Drakopoulos Law Firm

Protecting well-known marks

24 Apr 2013 - Albanian law and jurisprudence specify no particular thresholds or other requirements as to how much use is needed for an unregistered mark to qualify for protection as a well-known mark. This issue arose recently in a case involving four word and device marks that had been used for cigarettes manufactured by the Albanian state-owned companies at the time of the centralised economy in Albania (before 1990). Full text

Coca-Cola wins back 'coca-cola.al' domain name

17 Oct 2012 - Under the Law on Intellectual Property, registered mark owners, as well as holders of well-known unregistered trademarks, enjoy protection against unauthorised use of their trademarks as domain names. To date, the Albanian courts have not dealt extensively with the unauthorised use of trademarks as domain names; therefore, a recent court victory for Coca-Cola on this issue is noteworthy. Full text

Watermark

Google revises AdWords trademark policy: keyword advertising to go unchecked

17 Apr 2013 - Google will no longer monitor or restrict keyword advertising following receipt of trademark complaints in Australia and certain other countries. The announcement follows a recent decision of the High Court of Australia that Google was not responsible for the misleading use of the AdWords service by advertisers that paid Google to display their sponsored links in response to particular search terms. Full text

Functional ingredients: the past may come back to bite you!

10 Apr 2013 - A recent decision by the Full Bench of the Federal Court may have a far-reaching impact on the food technology sector in Australia. The case raises concerns for developers of food products with ingredients which impart beneficial functions other than supporting good nutrition. Full text

Government pledges new equity funding for innovative start-ups

13 Mar 2013 - The Australian government’s recently released Industry and Innovation Statement contains a number of measures aimed at securing and increasing the number of Australian jobs. It also contains legislative measures that directly affect existing small and medium-sized enterprises and large companies, as well as start-up businesses, engaged in developing new and innovative products and processes. Full text

Wilkinson & Grist

Examining service provider liability for copyright infringement

15 May 2013 - The unauthorised dissemination of copyright works through the Internet represents a major challenge for copyright owners worldwide. Holding network service providers liable for infringing activities by network users is the key to combating online copyright infringement effectively. A recent Supreme People’s Court judicial interpretation examines this issue. Full text

Microsoft takes action against Bai Nao Hui

27 Mar 2013 - Microsoft recently sued three companies in regard to the sale of computers pre-loaded with pirated Microsoft software. The owner and operator of the store were found to have complied with their management obligations; however, the first defendant was ordered to stop the infringing act of loading pirated software on computers and to pay damages and costs. Full text

China allows (limited) registrations for retail and distribution services

06 Mar 2013 - As of 1st January 2013, China is allowing the registration of trademarks in connection with the retail and distribution of several medicine-related goods. Specifically, seven items of retail and distribution services have been added to Class 35, including pharmaceutical preparations, medical supplies and veterinary medicines. Full text

Michael Kyprianou & Co LLC

New IP tax regime takes effect

19 Dec 2012 - Amendments to the Income Tax Law have turned Cyprus into one of the best jurisdictions for royalty and holding structures. The new regime provides attractive opportunities for structuring the exploitation of IP assets through Cyprus, in particular through the use of Cyprus-resident IP owners. Full text

The Cypriot patent system: Q&A

26 May 2010 - In 1997 Cyprus entered the European Patent Organisation and became a member of the Patent Cooperation Treaty. Therefore, the most effective way for a European patent holder to enforce its rights in Cyprus is to file a court application for a freezing order until its case is heard by the courts. Full text

Registrar finally approves registration of AIRKRAFT

24 Feb 2010 - Following a provisional refusal and two hearings, the trademark registrar has finally approved registration of the trademark AIRKRAFT in Class 12 of the Nice Classification. The provisional refusal had been based on an ex officio examination and on absolute grounds for refusal. Full text

Baker & McKenzie

Laguiole: daggers drawn between tradition and trademark law

23 Jan 2013 - Several French cities, including Deauville and Paris, have recently taken legal action against the commercial use of their names and their registration as trademarks. Most recently, the town of Laguiole found out the hard way how important trademark protection can be. Full text

Moral rights in collective works: Supreme Court takes economic view

25 Jul 2012 - The French system of droit d'auteur is often criticised as being overly favourable to authors and for its unsuitability for the protection and exploitation of works in a business environment. However, the traditional, individualistic concept of copyright is losing ground in favour of a more pragmatic, business-friendly approach. A recent Supreme Court decision illustrates this evolution. Full text

Claiming right to information injunction at pre-trial stage: Supreme Court gives the green light

25 Apr 2012 - France's implementation of the EU IP Rights Enforcement Directive led to some criticism regarding the fact that French legislation was undermined by procedural issues taking over in court. The Supreme Court recently demonstrated that the courts have made progress regarding these issues in a decision regarding the application of the right to information contained in the IP Code. Full text

Kuhnen & Wacker

Can a German patent cover acts committed outside Germany?

