This week in IP: Carmakers drive TM filings, Germany rejects IP waiver, Markle beats Mail on Sunday

Renowned car brands such as Daimler and Volkswagen have proven to be steady filers of EU trademarks in Germany over the past five years, Managing IP revealed this week.

In-house counsel at VW and Daimler say their trademark portfolios are increasingly taking account of electric vehicles, as well as new traditional vehicle launches.

“Over the next five years, VW will spend around €73 billion ($88 billion) on electric mobility, hybridisation and digital technology,” an industry source at VW told Managing IP.

“This transformation is also reflected in our trademark strategy and results in an ongoing high number of trademark applications in the EU,” he adds.

Click here to read our report on German trademark filings for more information.

US backs COVID-19 IP waiver

South California judge Bencivengo reveals post-COVID plans

In-house share career tips to stop counsel ‘getting pigeonholed’

How bundling patents with other benefits can seal licensing deals

BASF targets Carpmaels in €1bn row over missed patent deadline

The German government yesterday rejected the US-backed proposal to waive all intellectual property rights to COVID vaccines.

A government spokesperson said in a statement to multiple media outlets that the limiting factors in the production of vaccines were the production capacities and high-quality standards, not patents.

She added that the US suggestion to waive patent protection for COVID vaccines had significant implications for vaccine production as a whole.

“The protection of intellectual property is a source of innovation and must remain so in the future."

Other European government heads, however, expressed support for the proposal to waive IP rights for COVID vaccines. French president Emmanuel Macron said he completely favoured opening up IP.

European Commission president Ursula von der Leyen said the EU was “ready to discuss any proposals that address the crisis in an effective and pragmatic manner”.

The waiver was proposed in October at the World Trade Organization (WTO) by India and South Africa. The US announced its support of the waiver on Wednesday, May 5.  

“This is a global health crisis, and the extraordinary circumstances of the COVID-19 pandemic call for extraordinary measures,” said Katherine Tai, the US trade representative, in a statement.

WTO’s TRIPS Council will continue to debate the proposal in the coming weeks.

On Wednesday, May 5, Meghan Markle won the remainder of her copyright infringement claim against the owner of the Mail on Sunday for its publication of a private letter written to her estranged father.

The ruling follows a February decision in which the England and Wales High Court ruled that publication of sections of the duchess’s letter was "manifestly excessive and hence unlawful” because the letter was personal and private.

It did not determine whether Markle was the sole author of the letter.

Associated Newspapers Limited (ANL), publisher of the Mail on Sunday, argued that Markle was not the sole copyright owner of the letter because it was co-written by then-communications secretary Jason Kneuf – which would mean the Crown owned the copyright.

Ian Mill QC, representing the duchess, told the court that Markle shared a draft of the letter with Kneuf because she wanted guidance on the wording, and that the former secretary suggested she add a reference to her father’s poor health.

According to Mill, the letter was written entirely by the duchess.

ANL has requested permission to appeal the case at the England and Wales Court of Appeal.

An order that the publication must print a letter of apology and a statement that it infringed the duchess’s copyright is on hold until there is a decision from the appellate court.

US actor Childish Gambino is being sued for copyright infringement over his award-winning rap song 'This Is America' by Emelike Nwosuocha, a rapper who performs as Kidd Wes, it emerged yesterday, May 6.

Nwosuocha, who is based in Miami, said in his action at the District Court for the Southern District of New York that the song copied his track 'Made In America', which was released two years earlier.

The suit set out that the lyrical theme, content and structure of the two songs' choruses were “glaringly similar”, and that Nwosuocha would seek all remedies afforded to him by the Copyright Act, including preliminary and permanent injunctive relief.

The document also contrasted the lyrics in Nwosuocha’s song to that of Childish Gambino, whose real name is Donald Glover.

Glover has yet to respond to the claims.

US trade representative Katherine Tai told a Financial Times online event on Wednesday, May 5, that the Biden administration expected to engage with Chinese officials “in the near term” over phase one of former president Donald Trump’s trade deal between the US and China.

"I'm very much looking forward to formally meeting my Chinese counterparts and assessing their performance and measuring what they have to say, pressing our interests and backing up a path forward," said Tai.

The phase one deal included stringent measures to protect the intellectual property rights of US companies doing business in China, as well as punitive 25% tariffs on $370 billion worth of Chinese imports.

