Caterina Rota

Short & crisp case on interplay between remedies available to opponents in patent cases. Pre-grant Opp filer went to writ & Appeal Court has given its reasoning on why this is incorrect. https://lnkd.in/dQ5D7tSQ

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It's Friday, so let's talk about Big Macs. As you may have heard, McDonald's has been involved in a trademark dispute in the EU regarding its BIG MAC trademark. Contrary to what you have heard in the press, though, the recent decision in that dispute does not mean that others are free to use BIG MAC in the EU. When an Irish fast-food chain named Supermac's applied to register its SUPERMAC'S mark in the EU, McDonald's objected on the ground that the name was too close to its BIG MAC mark. In response, Supermac's sought to cancel McDonald's EU trademark registration for BIG MAC for certain goods (mostly relating to chicken and to restaurant services), but not for burgers, on the ground that BIG MAC was not used with those specific items. The EU Intellectual Property Office ruled in favor of Supermac's. McDonald's appealed, and that decision was reversed, so Supermac's appealed to the EU General Court, which ultimately ruled in favor of Supermac's. According to the General Court, McDonald's had not come forward with sufficient evidence to show that BIG MAC had been used in connection with "chicken sandwiches," ‘"foods prepared from poultry products" and "services rendered or associated with operating restaurants and other establishments or facilities engaged in providing food and drink prepared for consumption and for drive-through facilities; preparation of carry-out foods". It should be noted that the EU is known for being very particular in terms of what it will accept as evidence of use in this context (if you look at the decision you will see that the General Court was critical of the evidence McDonald's submitted). This should clear the way for Supermac's to get its registration, but I suppose that McDonald's could sue for infringement of its BIG MAC mark. I'm not sure that such a claim would succeed. Does the decision mean that someone else can use the term BIG MAC for a chicken sandwich or a restaurant in the EU? I don't see how, since to me there is still a possibility of consumer confusion or unfair competition in those cases. And perhaps McDonald's can reapply to register the mark (they might even have an application already pending), so long as they are making use of it. Of course, I'm not an expert on EU law, so if I goofed up here and any of my European friends want to correct me, go right ahead. #IntellectualProperty #IP #trademarks #trademarkmaintenance #food #euipo #BusinessLaw #LegalInsights #OffitKurman https://lnkd.in/eUYj7tQW

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Thinking about how broadly this could be interpreted for website operators beyond the newsletter- specific scenario: consumers signing up for marketing emails? free loyalty programs? creating an account (often resulting in being opted-in to emails)?

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There can be few other commercial law practices in Scotland as collectively streetwise and knowledgeable as the Brodies bunch. I'm (genuinely!) looking forward to reading this in detail, and have already signed up to the Data Protection update.

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More new content to highlight for Lexis+ Competition - we are very happy to publish two new practice notes, written in partnership with Denis Fosselard and Fiona Garside at Ashurst, in relation to: 1. The EU Research and Development Block Exemption; and 2. The EU Specialisation Block Exemption These practice notes explain the key provisions of the block exemptions and should provide a useful reference tool for competition and commercial lawyers alike when dealing with these types of agreements. Links below (subscription required): The EU Research and Development Block Exemption 2023/1066: https://lnkd.in/ey9X6TE6 The EU Specialisation Block Exemption 2023/1067: https://lnkd.in/efJrbkfJ #competitionlaw #antitrust #blockexemptions #EUlaw #lexisnexis

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𝐓𝐡𝐞 𝐄𝐔 𝐓𝐫𝐚𝐝𝐞𝐦𝐚𝐫𝐤 𝐬𝐞𝐜𝐫𝐞𝐭 𝐧𝐨 𝐨𝐧𝐞 𝐢𝐬 𝐭𝐚𝐥𝐤𝐢𝐧𝐠 𝐚𝐛𝐨𝐮𝐭… Let’s say you’ve gone through the hoops of applying for an EU trademark. All’s well until one stubborn member state says, "Nope, not here!" And suddenly, your dream of EU-wide trademark protection feels like it’s slipping away. 𝐁𝐮𝐭 𝐡𝐞𝐫𝐞’𝐬 𝐭𝐡𝐞 𝐬𝐞𝐜𝐫𝐞𝐭: You don’t have to throw in the towel. Enter the 𝑪𝒐𝒏𝒗𝒆𝒓𝒔𝒊𝒐𝒏 𝑷𝒓𝒐𝒄𝒆𝒅𝒖𝒓𝒆 - a handy little tool that lets you convert your EU application into national trademarks for countries that don’t have a problem with your mark. And the best part? You keep your original filing date. Think of it as saying, “Okay, you won’t have me, but I’ll thrive elsewhere!” Yes, it’s a bit of paperwork (and a small fee), but it could be the difference between losing protection altogether and securing it in countries that are still open for business. It’s a lifesaver when your EU-wide plan hits a bump. Want to dive deeper? Here’s a link to the full process for those who like the details - https://lnkd.in/d_cp7SdM Sometimes, it's not about how many countries you lose, but how many you keep. 😉 #BusinessTips #EUTM #TrademarkLaw #EUIPO #LegalStrategy #IntellectualProperty