24 Apr 2013 - In principle, a German patent has no effect abroad; similarly, foreign patents have no effect within Germany. Therefore, as a general rule, a German patent can be infringed only by acts committed within Germany. However, in the past few years certain German court decisions have shown that there are several scenarios in which acts committed abroad can infringe a German patent. Full text

Ballas, Pelecanos & Associates LPC

Trademark exhaustion, unfair competition and consumer interests: a recent ruling

08 May 2013 - A recently published Athens Court of Appeal judgment provides an interesting example of the interplay between the areas of trademark, unfair competition and consumer protection law. Japanese watch manufacturing company Seiko initiated proceedings against a Greek company that imported Seiko watches into Greece without Seiko’s consent to the import of its products into the European Economic Area. Full text

Tobacco trademarks clash before Administrative Committee for Trademarks

24 Oct 2012 - In a high-profile opposition proceeding before the Administrative Committee for Trademarks of the Trademark Bureau, British American Tobacco (Brands) Inc challenged two Greek trademark applications owned by Philip Morris Products SA on the basis of a common trapezium device element included in prior Community trademarks for the Kent brand. Full text

Court rules on ISPs' responsibility to prevent infringement

18 Jul 2012 - The courts recently issued the first Greek judgment ordering internet service providers to take effective technological measures in order to prevent users from accessing websites which facilitate the illegal sharing and copying of digital copyrighted works. The judgment has been hailed by some as a major victory for Greek champions of IP protection. Full text

Wilkinson & Grist

3D shape mark held to be indistinctive

03 Apr 2013 - An application to register a three-dimensional shape mark for medical devices in Class 10 has been refused for being devoid of distinctive character. According to the principles of distinctiveness, in order to be distinctive enough for registration, a mark must offer a guarantee that the medical devices bearing the mark or the shape of the mark come from one specific undertaking. Full text

Does internet use qualify as trademark use?

17 Oct 2012 - The Trademarks Registry has issued a decision relating to revocation of the trademark WAVERLEY in Class 24 on the grounds of non-use. In the decision the registrar considered whether the online promotion of the owner’s products on its own website and other independent websites where the trademark appeared qualified as genuine use under the Trademarks Ordinance. Full text

Do you PAYEASE?

26 Sep 2012 - Following a registrability hearing, the Hong Kong trademarks registrar recently refused registration of the trademark PAYEASE for certain services in Classes 36 and 38. The registrar held that the mark was indistinct and consisted exclusively of a sign that designated the kind, quality, intended purpose or other characteristics of the services applied for. Full text

Lakshmikumaran & Sridharan

KIT KAT dispute: Nestlé gets a break

08 May 2013 - The Intellectual Property Appellate Board (IPAB) has ruled on a trademark dispute between Societé des Produits Nestlé SA, a Swiss-registered company, and Kit Kat Food Products over the use of the trademark KIT KAT. The key issue before the IPAB was which company had the right to use the KIT KAT trademark, and as a result whose applications were liable to be rejected under the Trademarks Act 1999. Full text

Separate copyrights for a cinematograph film and the underlying work?

01 May 2013 - In a recent ruling regarding a remake of well-known Bollywood film Zanjeer, the Bombay High Court held that the copyright owner of a cinematograph film may not also be the owner of the underlying works (eg, the screenplay and story), unless such works have been assigned to it in a manner prescribed under Section 19 of the Copyright Act 1957. Full text

Delhi High Court rules on prior publication of designs

10 Apr 2013 - The Delhi High Court recently clarified that the mere existence of a design in the records of the registrar of design in a convention country may not amount to prior publication in all cases. Rather, prior publication must be assessed on a case-by-case basis. The test shall be satisfied only if the registered design is made public and is presented with such clarity that incorporation of the design in a specific article can be judged visually. Full text

Jacobacci & Partners spa

“Some use” of trademark by bankrupt company does not solve lack of use issue

01 May 2013 - In Jobo Limited v Riccadomus Group SRL the court determined that certain activities by a bankruptcy trustee did not constitute "use" of the bankrupt company’s trademark. Activities which were deemed insufficient included renewing the trademark and sending cease-and-desist letters to purported infringers. Full text

Devices included in complex trademark may be independently protected – but the saga continues

17 Apr 2013 - After 20 years of litigation between Jägermeister and Zwack Unicum, the Court of Cassation has overturned two precedential decisions of the Court of Rome and the Rome Court of Appeal, arguing that the same trademark can be attacked separately for lack of novelty and non-use, and that devices included in a complex mark may be protected independently. But the saga is not over yet. Full text

