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Harmonisation: are we one step closer?
13 Aug 2008
The Australian Patent Office (IP Australia) and the US Patent and Trademarks Office (USPTO) have reached an agreement whereby IP Australia will act as an international search and examination authority for international patent applications filed with the USPTO via the Patent Cooperation Treaty.
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Patentable subject matter under review
30 Jul 2008
The Advisory Council on Intellectual Property is conducting a review of patentable subject matter in Australia. The most fundamental threshold for granting a patent involves the basic question of whether an innovation relates to the kind of thing for which patent protection should be granted in view of the policy objectives of the patent system.
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Judging the distinctiveness of designs: the standard of the informed user
16 Jul 2008
In determining whether one design is substantially similar to another in overall impression, the Designs Act 2003 requires an assessment made through the eyes of a person who is familiar with the product to which the design relates. Although this ‘informed user’ standard has yet to be applied by the courts, it has been applied in a number of recent decisions issued by the Australian Designs Office.
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An international balancing act: drafting a single patent application for multiple jurisdictions
06 Aug 2008
Canadian patent agents are regularly called upon to file patent applications in at least three jurisdictions - Canada, the United States and Europe. As a result, agents need to master a balancing act in order to file correctly in each jurisdiction.
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Can your ideas secure your loan?
25 Jun 2008
Growing companies often have issues with cash flow, and one way for them to deal with this is to use IP assets as collateral for a loan. However, by using intellectual property as security, a company agrees in advance that the lender may exercise certain rights over it should it default on the loan.
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Patent filing in Canada: what you need to know
14 May 2008
The Canadian patent system offers various flexible and low-cost options, particularly when compared to other industrialised countries. In addition, certain unique aspects of Canadian patent prosecution can reduce the time and expense of obtaining a patent, whether filing in Canada directly or through the Patent Cooperation Treaty.
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Implementation of new IP standards
09 Jul 2008
Two new standards concerning IP documentation and information have come into force. The first confirms terms frequently used in regard to intellectual property, while the second clarifies the classification and coding of IP documentation. However, the standards are not compulsory and no penalties apply for failure to comply with them.
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Court rules handbag design patent infringes Louis Vuitton trademarks
14 May 2008
A Beijing court has ordered a design patent registrant not to use his patent because it conflicts with several trademarks owned by Louis Vuitton Malletier. Notably, the court was prepared to order the non-use of the design patent even before it was invalidated by the Patent Re-examination Board.
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Sweet success for Ferrero Rocher in first decision on 3D marks
30 Apr 2008
The Beijing First Intermediate People’s Court has granted Ferrero SPA’s appeal against the Trademark Review and Adjudication Board’s refusal to allow Ferrero to extend its three-dimensional (3D) trademark to China. This is the first court decision allowing the registration of a 3D trademark in China.
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The impact of public health issues on exclusive patent rights
02 Jul 2008
Croatian legislation regarding public health issues and their impact on exclusive patent rights is in line with the EU
acquis communautaire and other international standards. For example, the research or experimental use exception is recognised under Article 63 of the Patent Law.
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Court validates statute of limitations for patent infringement
07 May 2008
A Zagreb court has denied a plaintiff's claims in a patent infringement case on the basis that the statute of limitations had expired. The court found that the plaintiff was aware of the alleged infringement as early as 1993, and that the statute of limitations ran from this date and not from every subsequent alleged infringement, as the plaintiff claimed.
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Croatia kicks off 2008 by joining the European Patent Convention
06 Feb 2008
Croatia has now acceded to the revised European Patent Convention, the latest in a long line of initiatives designed to modernise the country’s patent regime. Next on the agenda is the introduction of an appeal system and initiatives to make the Board of Appeal an independent body. However, a lack of trained IP personnel could make this particularly challenging.
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Registering marks in Cyprus: a guide for foreign rights holders
30 Apr 2008
Cyprus can serve as a useful point of entry into the EU market for foreign rights holders. However, before launching on the market, rights holders would do well to ensure that their trademarks are properly registered, and in doing so should bear in mind some of the peculiarities of registering trademarks in Cyprus.
