GEW 602: Basic Intellectual Property

Cases of Infringement in Intellectual Property Rights

Andog, Julius A.
MSME – 1

I. Patents

1. Qualcomm against Apple Inc. (A global billion-dollar dispute over

mobile phone chips)

In the summer of 2017, the multinational semiconductor and

telecommunications equipment company Qualcomm sued its fellow high-
valued multinational technology company Apple Inc. in the courts in
Germany. On the case that is considered to be one of the world’s biggest
patent dispute, Qualcomm insists Apple Inc. owed license payments
amounting to $7 billion to Qualcomm. Originally, Qualcomm wanted to
align the royalty rate with the price of Apple’s iPhone product, but Apple
would pay only a fixed rate. The legal altercation involved both companies’
filing lawsuits to one another in the US and German courts with the
Regional Trial Court in Munich found Apple’s envelope tracker technology
infringes an important patent for the power supply for electrical amplifiers
of the chip manufacturer.

2. Broadcom against Audi and VW (First dispute over connected cars in

Germany)

In 2018, the chip manufacturer Broadcom and car manufacturers

Audi and VW were deep in legal scuffle over patent right infringement – a
case that is significant for the chain of suits over similar bases in Europe.
Broadcom was filing infringement case on its seven patents concerning
chips for wireless communication in cars, for example with end devices via
Bluetooth and Wi-Fi. Because of its significance, experts are confident that
more cases will follow.

Source: www.juve-patent.com/news-and-stories/cases/top-10-patent-cases-of-the-year/
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II. Utility Models

1. “Easy Clean Wiring” System for the Vileda Mop

The infringement case involves a Vileda product and a registered

utility model in Milan IP Court. In the case at issue, the contested product
was called the “Easy Cleaning Wiring” system for the well-known Vileda
mop, which is characterized by the fact that the bucket is equipped with a
pedal that turns the inner drum to facilitate the drying of the cleaning strips.
This product was said to be an infringement to an Italian utility model
which has a characterization that covers a bucket with a pedal that activates
a lever that makes the inner drum turn. Whereas the utility model employs
a pedal that pushes a straight-toothed element moving the two gears which
consequently transmit the rotation to the inner drum in turn, the Vileda
product had one toothed side which directly acted on the two gears without
passing through any straight-toothed element in its pedal. This, the Judges
believed, was an infringement of the utility model by the Vileda product
under the doctrine of equivalents.
Source: www.martinimanna.com/infringement-of-a-uitlity-model-under-the-
doctrine-of-equivalents-a-recent-decision-of-the-milan-court/

2. Pelikan against Brother

The utility model infringement case involves the German stationery

and print cartridges company Pelikan and equipment company Brother in
the Higher Regional Court of Dusseldorf in Germany. Brother tried to
prohibit the distribution of a newly developed replacement cartridge by
Pelikan in Germany claiming it violates a German utility pattern. After the
patent senate of the Higher Regional Court of Dusseldorf expressed
substantial doubts about the legal effectiveness of the utility model, Brother
took back its request. Hence, the court’s prohibition of the distribution of
the new ink cartridge from Pelikan loses its effect. The court decided that
the utility model in question was not harmed by the ink cartridge from
Pelikan.
Source: www.fieldfisher.com/media/2012/03/firm-succeeds-in-utility-model-
infringement-case-for-pelikan
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III. Trademarks

1. Apple Corps against Apple Inc.

Apple Corps and Apple Inc. have battled over the trademark
“apple” for decades. The Beatles founded the Apple Corps music company
eight years prior to the founding of Apple by Steve Jobs. The former first
sued the technology giant over trademark grounds with the latter agreeing
to pay settlements and not to enter the music business. However, the
founding of iTunes by Apple Inc. paved the way of its being an object of
another lawsuit from Apple Corps which was resolved when Jobs agreed
to purchase the trademark rights from Apple Corps and then sublet them
back.

2. 3M against 3N

The American multinational conglomerate corporation 3M sued

Changzhou Huawei Advanced Material Co Ltd for the use of 3N over
trademark infringement dispute. It was ruled that despite some difference
in products, the notoriety of the 3M mark and the actuality that 3N was able
to acquire customers and make a profit off of a similar mark constituted
infringement.