Late filing of Italian translation of European patent specifications allowed by Board of Appeal

06 Mar 2013 - A recent decision of the Italian Board of Appeal confirmed that it is possible to file the Italian translation of a European patent within two months of expiry of the corresponding term by paying a fee and filing a request under Article 192 of the IP Code. The decision is favourable to patent owners and criticises the strict policy of the Italian Patent and Trademark Office. Full text

NLO (Nederlandsch Octrooibureau)

Advocate general confirms Dutch Court of Appeal's Cipralex decision

15 May 2013 - The validity of Lundbeck's European patent and supplementary protection certificate protecting its blockbuster drug Cipralex® has been litigated in the Netherlands since 2008. The advocate general recently issued his opinion on the issue, but the Supreme Court's final decision is still awaited. Full text

By royal appointment: IP rights implications of the coronation

01 May 2013 - As well as being an occasion of national celebration, the coronation of Prince Willem Alexander is of particular interest as the royal House of Orange and IP rights are closely entwined. Advertising agencies, companies and trademark holders that turn the coronation to their advantage can seriously benefit from the festivities – even more so if they manage to protect their creative efforts properly through IP rights. Full text

Appeal court grants injunction against infringement

20 Mar 2013 - In a technically complex case, the Court of Appeal has granted Agfa Graphics NV an injunction after finding that products offered and sold on the Dutch market by Chinese company Chendu Xingraphics Co Ltd NV infringed Agfa’s European patent specification. Full text

Drakopoulos Law Firm

Giving value to an idea

06 Feb 2013 - It is well settled that an idea cannot be protected as such by an IP right. However, since most breakthroughs or significant changes in business are based on ideas - often a simple but brilliant idea - it seems appropriate to consider just how an idea can be valued. In Romania, the Ideas Envelope offers a way to keep safe ideas which cannot yet be protected. Full text

High Court finds TOTAL cannot stand alone in Romania

10 Oct 2012 - Recently the High Court of Cassation and Justice unequivocably settled a matter regulated by Romanian law, yet subject to interpretation: using a standalone trademark combined with another trademark does not constitute use of the standalone trademark. The case involved the TOTAL mark owned by Total France for toothpaste, but used in Romania exclusively in combination with COLGATE. Full text

Gómez-Acebo & Pombo Abogados

Pre-launch activities by generic companies: patent law and unfair competition

13 Mar 2013 - The Spanish courts have previously dealt with the question of whether specific pre-launch activities carried out by generic companies in the context of marketing authorisations and price approval should be regarded as acts of patent infringement. However, there is still discussion as to whether some of these activities prove the risk of infringement of an existing patent, and whether the patentee may prevent such activities through the prohibition action established under the Patent Act. Full text

Alicante court considers trademark infringement stemming from arbitration

14 Nov 2012 - Does a licensee infringe its licensor's trademarks by discussing the termination of the licence agreement in arbitration proceedings? In a recent judgment the Alicante Provincial Court, acting as the Community Trademark Court of Appeal, said yes. Full text

Revising European patent translations: further developments

11 Jul 2012 - The Supreme Court previously dealt with the possibility of revising European patent translations originally applied for before the entry into force of TRIPs by adding product claims. However, it now appears that this option is not so clear in cases where holders of chemical-pharmaceutical European patents applied for a double set of claims for countries which excluded the patentability of chemical-pharmaceutical products. Full text

Mannheimer Swartling

Combining trademark infringement action and fraud prosecution: a new approach to combat piracy?

23 Jan 2013 - A Swedish district court has found a person guilty of both trademark infringement and fraud after having sold counterfeit goods from Thailand to Sweden. Prison sentences for Trademark Act violations are extremely rare in Sweden; thus, prosecution for fraudulent acts gives prosecutors and rights holders another and perhaps more effective tool for combating counterfeits. Full text

Auto-renewals of consumer agreements: use with caution

09 Jan 2013 - The Supreme Court recently ruled on the legality of an auto-renewal clause in a gym membership agreement. The principles set down in the judgment apply to most types of auto-renewal policies used in relation to consumers. Thus, they will also be of relevance for IP-related agreements used in relation to consumers (eg, subscriptions to music or video services). Full text

Supreme Court rules on internet-related copyright infringement

07 Nov 2012 - The Supreme Court has handed down its ruling in Kicki Danielsson, which deals with the question of jurisdiction in internet-related copyright infringements. The decision indicates that the rules of jurisdiction must be predictable and founded on the principle that jurisdiction is generally based on the defendant’s domicile, except in a few situations where the subject matter of the litigation or the autonomy of the parties justifies a different linking factor. Full text