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The politics of intellectual property in Cyprus: an introduction
05 Mar 2008
Before trying to understand IP law in Cyprus, it is important that foreign practitioners have some appreciation of the political elements that shape the operation of all laws in Cyprus. These have had a particular effect on IP protection and enforcement in the north of the island, which has been occupied by Turkey since 1974.
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Do you have permission?
09 Jul 2008
When a company is considering registering a new trademark for a drug, it should search to check earlier trademarks. However, it must also check whether the trademark will be approved by the Danish Medicines Agency and whether it will be possible to market the medicinal preparation under the chosen trademark.
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Fighting for gold
11 Jun 2008
Team Danmark, the independent public institution charged with developing Danish sport, has enjoyed a 3-1 victory in a fight to protect its trademark. The Maritime and Commercial Court ruled that the later JOBTEAMDANMARK mark for which registration was sought would have diluted everything for which the TEAM DANMARK mark stood.
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Requests for limitation or revocation: Danish law versus the EPC 2000
28 May 2008
The entry into force of the European Patent Convention (EPC) 2000 on December 13 2007 has highlighted the different approaches taken by Denmark and the European Union to the re-examination of issued patents. In contrast to the EPC 2000, Danish rules allow both the patent owner and third parties to ask the Danish patent authority to re-examine an issued patent valid in Denmark.
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Use of trademarks as keywords: Supreme Court requests ECJ ruling
02 Jul 2008
In recent years the French courts have tended to find search engines liable for selling trademarks as keywords, although the legal grounds for such decisions have varied widely. However, this situation may soon be resolved since the Supreme Court has requested a preliminary ruling from the European Court of Justice on these issues in three cases against Google.
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New law gives rights holders better weapons against counterfeiters
24 Oct 2007
The French Senate has adopted a draft law that gives rights holders new and significantly improved legal weapons against counterfeiters. Initially intended to implement the EU IP Rights Enforcement Directive, the law standardises and improves the procedures available to holders of trademarks, designs and models, copyrights and patents.
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Are patent trolls waiting at the gates?
11 Jun 2008
Although cases between major players and so-called “patent trolls” have been big business in the United States, so far such litigation has not reached Europe. However, with a recent infringement suit reportedly valued at €12 billion and reports that the German patent litigation system could prove fertile ground for patent trolls, could it be that Germany is facing a patent revolution?
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Judge Thomas Kühnen is appointed chair of leading German IP appeals court
20 Feb 2008
Experienced patent judge Thomas Kühnen has been appointed as presiding judge of the Second Civil Senate of the Dusseldorf Higher Regional Court. The appointment of such an expert – in his former position Kühnen helped preside over the landmark MPEG-2 Cases – is good news for patent litigation in Germany.
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Cheaper patents for all as France ratifies London Agreement
13 Feb 2008
The London Agreement is due to come into force in a matter of months after France deposited the instrument of ratification with the German Ministry of Justice on 29th January. The agreement, which will enter into force on 1st May, will make patenting in Europe about 30% cheaper by reducing post-grant translation costs.
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Proposals to strengthen the rights of trademark owners
13 Aug 2008
The problem of shadow companies is causing grave concerns to trademark owners. These are principally incorporated by Chinese individuals who use the Hong Kong company registration system to register a company name incorporating another party’s famous mark as a vehicle to carry out counterfeit dealings across the border in the People’s Republic of China.
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No confusion as to origin between marks owned by Hugo Boss and Suntory
16 Jul 2008
The registrar of trademarks recently rejected the oppositions filed by Hugo Boss AG against two applications by Suntory Kabushiki Kaisha to register the mark BOSS in respect of Classes 29 and 30. Although Suntory’s mark was found to be similar to those owned by Hugo Boss, the registrar held that no risk of confusion existed.
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Second sweep of revisions cracks down on anti-circumvention technology
07 May 2008
Some further provisions of the Copyright (Amendment) Ordinance 2007 have now come into effect. The new changes extend the scope of rental and perfomers’ rights. They also impose both civil and criminal liabilities on anyone dealing in devices specifically designed to circumvent anti-copying technology.
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Record companies take on ISP over file sharing
25 Jun 2008
Four major record companies have launched a case against Eircom, Ireland’s largest internet service provider, in conjunction with the Irish Recorded Music Association. They claim that Eircom is infringing their copyright through members who share and download copyrighted material.
