This week in IP: Booking.com victory; EPO report; SkyKick saga

In a decision confirming the power of survey evidence and consumer perception, the US Supreme Court confirmed on Tuesday that Booking.com and other generic terms tied to top-level domain names are eligible for trademark protection.

Eight justices ruled in the travel website’s favour, with Justice Ruth Bader Ginsburg notably writing that “because ‘Booking.com’ is not a generic name to consumers, it is not generic.”

David Bernstein, Debevoise & Plimpton partner in New York City, who filed the Booking.com brief as co-counsel, told Managing IP that the court’s focus on what the name meant to consumers was one of the key takeaways of the ruling.

“What we’ve learned from the Supreme Court is that consumer perception is the most important thing when it comes to protecting trademarks. And that’s something we’ve known for a long time. Trademarks are all about protecting consumers.”

The ruling is likely to have a major impact on survey evidence, as you can read here in Managing IP’s full analysis of the decision.

Other Managing IP stories from the week that you might like to read include:

·       Why IP heads change jobs

·       Lessons on tech transfer from five universities

·       What mice can teach patent attorneys about sufficiency

·       ECHR gives content owners new tools in site-blocking war

·       Virtual patent trials: what we can learn from Canada

·       CNIPA’s plan highlights China’s innovation ambitions

Settled cases at the EPO’s Boards of Appeal have increased by nearly 50% in the last three years, according to the organisation’s annual report published this week.

In 2019, the BoA received 3,292 technical appeal cases, 8.6% more than in 2018. In total, 3,254 of these were settled, a 19.1% increase compared with 2018. This amounts to a total increase of 46% since January 2017.

The BoA has also increased its capacity, recruiting 17 additional technically qualified members over the course of last year.

In its report the BoA said it is “well on track” to meet its five-year objective to settle 90% of cases within 30 months.

Last year also marked the finalisation of the BoA’s Rules of Procedure. The new rules entered into force in January this year and are targeted at increasing efficiency, predictability for parties, and harmonisation.

Last year, BoA president Carl Josefsson told Managing IP that the revised rules will reduce a party’s options to amend its case as appeal proceedings progress, and make it more difficult to withhold submissions for tactical reasons.

Meanwhile, the EPO annual review for 2019 , also published this week, showed that the office dealt with a record number of patent applications. It received 181,406 European patent applications, up 4% on 2018’s figure.

The EPO has also provided an update to its Strategic Plan 2023, which was published last year. The EPO wanted core focus areas to include building an engaged organisation; modernising the IT systems; and delivering high-quality products efficiently.

According to the annual review, 2019 brought IT modernisations as well as a paperless search pilot. The EPO also expanded its geographical coverage, including by signing validation agreements with Georgia and reinforcing partnership agreements with Ethiopia, Argentina, Malaysia, Mexico, Indonesia, Brazil and ARIPO.

Sky v SkyKick, one of the most keenly awaited trademark decisions of the last year, looks set to continue after the England and Wales High Court granted both sides permission to lodge an appeal against its earlier ruling.

In a judgment published yesterday, July 2, Lord Justice Arnold (sitting in the High Court) granted SkyKick leave to appeal to the Court of Appeal.

Arnold is now a Court of Appeal judge following his promotion last year, but it was he who oversaw the dispute when he was a High Court judge.

The case, which made its way up to the Court of Justice of the EU (CJEU), was considered to be landmark – with future trademark filing strategies being measured against it.

Broadcaster and telecoms company Sky had sued SkyKick – a cloud management company – for trademark infringement. SkyKick retaliated with an invalidity claim for lack of clarity and precision in Sky’s registered trademarks for the term ‘Sky’.

SkyKick attacked Sky’s strategy of filing trademarks across a broad range of goods and services.

In a ruling handed down earlier this year, the High Court – having received guidance from the CJEU – confirmed that SkyKick infringed Sky’s trademark.

However, Arnold determined that Sky had originally applied for its trademarks partly in bad faith, because it “did not intend to use the trademarks when it applied for them in relation to some goods and services”.

SkyKick will appeal against the finding of trademark infringement and Sky against the decision on partial bad faith.

Todd Schwartz and Evan Richman, co-chief executives of SkyKick, said: “We look forward to taking our legal arguments in this important trademark case to the Court of Appeal. We are hopeful that we will ultimately succeed in obtaining the right to use our ‘SkyKick’ trademark in Europe.”

The UK Supreme Court has rejected L’Oréal’s bid seeking permission to appeal in a patent dispute with hair product company Olaplex.

With its decision on Monday, June 29, the court in effect maintained earlier rulings from the England and Wales Court of Appeal and High Court that said L’Oréal had infringed its start-up rival’s patent.

The court said that L'Oréal's application did not raise an “arguable point of law of general public importance”.

It means the High Court’s injunction against L’Oréal’s Smartbond product – deemed to infringe Olaplex’s Bond Multiplier, which is designed to protect hair during bleach treatments – came into effect on Monday.

However, the damages award has yet to be resolved.

Dominic Hoar, senior associate at Hogan Lovells who acted for US company Olaplex, said the decision shows that the UK courts will protect true innovators, “no matter the size of the infringer or how strong its willingness to fight.” 

Launched in 2014, the Bond Multiplier has received widespread attention, with Kim Kardashian and Jennifer Lopez just two celebrities to have championed the product. L’Oréal released its competing brand in 2015, before Olaplex sued the multinational in January 2017.