By Ralph A. Dengler and Luis J. Diaz, Gibbons
D'Artagnan Trademarks LLC, ("DT") recently sued the Saul Zaentz Company ("SZ") in the District of New Jersey regarding the trademark ROHAN. In December 2011, DT filed a trademark application for ROHAN in connection with the sale of poultry, namely, duck. The PTO approved the application and SZ opposed its registration when it published for opposition in late March. SZ alleged that it has exclusive rights to certain trademarks (the "Marks") derived from the trilogy of books known as "The Lord of the Rings," by J.R.R. Tolkien. Readers might recall that in the books, "Rohan" is a fictional realm within the fantasy world of the stories. SZ alleges it owns federal trademark registrations for ROHAN, RIDERS OF ROHAN and ROHAN NUTRITION, relating to animal feed and feed supplements for horses, plastic figurines for use with table top hobby battle games, and website services about computer games. SZ has a number of licensees using these marks.
By Ralph A. Dengler and Luis J. Diaz, Gibbons
Currently only the paper edition of the EU Gazette has legal effect. Effective 1 July 2013, only the online version will be legally binding. This binding change was published on 14 March 2013 in the paper edition. As Council Directive No. 216/2013, the Official Gazette of the European Union announced its own paper-based end. Instead the electronic version on the EUR-Lex website will become binding this summer. It is available under http://eur-lex.europa.eu. Access to EUR-Lex is free of charge and no registration is required. The Publications Office of the European Unit is responsible for administration.
By Ralph A. Dengler, Christopher Viceconte and and Andrew P. MacArthur, Gibbons
Deferring judgment until after he hears testimony prior to trial, U.S. District Judge Richard G. Andrews of the District of Delaware nonetheless indicated in a recent Memorandum Opinion that he was inclined to exclude plaintiff's patent damages expert.
The recent judgment of the Royal Court in this case has provided further clarification on the disclosure obligations of former trustees owed to their successors. The Court noted that there appeared to be little authority on the law dealing with the duty of a retiring trustee to hand over documents and information to an incoming trustee and therefore took the opportunity to set out its views concerning the legal position.
Starting on September 16th, seven important provisions of the America Invents Act ("AIA") will take effect: inter partes review, post grant review, supplemental examination, third-party "preissuance submission," substitute statement in lieu of the inventor's oath/declaration, transitional program for covered business method patents, and citation of patent owner statements in a patent file. Not all of the provisions are applicable to every patent and/or patent application. So, it is important that one consults with patent counsel before taking action. Below are helpful takeaways and summaries of these key changes. More information can be found on the USPTO's website.
By Jean Lemoine and Francis P. Donovan, Ravinsky Ryan Lemoine, L.L.P.
Restrictive covenants such as noncompetition and non-solicitation clauses have become a common feature in employment contracts, contracts for the sale of a business and a variety of other commercial transactions. In Canada, Courts are generally more inclined to consider such covenants as being excessive – and therefore invalid – in employment matters than in business matters. However, what of the very common hybrid situation in which the seller of a business remains for a time as an employee after the sale?
By Dr. Attila Kovács, Kovács Réti Szegheõ Attorneys at Law
AAs of 1 July 2015 Act XLIX of 1991 on Bankruptcy and Liquidation proceedings (Bankruptcy Act) in coordination with the rules of the Hungarian Act III of 1952 on the Code of Civil Procedure (CPC) provides for comprehensive changes in civil proceedings, including bankruptcy and liquidation procedures.
By Robert A. Bleicher, Carr McClellan P.C.
Uber’s $100 million class action settlement with drivers who claimed they were misclassified as independent contractors rather than employees caught the attention of businesses across California. That attention is warranted. Recent decisions by courts and government agencies are clear that labeling a worker an “independent contractor” is immaterial.
By Robert A. Bleicher, Carr McClellan P.C.
In many United States jurisdictions, covenants that restrict a departed employee’s ability to compete with his former employer are enforceable with reasonable limitations. Typically, courts permit a restrictive employment covenant after applying a balancing test that weighs geographic regions, time limits, or other considerations to prevent the restriction from being overly oppressive. Not so in California, where those considerations are effectively irrelevant. Home to the world’s seventh largest economy, it has the most aggressively enforced public policy against contracts that in any way prevent a person from engaging in his or her profession, trade, or business.