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High Court rules that clothes are unfashionably close to rival designs
13 Feb 2008
The High Court has held that Karen Millen had a valid unregistered Community design right in a top and two shirts, and that copying by Dunnes Stores infringed these protected rights. The court ordered Dunnes to stop selling the infringing goods, to deliver all remaining stock and to account for profits from these products.
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Ireland's friendly tax approach to intellectual property pays off
05 Dec 2007
Ireland is one of the largest exporters of intellectual property in the world, an impressive achievement that owes much to its friendly tax approach to intellectual property. Companies that engage in IP licensing in Ireland can take advantage of many favourable tax provisions, as well as a 12.5% rate of corporation tax.
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Misrepresentations of patent ownership contributed to tax evasion conviction
13 Aug 2008
A recent case demonstrates how patent ownership issues can come to bear on tax evasion, thus going far beyond the typical context of patent infringement actions and ownership disputes. The judgment shows that misrepresentations as to inventing and owning an invention may result in criminal tax proceedings.
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Court refuses trademark registration of three-dimensional packaging
09 Jul 2008
The Supreme Court has rejected the appeal of a decision of the registrar of trademarks to refuse the registration of three-dimensional packaging and a product shape as trademarks. Both the registrar and the court found that the packaging and shapes were not inherently distinctive or proven to have acquired distinctiveness, and therefore could not be registered.
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New practice relating to divisional applications
02 Jul 2008
Until recently, applications to divide a patent application could be filed at any time up to the acceptance of the parent application. However, the Israeli Patent Office has now changed its practice in regard to lack of uniformity objections to provide that divisional applications must be filed within four months of the objection.
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EPO prior art searches now apply to national patent applications
30 Jul 2008
A new search and examination regime for patent applications has entered into force, according to which an Italian application filed on or after that date will be subject to a search report and patentability opinion issued by the European Patent Office, and to a further examination on the merits by the Italian Patent and Trademark Office.
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PTO expected to relax its approach to restoration applications
07 May 2008
The Patent and Trademark Office’s (PTO) practice in relation to
restitutio in integrum is expected to relax following a recent decision involving a German holder of a European patent. The PTO Board of Appeals held that the law requires only that evidence be submitted that the degree of diligence demanded by the circumstances has been applied.
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New law helps clarify reductions for pharmaceutical SPCs
16 Apr 2008
The Italian Parliament has enacted a new law that, among other things, should help to clear up longstanding confusion over the duration of supplementary protection certificates (SPCs), which apply within the pharmaceutical market when basic patents expire. The new law confirms a provision from 2002 reducing the duration of Italian SPCs.
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Indirect online infringement: a growing trend
25 Jun 2008
In Japan, the courts have tended to judge the owners of online services which allow the copying of television programmes or music files as being guilty of indirect copyright infringement, even though it is the users who make the copies. However, new systems are in the pipeline which should benefit online service owners.
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Securitising patents in the global credit crunch
09 Apr 2008
Although there has been only one patent securitisation in Japan to date, the deal reveals valuable pointers for the way that future transactions might proceed. In addition, the new Trust Law offers alternative structures for securitising patents, which could make such transactions more popular in future.
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IP management helps SMEs maintain a competitive edge
06 Feb 2008
As intellectual property becomes a vital issue for businesses across Asia, Japan’s long-term strategy of promoting its importance and, in particular, of helping small and medium-sized enterprises maximise the value from their inventions is paying dividends.
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New IP Court gears up for business
14 May 2008
The Federal Court of Tax and Administrative Affairs has published a decree establishing a specialised IP court. Once three magistrates are appointed by the president and approved by the Senate, the court will hear all IP trials in Mexico. It is hoped that the court will be able to deliver swifter and more consistent decisions in this area.
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Pharma regulations signal new regime for generic registrations
05 Mar 2008
A new decree modifying several provisions of the Regulations for Health Consumables has been published in the
Official Gazette. The decree eliminates the distinction between ‘generics’ and ‘interchangeable generics’, and establishes that henceforth generic medicines will need to prove interchangeability with a medicine of reference.
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Supplementary protection certificates: when is a product protected by a basic patent?