Asked whether the US would continue imposing tariffs, Tai said the current administration was conducting a top-to-bottom review of the trade policy. 

Any relief of tariffs would depend on the effectiveness of the phase one trade deal and on "the vision that we form in terms of where we want to drive this particular and very important relationship”, said Tai.

Increased negotiations with China would be a welcome thawing of the US-China trade war, which resulted in the highest US trade deficit with China of $679 billion in 2020. 

A US judge ruled on Wednesday, May 5, that a patent infringement case concerning Pfizer and BioNTech’s COVID-19 vaccine should proceed despite the companies’ arguments to the contrary.

Judge Marilyn Huff of the District Court for the Southern District of California rejected the manufacturers’ defence that in using Allele Biotechnology’s patented mNeonGreen protein, they were protected by a safe harbour against infringement.

Allele sued the companies in October last year, alleging they had used mNeonGreen – which causes some cells to glow when exposed to certain kinds of light – in clinical trials for their vaccine. There was no allegation that the vaccine itself infringed the patent (US number 10,221,221). 

However, Pfizer and BioNTech said they should be protected by Section 271e (1) under Title 35 of the US Code.

It allows parties to use patents, including those covering recombinant DNA and RNA, for activities “reasonably related to the development and submission of information under a federal law which regulates the manufacture, use, or sale of drugs or veterinary biological products”.

The vaccine makers said they were allowed to use the patented protein to obtain regulatory approval for their jab. 

But in her ruling, Huff said the safe harbour provision should not apply at this early stage of litigation.

Pfizer and BioNTech were not the only companies to face infringement allegations in October.

San Diego-based Allele also claimed Regeneron had been using mNeonGreen without permission, including in the antibody cocktail used to treat former US president Donald Trump when he was hospitalised with COVID last year.

Fifteen inventors and inventor teams have been shortlisted for the European Inventor Award 2021, the EPO revealed on Tuesday, May 4.

The finalists fall into five categories – industry, research, non-EPO countries, SMEs, and lifetime achievement – and specialise in a wide range of technologies including diagnostics and wildlife protection.

The winners will be announced at a digital ceremony on June 17.

“This year’s finalists are shining examples of the ingenuity and creativity that support technological progress and pave the way for job creation and economic growth,” said EPO president António Campinos.

“Each of the exceptional finalists is a trailblazer in their respective field and has made a tangible contribution to overcoming some of society’s most pressing challenges,” he added.

Now in their 15th year, the awards recognise inventors who have made an exceptional contribution to technology, society, and economic growth.

An independent jury picked the 15 finalists from a pool of nearly 400 inventors and inventor teams.

The jury, chaired by diagnostics researcher Helen Lee (who won the “popular prize” award in 2016), consists of experts in intellectual property, business, science, politics, media and research. 

The 2021 finalists come from Austria, China, Denmark, France, Germany, India, Italy, the Netherlands, Norway, Serbia, Spain, Switzerland, Sweden, the UK, and the US.

They have all used European patents to protect their inventions, which include improved nasal drug delivery, and the world’s first system to verify a fingerprint pattern and detect live blood flow.

The full list is available here.

Wrigley has filed lawsuits against cannabis product sellers that allegedly infringed its Skittles, Starburst and Life Savers brands.

The company filed two complaints in the US District Court for the Northern District of Illinois and one in the District Court for the Central District of California on Monday, May 3.

One of the complaints in the Northern District of Illinois was against Terphogz and John Doe defendants for use of the name Zkittlez.

Wrigley also submitted evidence of the defendant’s t-shirts with the Zkittlez brand and the slogan #tastetheztrainbro – similar to the Skittles slogan “taste the rainbow”.

Wrigley requested a permanent injunction. It also asked the court to order the defendants to deliver up for destruction all products, signs, prints, labels, wrappers, packages, receptacles and advertisements in their possession that had the Zkittlez name.

The plaintiff also asked the Northern District of Illinois to make Terphogz transfer the zkittlez.com domain name to Wrigley and to permanently disable all social media accounts that operated under the name.

Wrigley said in its complaint that it had commenced this action to protect the public from Terphogz’s “deceptive and dangerous” business practices and to safeguard the goodwill and reputation of its mark.

“Unscrupulous companies like Terphogz who push drugs and drug paraphernalia using trademarks belonging to confectionery companies pose a danger to children,” the complaint said.