By Seiichi Yoshikawa, Koga & Partners Legal
In Japan, a judgment rendered by a foreign court ("foreign judgment") can be enforced by obtaining an "enforce-ment judgment" from the Japanese court. In brief, the party seeking an enforcement judgment raust show (1) the foreign court had jurisdiction over the dispute in question, (2) the defendant was properly served in the process before commencement of the case, (3) the contents of the foreign judgment and the procedure for issuance thereof were not in conflict with the Japanese public order and good morals and (4) the country to which the foreign court belongs provides a reciprocal treatment to a judgment rendered by the Japanese court.
By Claudio Ceradini, SLT – Studi Legali e Tributari
Since 2007, Italy has been facing one of the deepest and longest financial and industrial crises ever seen. The number of bankruptcies has grown very rapidly. Consequently, the government has decided to develop restructuring rules with new options offered to those companies which detected their situation promptly and decided to react with a recovery and turnover plan.
By Michael Wendler, Wendler Tremml Rechtsanwälte
On 28 May 2014, the Official Journal of the European Union No. 159 published Directive 2014167/EU of the European Parliament and of the Council of 15 May 2014 on the enforcement of Directive 96/71/EC concerning the posting of workers in the framework of the provision of services and amending Regulation (EU) No. 1024/2012 on administrative cooperation through the Internal Market Information System (the IMI Regulation).
By Michiel Teekens, TeekensKarstens advocaten notarissen
The Council Regulation (EC) No 44/2001 of 22 December 2000 (“the Regulation”) regulates jurisdiction between persons, including companies, located in Member States. The Regulation provides general principles for jurisdiction, but also allows contractual parties to agree to deviate through an implementation clause or a forum clause.
By M. Wendler; Wendler Tremml Rechtsanwälte
After more than 10 years of preparation, the European Commission presented the proposal for a Regulation on a Common European Sales Law (CESL) on October 11, 2011. This proposal is intended to harmonise European sales law. It is particularly commendable that unlike a previously favoured draft that provided for full harmonisation, it will not interfere with national contract laws but rather open up an additional European option.
By Ralph A. Dengler and Thomas J. Bean, Gibbons
IP practitioners on both sides of the "v." should take heed that the Federal Circuit Advisory Council ("the CAFC Council") has unanimously approved a "Model Order Limiting Excess Patent Claims and Prior Art." Citing a "[l]ack of discipline" by the asserting party, the CAFC Council recounted that the resulting "superfluous claims and prior art" have contributed to increasing the expense and burden of patent litigation. And rather than dealing with the number of claims and prior art references on an ad hoc basis, as is presently done, the aspirational Model Order sets default numerical limits on the number of asserted patent claims and prior art references.
By Tetsuya Umehara, Plum Field Advisory
With globalization, regardless of the type of business you run, the management of overseas operations is becoming more and more strategically important, and some overseas subsidiaries are growing for many multinational corporations. This creates challenges for multinational corporations to maintain "sound" management when culture, rules, laws, and customs are different.
By Higini Marsal, Grup Vilar Riba
Transactions such as CVC and Deoleo and the merger of the IDC Salud (Capio) and Quirón hospital groups have been possible thanks to the application of the covenant lite or covlite formula, a structure which, for its nature and characteristics, tends to be associated with situations in which excess cash flow and a lack of opportunities has forced lenders to relax guarantees in order to ensure profitability and the survival of their business.
A pending action in the Eastern District of Wisconsin serves as a reminder of the need for clarity and specificity in any IP-related deal, and in this case, in a matter involving copyright.
As we anticipated, the Federal Trade Commission ("FTC") filed a petition for certiorari yesterday with the Supreme Court in FTC v. Watson Pharmaceuticals, Inc.
FTC Proposes Rules to Codify Reporting of Exclusive Patent Right Transfers in the Pharmaceutical IndustryBy Anthony A. Dean, Gibbons
Is the sale or assignment of a patent reportable? The Hart-Scott Rodino Antitrust Improvements Act of 1976 ("HSR") and related rules require that all acquisitions of voting securities or assets exceeding a threshold amount be reported to the Federal Trade Commission ("FTC"), as well as the Antitrust Division of the Department of Justice. The current threshold is $68.2 million.