Source: www.upcounsel.com/examples-of-trademark-infringement-cases

IV. Copyrights

1. Apple against Microsoft

In 1988, Apple Inc. filed a lawsuit against Microsoft over a contested

number of 189 visual displays for copyright grounds. The legal battle
between the two tech giants on the case had bleed to over six years. In 1989,
however, the court ruled that 179 of the 189 disputed displays were covered
in the existing license. Furthermore, the rest were revealed to be not
violations of Apple’s copyright due to the merger doctrine, where the idea-
expression divide limits the scope of copyright protection by differentiating
an idea from manifestation of that idea. The lawsuit was decided in
Microsoft’s favor in 1993.
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2. Star Wars against Battlestar Galactica

20th Century Fox sued Universal Studios for copyright infringement,

claiming that it had stolen 34 distinct ideas from Star Wars when it
produced Battlestar Galactica in the wake of the success of the 1977 film
Star Wars. The makers of Star Wars argued that Battlestar Galactica
apparently borrowed a little too much from the cinematic phenomenon.
Battlestar Galactica makers countersued though, claiming that Star Wars
had stolen ideas from the 1972 movie Silent Running and the Buck Rogers
serials in the 1940’s. Eventually, the case was later ruled in Galactica’s favor.

Source: https://realbusiness.co.uk/6-famous-copyright-cases/

V. Geographical Indications

1. ITC Ltd against Tea Board of India

The legal altercation involving a said infringement on the protection

for geographical indication happened when the Tea Board of India allege
infringement of its legal rights the Indian multinational conglomerate
company over usage of the name “Darjeeling” – which the Board had
secured a geographical indication tag as well as a certification mark. ITC
Ltd has been operating a premier executive lounge reserved only for guests
by the name of Darjeeling Lounge since 2003. The Board insisted that ITC
should provide compensation for the usage of the term which the latter
contended with facts discounting the former’s claim of infringement. Albeit
the Board had secured protection of the tea originating from Darjeeling, the
name of the hotel lounge would not amount to an infringement, the court
ruled.
Source: www.business-standard.com

2. Toscoro against Toscano

The General court of the European Union cancels EU trademark of

Toscoro on the ground of a likelihood of confusion with Toscano which
secures an IP protection for a geographical indication of olive oil. The
trademark at issue was the word sign Toscoro which is registered for
several food productions including edible vegetable oils and olive oil. The
Consorzio per la tutela dell’olio extravergine Toscano applied for a
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declaration that the Toscoro Trademark be invalid in the grounds that it

conflicted with the protected geographical indication Toscano, registered
for olive oil under the European Union’s Regulation on the protection of
geographical indications and designations of origin and for agricultural
products and foodstuffs. The cancellation division of the European Union
Intellectual Property Office (EUIPO) granted the declaration of invalidity
of the Toscoro trademark for several products including edible vegetable
oils and olive oil. This case is viewed to be very significant especially on the
application of European Union law in conflicts between trademarks and a
protected geographical indication.
Source: www.sib.it/en/flash-newseu-court-rules-in-conflict-between-geographical-
indication-and-trademark-in-toscoro/

VI. Industrial Design

1. Kawasaki Heavy Industries (KHI) against Eastworld Motor Industries

In 2008, Kawasaki Heavy Industries launched its newest motorcycle

at the time – the Fury 125. Early the following year, it holds IPOPHL design
registrations covering the designs of their newest motorcycle. KHI learned
later that Eastworld Motor Industries Corporation manufactured and sold
models of its motorcycle, Sapphire which, KHI alleged, to bear nearly all of
Fury’s design elements. In this ground, the plaintiff filed industrial design
infringement and unfair competition complaints against Sapphire’s
makers. However, the Bureau of Legal Affairs ruled the main test for
substantial identity of design is the overall appearance of the object and the
effects of its similarities upon the eye. A casual glance of the designs of both
motorcycles shows glaring differences. Moreover, unfair competition
complaints were also ruled out. It is due to this that the case weren’t
finalized in the plaintiff’s favor.

2. Findlay against Ottawa Furnace and Foundry

The defendants procured a stove made by the plaintiffs according

their industrial design; took it apart and make patterns of the parts; and
using these patterns; and using these patterns, made a stove with modified
ornamental scroll-work, a different medallion, and an exterior top that was
almost the same with the exception of the name. The court ruled there was
an obvious imitation of the industrial design and therefore a permanent
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injunction restraining the defendants from using the industrial design, an

order to dispose of infringing stoves, and costs.

Source:www.lexology.com