07 May 2008
In
Ranbaxy v Warner-Lambert the Court of Appeal of The Hague has provided criteria for assessing Article 3(a) of the Supplementary Protection Certificate Regulation. It remains to be seen how this decision will influence the practice of the Netherlands Patent Office.
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Patents Act gets ready to welcome applications in English
06 Feb 2008
The Patents Act 1995 has been amended and the new version is expected to come into force during the first half of 2008. The new act would allow patent applications, though not claims, to be submitted in English, making the Netherlands among the first countries in Europe to depart from having a national language requirement for national patents.
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Appeal court applies doctrine of equivalents in lansoprazole case
02 Jul 2008
The Borgarting Court of Appeal has issued another decision confirming the use of the doctrine of equivalents in cases involving analogy method patents. The court held that ratiopharm had infringed Takeda’s patent for preparing lansoprazole and awarded damages of Nkr28.5 million.
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Court confirms that equivalents doctrine applies to ‘analogy method’ patents
12 Mar 2008
In
Pfizer v Sandoz the Borgarting Court of Appeal has held that Sandoz’s method for the production of generic Sertraline infringed Pfizer’s patent under the doctrine of equivalents. The decision is significant in that it confirms that the doctrine of equivalents also applies to so-called ‘analogy method’ patents.
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Appeal court finds that claim for exclusivity lacks heart
13 Feb 2008
An appeal court has ruled against a care services company that sought protection for the red hearts in its logo. The court found that a red heart is a common symbol, popularly used in various contexts, and its use in marketing does not represent a particularly creative effort. Protection, in the sense of exclusivity, cannot therefore be claimed for it.
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Court overturns practice of refusing common shape marks
21 May 2008
Following a protracted legal battle, the Bucharest Court of Appeal has compelled the State Office for Inventions and Trademarks to revise its practice of refusing to register trademarks containing common shapes. The court held that a trademark’s distinctive character must be assessed by considering the trademark as a whole.
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Romanian geographical indicators go European as system is harmonised
20 Feb 2008
A new system on protection for geographical indications and designations of origin is helping to bring the Romanian regime into line with the current Community approach in this area. However, a number of contradictory provisions in national legislation must still be amended before full harmonisation can be achieved.
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Court cancels protecion for controversial umbrella design
12 Dec 2007
After years of uncertainty surrounding an industrial design registration for terrace umbrellas, an appeal court has cancelled the registration. The case hinged on when an industrial design can be said to be ‘new’ and thus when the State Office for Inventions and Trademarks can issue an industrial design protection certificate for it.
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Criticism grows over World Cup prohibited marks
10 Oct 2007
Controversy has surrounded the publication of a list of FIFA trademarks and words, which the minister of trade and industry proposes be declared as prohibited marks in preparation for the 2010 World Cup. Critics argue that none of these marks is unique to FIFA and the list could potentially lead to absurdities, such as making any 2010 calendar illegal.
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Supreme Court swings trademark law back to European roots
11 Jul 2007
The Supreme Court has ruled that an advertisement for car polish featuring a BMW car did not infringe BMW’s marks. The decision not only brings South African trademark law further into line with EU legal practice, but has also been welcomed for ensuring that IP rights cannot be used to restrict competition in the market.
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Ownership of designs and models resulting from commission
02 Jul 2008
In a recent case involving a Community design created as a commissioned piece of work, Alicante Mercantile Court No 1 has referred several questions to the European Court of Justice. At present, Spanish national legislation treats designs created by an employee and designs created on commission in the same manner.
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Bad times for P2P actions in Europe
14 May 2008
Legal uncertainty still reigns in the European Union over peer-to-peer (P2P) networks. However, following the European Court of Justice’s preliminary ruling in
Promusicae v Telefónica de España, and the Spanish public prosecutor’s instructions regarding the legal consideration of P2P activities under criminal law, the situation has become even more ambiguous.
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Troubled waters as uncertainty continues over patent damages
27 Feb 2008
A Madrid court has held that damages for patent infringement can be calculated based on both the infringer’s profits and the profits that the rights holder might reasonably have obtained, as per an amendment to the Patent Law in 2006. However, there are doubts over whether this interpretation chimes with the EU IP Enforcement Directive.
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New Marketing Practices Act comes into force
13 Aug 2008
The new Marketing Practices Act came into force in Sweden on 1st July 2008. Perhaps the most important change in relation to the old law is the scope of application, which has been widened to cover unfair marketing practices that occur after a commercial transaction has been completed.