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The Biggest UK Trademark Rulings Of 2024 So Far Intellectual property lawyers have already received two major decisions from the U.K.'s top court in notable trademark claims in 2024. But guidance from lower courts has also proved crucial for those involved in both contentious and non-contentious trademark matters. In one key case, the U.K. Supreme Court erected additional barriers for listing directors of a company as jointly liable for their businesses' infringement — a common practice in recent IP disputes. Meanwhile, an appellate court backed the finding that Tesco had infringed the TMs of Lidl GB with its Clubcard branding, while criticizing the importance placed by the lower court's judge on the evidence to support the finding. Law360 UK looks at some of the biggest trademark rulings of the year so far in the U.K. - Lifestyle Equities CV And Another v. Amazon UK Services Ltd. - Lifestyle Equities CV and Another v. Ahmed and Another - Lidl GB Great Britain Ltd. and Another v. Tesco Stores Ltd. and Another - Virgin Aviation TM Ltd. and Another v. Alaska Airlines Inc. To read the full article, published exclusively on Law360 UK please connect with me for an initial consultation.

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2023 marked the dawn of generative AI's creative revolution, raising new questions about copyright ownership in a world where computers are not just tools but creators. In this article, originally published in the European Intellectual Property Review, Neville Cordell, Beverley Potts and Robert Dickens examine the question of who owns U.K. copyright in AI-generated content. Read the full article here: https://lnkd.in/eAw62dUt

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2023 marked the dawn of generative AI's creative revolution, raising new questions about copyright ownership in a world where computers are not just tools but creators. In this article, originally published in the European Intellectual Property Review, Neville Cordell, Beverley Potts and Robert Dickens examine the question of who owns U.K. copyright in AI-generated content. Read the full article here: https://lnkd.in/eymgEbkY

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Happy IP DAY 2024! If you read this post, the IP DAY 2024 already was a success as with you another person has spent at least some time thinking about intellectual property. IP is everywhere around you - from your most beloved brand protected by trademarks, through designs on maybe it’s packagings protected as registered designs, texts or graphics protected by copyright, inventions protected as patents, business secrets, … and that is just a little glimpse of what can be protected as intellectual property. Make sure to talk to the IP experts of your legal department to learn more about how they can help your company to support growth by protecting the company’s assets, develop new valuable assets (such as trademarks for new brands and products) but also help avoid infringing third party rights for smooth sailing.

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Really interested to see that Mumsnet is taking legal action against OpenAI for copyright infringement as a result of data scraping. I don't claim to be an IP specialist but I am really interested in bias in AI. Mumsnet (for the uninitiated) is an amazing resource of (mainly) women's thoughts, words and perspectives and it would be wonderful if developing technology could harness that - but, as ever with women's work, unless it's properly valued and paid for, inequality and bias will simply be perpetuated. I would love to see ChatGPT answer questions in the style of the Mumsnet message boards: a mixture of baffling acronyms, no-nonsense feminism, paeans to natural fibres and imaginative uses for beakers (if you know, you know). It will be fascinating to see how this case develops. #AI #tech #genderbias https://lnkd.in/ejz_DDAu

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In an interesting development in the world of AI, World Trademark Review Daily reports that researchers at Imperial College London have found that “copyright traps” (i.e., invisible repeated sentences included in written material) can be used to determine whether copyrighted material has been processed to train large language models. The sentences are composed of randomly generated sequences of non-sensical words which are then included in invisible ways in the works such as by being written as white text on a white background. See https://lnkd.in/gZYuGMSe. #AI #copyrightlaw

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Some #toptips from me that I shared with World IP Review - what timings apply in an #IP #dispute, whether you're raising it or replying 💡 👇👇👇👇 #IPrights #disputeresolution #litigation WIPR - World IP Review

