Some IP issues with M&A and how to avoid them

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Tom Farrand from  Novagraaf has published an interesting article in Lexology which focuses our attention on some IP issues regarding mergers and acquisitions and in particular the case with the so called fused corporate brands where two existing brands form a new one after the relevant merger or acquisition is finished. Examples of such trademarks are United + Continental Airlines = United Airlines or Exxon + Mobil = ExxonMobil.

The problem with such kind of brands is the fact that many different intellectual property hurdles can arise in the process of M&A or after that which in turn can prevent their use or even can reflect on their reputation.

The article considers some of these problems and how they can be overcome.

The main conclusion from all mentioned is that this issues must not be underestimated and the relevant intellectual property experts have to be included in the earlier stages of the M&A process or even before it so as to prepare the necessary IP strategy that can avoid most of the subsequent problems for the companies involved.

The full text of the article can be found here. 

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Information from Intellectual Property Center at the UNWE. More information can be found here

A lawsuit awakens – a case regarding BB-8 robot from Star Wars

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WIPR reports about a lawsuit which regards the BB-8 robot from “Star Wars Episode VII: The Force Awakens”.

The US company Sphero has developed a patented technology for user-controlled, self-propelled sphere robots, which has been selling by the company since 2011.

In 2014 Sphero started negotiations with Disney and receive a license to use the character of  BB-8 robot from the Star Wars series.

In 2016 the company discovered that the Canadian based toy manufacturer Spin Master had a prototype for the same toy robot that presumably used its technology. Based on this Sphero initiated a lawsuit in New York for patent infringement.

This case is interesting and indicative of the importance of intellectual property rights and their proper management. In the case at hand, we have copyrights over the original character from the movie, owned by Disney. Some trademarks and industrial designs can be added too.

On the other hand, we have a patent over the technology implemented in the end product.

Based on this bundle of rights, the relevant merchandising strategy can be very useful and profitable for the right holders giving them a serious market advantage over their competitors.

 

Wallmart lost a trademark lawsuit in US

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Wallmart, the biggest US retail chain, lost a lawsuit for a trademark infringement. The case at hand concerns a trademark ‘Backyard Grill’ used by the retailer for grills and related accessories.

Another US company Variety Stores as the owner of earlier marks  ‘Backyard’ opposed to this use and in the following lawsuit, the court concluded in favour of Variety Stores ordering 30 million dollars compensation.

The last development in this regard was the fact that Variety Stores, seeking additional damages, succeeded to receive 1,6 million dollars cost of proceeding, attorney fees.

The court stated that the reason behind this decision was that: “Walmart decided to use the Backyard mark despite being twice warned by its own attorneys not to do so and despite being aware of Variety’s trademark registration,”

“This case presents a particular need for compensation and deterrence. The question then becomes what fees are reasonable to award. This court has the discretion to determine the amount of a fee award.”

Source: WIPR.

 

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The General court’s decision and a star issue

The General Court of the European Union ruled in Case T‑568/15 which concerns an attempt for registration of a European trademark SSTAR for Classes 9, 18 and 25. An opposition was filed against this mark based on earlier marks ALL STAR and ONE STAR for Classes 18, 25, 35.

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EUIPO upheld the opposition considering the goods of both marks as identical and similar and the signs similar from visual, phonetic and conceptual points of view.

The General Court upheld this decision. According to the court, both marks share a similar construction, a word element with a star between them. Although there are some different words such as ALL and ONE in the earlier trademarks and a graphic element in the letter mark, this cannot overcome the similarity that exists and which can create confusion among the consumer bearing in mind the similar and identical goods for which the marks are applied for.

Source: Alicante news.

A US non-profit organisation attacks Jamie Oliver for trademark infringement

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The US non-profit organisation Gluten Intolerance Group (GIG) has initiated a lawsuit against the world well-known chef Jamie Oliver.

GIG possesses a certification trademark GF which certifies that the relevant food products are gluten free. It is required the products to pass strict certification program.

In the case at hand, GIG claims that Jamie Oliver has used the sign GF for some of his recipes without to prove that the products have passed any certification process.

According to the organisation, this constitutes a trademark infringement which can create a confusion among the consumers that the products have been previously certified so as to use the sign GF.

Source: WIPR.