This week in IP: Ocado IP rights questioned, China rejects metaverse trademarks, and more

It’s less than a year now until the opening match of the 2022 FIFA World Cup, scheduled for November 21 at the Al Bayt Stadium in Al Khor, Qatar – and with preparations entering their final stage, FIFA and Qatar have already done a lot to ensure a smooth kick off.

On FIFA and Qatar’s to-do list is plenty of work related to the football organisation’s intangible assets.

The international governing body needs to ensure the legal tools are readily available to help it protect its commercial interests, and sources tell Managing IP that staging the World Cup has spurred a major commitment to IP enforcement.

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Other Managing IP stories published this week include:

• Exclusive: Peppa Pig targets cartoon wolf for ‘deceiving viewers’

• InterDigital case will put Unwired Planet to test in UK: counsel

• MEP rejections could compromise DSA future: counsel

• JPO must stay neutral in its SEP policy review, urge sources

• Fintiv critics look to Intel and Leahy after SCOTUS denies cert

• Opinion: Why lawyers quit the profession – and how to stop it

• Companies got fewer patents in 2021 – in-house explain why

• US trends and events patent counsel should watch in 2022

• Brexit boom: UKIPO filings soar but address suspicions remain

• Opinion: £150k for a junior lawyer! It’s good, but may not be enough

The Munich District Court yesterday, January 27, stayed proceedings in a case brought by Ocado against a US developer of a warehouse-shopping robot, noting that Ocado’s utility model rights may be invalid.

It is the latest twist in a multi-jurisdictional battle between the online supermarket against US-based AutoStore.

The court considered that, despite Ocado having made significant last-minute amendments to the claims of the asserted utility models, they were likely to be invalid because they sought to cover more than the disclosures in the original applications.

Ocado brought the case, in which it sought an injunction against AutoStore, in response to a patent infringement claim filed by the US company in 2020.

The case concerns AutoStore’s B1 robot, which is used in warehouses to pick goods for online shopping.

In December, the US International Trade Commission rejected AutoStore’s claims of patent infringement in the US, finding three patents invalid and one not infringed.

Ocado’s action against AutoStore in the UK, launched in October 2020 at the England and Wales High Court, continues.

China’s IP office, CNIPA, has started rejecting metaverse-related trademark applications to prevent abuse of the registration process amid frantic attempts to capitalise on the technology’s popularity, it emerged this week.

The rejected applications include filings for the Mandarin phrase 'yuan yuzhou', which translates to metaverse in English.

The action by CNIPA showed a deliberate strategy to deal with the rush of metaverse-related applications, while preventing trademark squatting and misunderstanding among consumers, an official at the agency was quoted as telling the South China Morning Post.

More than 1,500 companies from mainland China have so far applied to register metaverse-related trademarks at CNIPA.

Some of the refused applications were filed by video games company NetEase, online video provider iQiyi and social media platform Xiaohongshu.

Other businesses that have filed metaverse-related applications, including Alibaba, Tencent and ByteDance, are still waiting for the examination results.

IP services provider Kangxin reported last year that around 8,534 applications for metaverse-related trademarks had been filed in China as of December 20 2021.

Football club Chelsea, European governing body UEFA, and the Premier League are collectively considering potential IP violations by former footballer John Terry for his role in promoting non-fungible tokens on social media, it emerged this week.

Among the NFTs Terry has promoted feature the Premier League, Europa League and Champions League trophies, as well as Chelsea FC's badge and shirt. Terry, and other footballers, promoted the NFTs heavily on Twitter.

The investigation focuses on whether the players’ use of the logo, shirts and trophies in the tokenised artworks infringe the copyright and trademarks belonging to UEFA, the Football Association and the Premier League.

In a statement, UEFA said: “UEFA takes the protection of its IP rights seriously and we are investigating this matter further.”

The Australian government has ended a long-running fractious row over the Aboriginal flag by paying A$20 million ($14.2 million) to secure the copyright from the man who designed it.

Indigenous affairs minister Ken Wyatt announced on Monday, January 24, that officials had finally struck a deal with Harold Thomas, who has given up his copyright.