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AI Act's IP Scraping Exemptions Leave Lawyers In The Dark The European Union's first-of-its-kind artificial intelligence legislation enshrines text- and data-mining protections for rights holders who want to ensure their work is not used to train AI models — but experts say it is still unclear how the process will work. Crucially for intellectual property lawyers, the EU AI Act extends protections from the Copyright in the Digital Single Market, or CDSM Directive, to data scraping from generative AI models. But how copyright holders flag their digital works to be excluded from generative AI scraping is not set in stone, and will likely need to be clarified by EU courts, experts say. "Currently, there is no generally recognized market standard of what qualifies as such 'machine-readable means.' This arguably leads to legal uncertainty," Clemens Molle, an IP associate at Bird & Bird LLP, said. To read how MLex and Law360 UK are reporting on #AI regulation changes, please connect with me for an initial consultation. #DigitalSingleMarket #CDSMDirective #DataScraping Phone: 07552 882 850 Email: [email protected]

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It's always great to see IP on the cover of the Law Society Gazette - and, better yet, over half the article is about 🔥 AI and IP 🔥. I had the opportunity to share some thoughts on the future of TDM in the UK, including that: ▶️ At Human Native AI, we're hearing from stakeholders that they expect the UK to seek compatibility with the EU's approach of commercial TDM + opt out + transparency. ▶️ If so, the UK should announce this as soon as possible to allow stakeholders to move their focus onto how opt outs and transparency can be made to work in practice. ▶️ The EU's AI Office is working on that now ... so this is an opportunity for interoperability to reduce friction for the AI ecosystem across the UK and EU. Many thanks to Joanna Goodman for another excellent piece: https://lnkd.in/eXTNR-6n

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Patent royalty dispute is business dispute

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📢 The SRA just released the statistical report for the July 2024 SQE1 sitting, revealing a concerning trend - only 44% of candidates passed, the lowest pass rate in the exam's history. This drop is significant when we compare it to the usual pass rate of 50-55%. It's a wake-up call for all in the legal industry and beyond, indicating potential challenges in training and preparation. The cost of re sitting the SQE exams are significant for both candidates if going it alone or for employers if putting candidates through apprenticeships and other routes to qualifying. Training providers have already expressed concern about the cost and how this will be managed going forward. As a recruiter at Thornton Legal, our primary focus is on ensuring that our candidates are well-prepared and supported. If you're an aspiring solicitor looking to navigate these tough times, let's connect and discuss how we can help you succeed. What's your take on this? Let's discuss in the comments or reach out directly. www.thorntonlegal.co.uk #legal #SQE #recruitment

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Remote Licensing Act 2003 hearings are... 💥💥 LAWFUL 💥💥 Why? Because the High Court said so [mic drop] 🎤 I am not surprised by this outcome and it is common sense that remote hearings should be permissible 👏🏻 The bigger question ❓ (for me) is whether remote hearings are the correct way to proceed in the context of a particular case. There are good arguments for and against 😃😤 In my opinion, remote hearings are useful and have their place. There are some cases (and let's face it, if you've been around licensing long enough, you've had 'em) however, where I do not think they are suitable and they do not assist good decision making 👎🏻 For my part, I hope that Licensing Authorities look at the circumstances of a particular case and take into account the views of the parties when deciding whether to hear matters remotely, in-person, or in a hybrid format 🙏🏻 #licensing #remotehearings

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For those aficionadas and aficionados of the Unified Patent Court who have missed its latest caseload.👇 Here are some key figures: ⚖️ We are now at 447 cases since 1 June 2023, there is an uptick of 36 cases since the 411 cases reported at the end of June. This corresponds to an increase of 8.8%, which is a slightly lower increase than last month (10.2%). ⚖️ Compared to the 155 infringement actions reported at the end of June, we now have 15 more with the total being at 170 infringement actions, which corresponds to an increase of 9.7%. The increase is lower than last month (15.7%). ⚖️ The Munich Local Division is still leading the pack with now 67 infringement actions, followed by the Düsseldorf (36, four more than last month) and Mannheim (24, two more than last month) Local Divisions. ⚖️ English has become the slightly predominant language of proceedings at the Court of First Instance the fourth month in a row. Shakespeare's language and the de facto official language of former UPC Member State UK has extended its lead with 51% compared to the 43% of proceedings with German as language of proceedings. -------------------------------------------------------------------------------- Presiding judge Dr. Matthias Zigann from the first panel of the Local Division Munich, Tobias Wuttke (BARDEHLE PAGENBERG) and Thorsten Bausch (HOFFMANN EITLE) are going to discuss the next batch of UPC decisions at the next UPC Fireside Chat on 14 November 2024 (further information: https://lnkd.in/edGifWxH). #patent #patents #patentattorney #patentlitigation #unifiedpatentcourt #ipknowledgeenhancer

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