Good morning everyone and happy 2021. Here we are again, for a whole new year of IP news. These are the news you missed from the past two weeks:
The Netherlands implements the Copyright Directive
The Netherlands is the first country to fully implement the new Copyright Directive. Here is the link to the publication: https://zoek.officielebekendmakingen.nl/stb-2020-558.html
Valentino and Rockstud protection
Valentino has secured three new trademark registrations before the U.S. Patent and Trademark Office (“USPTO”) for three variations of its Rockstud shoes.
The brand-new trademark registrations respectively extend to:
- Valentino’s single T-strap Rockstud pump (“a three-dimensional configuration of a shoe with a single ankle strap and T-strap and collar which are adorned with pyramid-shaped studs”);
- multi-strap Rockstud pump (“a three-dimensional configuration of a shoe with 2 ankle straps, a T-strap and collar which are adorned with pyramid-shaped studs”);
- ballet flat version (“a three-dimensional configuration of a shoe with the entire collar that runs around the shoe adorned with pyramid-shaped studs”) for use in connection with “luxury shoes” (class 25).
These registrations come as victories for Valentino since its applications had been refused so far on grounds that the shoe designs fail to function as trademarks (the design did not indicate the source of the products, since it was considered non-distinctive). Indeed, one of the USPTO examiners considered that the use of studs on shoes is not uncommon in the fashion industry, and consumers perceive studs as an ornamental feature in a shoe.
Following a lengthy back and forth, Valentino argued that protection through trademark (trade dress more specifically) applies here since the Rockstud design has now become well known and recognisable to consumers as a symbol of the brand Valentino and the values and quality that it encompasses.
Remember that trade dress is a concept that is unique to the US and does not translate into the EU trademark system, at least for the time being.
Fleshlight vs Lingox
Yes, IP applies to every industry. In this case, a Spanish Court had to decide on a potential patent infringement (among other things) between two companies manufacturing… plastic vaginas.
The owners of Fleshlight International, that manufactures its products in Sevilla (Spain), filed for infringement and unfair competition against former executives of the company. Fleshlight was founded in 2010 and in 2012 the owner, a US citizen, decided to part ways with the board of directors. Some of them grouped up and decided to create Lingox, a company that would also specialise in the creation of masculine sex toys.
Now, regarding the IP issues, Fleshlight claimed that three of the products commercialised by Lingox were imitations of the goods offered by Fleshlight, mere imitations created using patented chemical formulas and manufacturing processes owned by Fleshlight.
In this case, the Spanish Court considered that the special material was indeed protected by a patent. However, the patent was a US title, Fleshlight did not file for patent protection in Spain or in the EU, which means that Lingox can use the materials without it being considered as an infringement.
Finally, and just in case the patent infringement allegations were to fail, Fleshlight also alleged that the former Directors violated the trade secrets of the company. The judge recognised that said Directors had access to the manufacturing process and to the special formula, however, they were not bound by confidentiality obligations. Indeed, no confidentiality clause was included in the contracts they signed with Fleshlight. Hence, the business information to which they had access cannot be considered as a trade secret, and there cannot be a violation (remember, one of the requirements for trade secret protection is that reasonable steps must be taken to ensure secrecy of the information).
The lesson of the story: make sure that your IP assets are properly protected in the country in which you intend to commercialise your products. IP rights are territorial by nature so make sure you adapt your protection strategy accordingly. Second, protect the relevant business information as a trade secret by making sure it is kept secret. This might seem obvious but, as you can see, one mistake can jeopardise the safety of the information and your chances of success.
This is all for this week!