In return, the government has agreed to give any future royalties from commercial flag sales to NAIDOC, an annual celebration for Aboriginal and Torres Strait Islander peoples.

Thomas had been the legitimate copyright owner since 1997, when the Federal Court declared him to be the flag’s designer after dismissing two other men’s claims.

He had designed the flag, which is black and red with a yellow circle in the middle, in 1971. The black represents the Aboriginal peoples, the yellow circle depicts the sun, and the red symbolises the red earth. 

The 1997 ruling created a highly unusual situation whereby an individual (rather than a state or even no one at all) owned the copyright to an official flag. Regardless, Thomas was now the man legally entitled to protect and monetise his rights as he saw fit.

The issue had been mostly uncontroversial until the past few years, when some companies that had licensed Thomas’s copyright for various goods including clothing sought to enforce their rights.

These wholly legitimate claims were tarnished by one licensee’s associations with a now-liquidated company that was fined for selling inauthentic Aboriginal art. And some targets of cease-and-desist letters included Spark Health Australia, an Aboriginal-owned social enterprise.

Amid rising anger, a Senate committee completed a dense report into the matter in October 2020, as negotiations with Thomas continued.

The government has now opted for what was a popular recommendation in the report – acquire Thomas’s copyright and existing licences. 

It has also agreed to create an annual scholarship in Thomas’s honour for indigenous students to develop leadership skills.

Thomas has been quoted as saying he hopes the agreement “provides comfort to all Aboriginal people and Australians to use the flag, unaltered, proudly and without restriction”.

Bob Dylan has become the latest artist to sell his back catalogue of recorded music, joining a growing list of artists to make the move.

The deal, announced by Sony Music Entertainment on Monday, January 24, also includes the rights to multiple future releases. The price of the deal has not been confirmed but is speculated to be worth between $150 million and $200 million.

The portfolio includes the entirety of Dylan’s recorded body of work since 1962. Sony said it would continue to collaborate with the artist on a range of future reissues.

Dylan was signed to Sony’s Columbia Records in October 1961.

Rob Stringer, chairman of Sony Music Group, said: “We are tremendously proud and excited to be continuing to grow and evolve our ongoing 60-year partnership. Bob is one of music’s greatest icons and an artist of unrivalled genius.”

The UKIPO is seeking views on the future of the UK’s design system after Brexit, it announced on Tuesday, January 25.

Members of the public will have until March 25 to submit their comments on a range of topics related to the design system and potential reforms.

Among the topics up for consultation are whether the current system needs to be simplified, novelty searching, and designers’ experience of enforcing their rights.

The consultation will also examine the impact of Brexit, particularly changes to disclosure requirements for unregistered designs.

It also marks the latest effort by the UKIPO to grapple with the emergence of new technologies such as artificial intelligence (AI).

The UKIPO said it would be seeking views on whether the designs system is flexible enough to protect designs created with AI.

The office is running a separate consultation on the impact of AI on the patents and copyright systems.

Tim Moss, UKIPO CEO, said he wanted to ensure the UK designs system “remains a powerful enabler in an increasingly digital environment”.

Cat Drew, chief design officer at the Design Council, encouraged stakeholders to take part.

“It’s really important that people from across the design industry give their views on the current IP framework and how it can be improved for designers,” she said.

Nokia unveiled what it called a “first-of-its-kind” deal yesterday, January 27, to offer Nordic Semiconductor customers licences to its cellular standard-essential patents.

The agreement will allow customers buying internet of things (IoT) hardware from Oslo-based Nordic to add on end-device level licences to Nokia’s cellular SEPs.

IoT refers to a new generation of connected, or “smart”, devices, often encompassing sectors previously unfamiliar with cellular SEPs.

Nokia Technologies president Jenni Lukander described the deal as a “win-win for Nordic’s customers and Nokia, simplifying the SEP licensing process in the IoT space and making it easier for licensing agreements to be concluded amicably and efficiently”.

Nordic said the deal would make the SEP licensing process easier for its customers.

Kjetil Holstad, executive vice president at Nordic, said: “Through this collaboration, we have now added transparency and predictability early in the design process, giving the increased clarity and certainty Nordic cellular IoT customers have been seeking over the past three to four years.”