Marvel filed an opposition against a BlackBerry’s attempt to register a trademark for ‘Jarvis’ in class 42 in the US.
As it is well-known ‘Jarvis’ is a character, an AI software assistant to Toni Stark, another character from the “Iron Man” comics and movies.
Marvel is the owner of an earlier trademark ‘Jarvis’ registered in class 9:
Computer application software that may be downloaded via global computer networks and electronic communication networks for use in connection with mobile
computers, mobile phones, and tablet computers, namely, software for use as a
voice-controlled personal digital assistant.
According to the company, there is a significant chance for consumer confusion between both marks because of the reputation of its trademark which has been gained throughout the years in connection with Marvel movies and different merchandising activities such as Lego own movies, video games, etc.
This case is intriguing by its own. On one hand, we have a registered trademark for a name which is used as a character in comics and movies. On another hand, there is an attempt for registration of the same mark but for another class of real services. The question here is whether the use of a trademark as a character is enough in order to stop such following applications. Yes, merchandising use, especially for video games, is a point in the right direction but it is interesting to what extent a reputation connected to a fictional character for software can be useful to stop identical signs for real software in the real world.
Source: WIPR (Marvel hits out at BlackBerry over ‘Jarvis’ TM)
EUIPO reports about a new option introduced by the Australian Patent Office for e-filing of trademark applications. This will facilitate significantly the trademark registration process in the country.
Darren Hau (Marks & Clerk) published an interesting article for Lexology which discusses the topic for patent protection of Artificial Intelligence (AI).
As it is well known, computer programs and mathematical methods are excluded from patent protection because it requires a technical solution of a technical problem.
The main question here is, however, when one software, including AI, meets these requirements, that is to say when it has a concrete technical effect.
The updated EPO “Guidelines for Examination” gives some tips in that regard.
When it comes to AI inventions, the guidelines provide the following as examples of technical applications:
- control of a specific technical system/process;
- encryption/decryption or signing electronic communications;
- audio/image/video enhancement or analysis;
- speech recognition, e.g. mapping a speech input to a text output;
The natural conclusion from an in-depth analysis of these examples is that AI is protectable by patents in a case that it claims are restricted to specific technical purposes or such technical implementations.
The full article can be found here.
The online platform Groupon and IBM have reached a patent deal. The case concerns a lawsuit initiated by IBM against Groupon for infringing the US patents 5,796,967; 5,961,601; 7,072,849; и7,631,346 related to online advertising and ways of allowing web users to connect to an internet provider.
After long negotiations and an ask by IBM for doubling the damages to 165 million dollars, both companies have reached an agreement to cease the lawsuit for which Groupon will pay 57 million dollars.
This case is just another good example of the role and potential that intellectual property has for generating additional revenue for its owners.
In the case at hand IBM will monetarize its patents giving longstanding licenses to Groupon against which the company will allow its employees to use some of the services offered by Groupon with cross-licenses.
Although intellectual property disputes can be quite tough sometimes, if they are used and managed skillfully they can lead to a win-win situation for both parties at the end of the day.
It is a widespread opinion that protection of a trademark requires its registration before the Country’s Patent Office. Even though this is true it is not the end of the story when it comes to trademark protection. Why?
The main reason for this is the fact that the legislation in most of the countries around the world doesn’t require from Patent Offices to stop every new trademark application even in a case that it is identical or similar to already registered one. This responsibility is given to the trademark owner who can file an opposition against such new marks if and only if he wants to do this.
But if the owner misses out on filling an opposition on time, the new mark will be registered and the following options for its cancellation could be more expensive and time-consuming.
So all in all every trademark holder has two main variants to support its already registered mark:
- To monitor the Patent Office’s trademark bulletins by himself – it has to be noted here that although everyone can assess identical marks for identical goods and services (a mark X for a good Y is a mark X for a good Y), the situation is much more complex when it comes to similarity, which requires in-depth knowledge regarding trademark legislation and case law.
- To subscribe for different software decisions which will alert him in case of new identical or similar marks and after that to discuss the results with a trademark attorney.
In any case, it is vital such monitoring to be carried out on a regular base and oppositions to be filed on time in order for the trademark protection to be maintained properly.
1. The European Commission outlines next steps towards a European data economy. More information here.
2. Nina Ricci and the importance of trademark reputation. More information here.
3. The Bulgarian company Chaos Group received a tech Oscar for its innovation V-Ray. More information here.
Information from Intellectual Property Center at the UNWE. More information can be found here