selective distribution for high quality wines (as luxury products), the rules on warranty and return to apply (e.g. when wine tastes corked). It is also worth mentioning the need to protect minors and to technically prevent them from buying alcoholic products over the internet according to national law. Chiara Pappalardo, at the end, focused on the advertising of alcoholic products, recalling the norms stated by Italian Institute for Advertising Self-Regulation since 1975, providing some examples of incorrect commercials. Then she examined how those norms are applied to online marketing, with the cooperation of the online commercial platforms, and specifically to influencer marketing.

This first initiative could be summarized as a nice kickoff to foster the active involvement of young members in the Italian group activities.

Ms. Jingya Chen, Deputy Director of the Intellectual Property Study and Service Center of Zhejiang Province, and Mr. Richard Yi Li, Secretary General of AIPPI China, delivered speeches at the opening of the event, which was moderated by Maggie Mi, Co-Chair of the Trademark Committee of AIPPI China.

Besides speakers from the Group, we also had invited guest speakers from SPC, the Supreme People’s Court, CNIPA, the China National Intellectual Property Administration, the People’s Court of Yuhang District of Hangzhou, the Institute of Law of the China Academy of Social Sciences, the Alibaba Group, COFCO Corporation, and Baidu. The seminar was divided into two sessions. The first session focused on “Non-use cancellation against a registered trademark under the new forms of the internet industry”, and the second session was centered on “Trademark protection on the internet-related goods/services under the new forms of the internet industry”.

Mr. Yongjian Lei, a member of the Trademark Committee of AIPPI China presided over the Seminar. Ms. Wei Zhou, another member of the Committee, presented her views from the perspective of a trademark attorney. The Committee Co-Chair Mr. Yakai Shi and other committee members Ms.Chengyan Zhao, Ms. Xuefang Huang, Mr. Qiang Ma, and Ms. Rachel Zhang contributed a lot to the success of this event.

The three groups are used to organizing trilateral meetings every two years with a place of gathering rotating between the three members. The goal of such meetings is to have a comparative approach in French, German and Polish IP laws on given topics. We had to maintain the tradition virtually this year, waiting for the next event that will be held in Munich, Germany in 2022!

The German-Polish trilateral meeting is not the only one where AIPPI France takes part. AIPPI France is currently working with the Italian and Spanish groups to hold a trilateral meeting together. Stay tuned for this next event.