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Commercial breaks in films violate directors’ moral rights
02 Jul 2008
The Supreme Court recently ruled that commercial breaks in films violate directors’ moral rights in those films. Although similar judgments have been rendered previously by lower courts in Europe, this is thought to be the first judgment of its kind to be rendered by the high court of an EU member state.
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A big year for Swiss IP legislation
05 Dec 2007
This year has been a significant one for Swiss IP legislation, with five separate amendments to the Patent Act and four to the Copyright Act. Some changes were necessitated by the opening of the Federal Administrative Court at the beginning of 2007, while others serve to ratify and implement international agreements.
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New examination standards for computer software-related inventions
13 Aug 2008
In order to deal with the rapid development of computer software technologies, the Taiwan Intellectual Property Office has issued the amended Patent Examination Standards for Computer Software. The amendments update the standards issued in 1998 to deal with pressing issues.
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Big changes will bring Taiwan’s Patent Law up to date
30 Apr 2008
In order to catch up with the rapid development of technology and changes regarding international IP rights, more than 40 articles of the Patent Law (approximately one-third of the law) are due to be amended. It is hoped that the amended law will improve efficiency and quality in patent applications.
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First patenting guidelines for traditional Chinese medicine
16 Jan 2008
The Taiwan Intellectual Property Office (TIPO) has issued draft patent examination guidelines that are specifically designed for Chinese medicine products. The guidelines, which are the first of their kind in this field, aim to clarify the examination procedure for both TIPO and patent applicants.
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Teething troubles over Paris Convention and PCT
16 Apr 2008
Although the Thai government has voted to accede to the Paris Convention and the Patent Cooperation Treaty (PCT), it could be a while before patent applicants can enjoy the benefits of this decision. In particular, several laws will need amending in order to bring them into line with the obligations set out in both the convention and the PCT.
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New Copyright Act sets it sights on chaotic royalty collection
09 Jan 2008
A revised Copyright Act, which contains provisions relating to royalty collection, has been proposed and now passed by the Office of the Council of State. It is hoped that the act will help to resolve deep-seated problems with the collection of royalties, including too many collecting societies and ungoverned royalty rates.
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EPO u-turn is good news for UK patent holders
19 Dec 2007
The European Patent Office has announced that it will participate in a pilot scheme with the US Patent and Trademark Office to accelerate patent applications. This is good news for UK patent holders as the increased harmonisation should result in greater efficiency in terms of time and spend throughout the filing process.
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French to give UK pan-European businesses valuable Christmas present
14 Nov 2007
UK patent applicants can look forward to big reductions in the cost of registering patents when the London Agreement comes into force. While the agreement will reduce translation costs for all applicants, UK businesses will benefit doubly as English has so far been chosen as the official language by all member states with a choice.
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Countdown for new UK trademark examination rules
05 Sep 2007
From October 1 2007 the UK Intellectual Property Office will examine UK trademarks only on the basis of absolute grounds, with a view to realising greater conformity with European Community trademark procedures. But what will this mean in practice?
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American Express gets credit for MY LIFE. MY CARD.
21 May 2008
The Court of Appeals for the Second Circuit recently affirmed a district court's decision that Stephen Goetz's use of the slogan 'My Life, My Card' did not confer any enforceable rights senior to American Express Co's MY LIFE. MY CARD. trademark. The court's decision provides a dramatic illustration of how the marketing copy of a supplier of intermediate goods and services does not constitute trademark use.
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Intricacies of choosing a pharmaceutical trademark
02 Apr 2008
In addition to extensive research into the chemical composition of new pharmaceutical products, companies often face another hurdle when it comes to naming products. They must consider not only what might be an attractive product trademark, but also how that mark fits with the chemical and generic names for the compounds in that product.
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Jury awards $222K verdict in novel file-sharing case
14 Nov 2007
A federal jury in Minnesota has returned a $222,000 verdict against Jammie Thomas for making 24 copyrighted sound files merely available for download on the file-sharing program KaZaA. In response, Thomas has filed a motion for a new trial or alternatively for the judge to reduce the award. Thomas has indicated that she will appeal if her motion is not granted.
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