Formosa Transnational

Pornographic films are not works under Taiwanese copyright law

24 Apr 2013 - The Taipei District Prosecutor’s Office recently held that pornographic films produced by Japanese companies were not "copyrighted works" as defined in Article 3 of the Taiwanese Copyright Act. In doing so, the office followed a 1999 Supreme Court judgment, rather than the position of the Taiwan Intellectual Property Office. Full text

New experimental-use exemption builds a more level playing field

03 Apr 2013 - Previously, the experimental-use exemption doctrine in Taiwan was very narrow – in order to qualify, the use could not be profit seeking. In addition, the Bolar exemption (which deals with specific experimental use) applied only to new drugs and not to medical devices. However, the new Patent Act broadens the scope of the two exemptions to produce a more level playing field for the pharmaceutical industry. Full text

Taiwan enhances penalties for trade secret misappropriation

27 Feb 2013 - An amendment to the Trade Secrets Act has passed its third reading in the legislature, adding regulations with significantly higher fines and longer prison terms, as well as enhanced penalties levied on cases involving misappropriation and delivery of trade secrets to overseas countries. The amendments are a bid to deter industrial espionage in the Taiwanese market. Full text

Carpmaels & Ransford

ECJ reference breathes life into Sigma’s parallel importation appeal

01 May 2013 - The Court of Appeal recently handed down a decision indicating its intention to refer questions relating to the specific mechanism to Europe's highest court, the European Court of Justice (ECJ), on an appeal from the Patents County Court. The court considered the issues in the case to be worthy of a reference to the ECJ because the specific mechanism will continue to apply until 2019. Full text

When is making a patented product not an infringement? Werit is making a repair

17 Apr 2013 - The recent Supreme Court judgment in Schütz v Werit has provided guidance on the question of when repairing a patented product by replacing a component part infringes a patent to the product as a whole. This guidance will be welcomed by those who repair patented products in the United Kingdom. Full text

Samsung v Apple – again

10 Apr 2013 - As the war for world smartphone domination rages on, the latest battle between two of the major belligerents, Samsung and Apple, has taken place in the United Kingdom. Two separate judgments have been issued in cases between the two companies, concerning three European (UK) patents held by Samsung. Samsung alleged that these patents were infringed by Apple, which counterclaimed for revocation. Full text

Kenyon & Kenyon LLP

House sub-committee holds second hearing on abusive patent litigation

01 May 2013 - The House of Representatives Judiciary Sub-committee on Courts, Intellectual Property and the Internet recently held its second hearing on abusive patent litigation. Six industry representatives spoke to address the issues related to cases brought by NPEs and the impact on competitiveness and job creation in the United States. Full text

Supreme Court endorses international copyright arbitrage

03 Apr 2013 - In a much-anticipated decision, Kirtsaeng v John Wiley & Sons, Inc, the Supreme Court has held that the copyright law’s “first sale” doctrine trumps the import restriction for a lawfully purchased copyrighted work, lawfully manufactured outside the United States. The ruling relieves numerous US businesses from having to police their inventories to determine whether individual copyrighted works require the copyright owner’s permission before being lent, resold or displayed. Full text

The new gTLD Trademark Clearinghouse: opening soon

20 Mar 2013 - The new generic top-level domain (gTLD) programme will soon bring a flood of diversity to the Internet’s domain name system – but will also increase the potential for cybersquatting. Central to addressing rights holders' concerns in this respect is the Trademark Clearinghouse, a centralised database of US and foreign trademarks to facilitate dispute resolution in the new gTLD programme. Full text

Nobody’s perfect: court addresses the standard when correcting clerical errors

13 Feb 2013 - In a recent decision the Federal Court granted a second application for judicial review of a decision issued by the commissioner of patents. The ruling provides further guidance on the factors that should be considered when exercising discretion to correct a clerical error under Section 8 of the Patent Act. Full text

Croatian Quality and Croatian Creation marks

21 Oct 2009 - The Croatian Chamber of Commerce has launched a branding project to identify high-quality and authentic Croatian goods and services. The aim is to boost the competitiveness of local products on the global market.Full text

Scope of protection for Hermès' Birkin bag trademarks

30 Sep 2009 - Hermès has failed in two claims for alleged infringement of several registered trademarks depicting its renowned Birkin bag. The court found that the Birkin bag was protected by copyright, but that the importers’ bags were not sufficiently similar for them to constitute copyright infringement. Full text

EPO Enlarged Board of Appeal rules on disclaiming “positive embodiments” of an invention

05 Sep 2012 - In Decision G2/10 the Enlarged Board of Appeal of the European Patent Office dealt with the question of whether a disclaimer infringes Article 123(2) of the European Patent Convention if its subject matter was disclosed as an embodiment of the invention in the application as filed. Full text

Can patent validity be challenged on “procedural” or “administrative” grounds?

14 Dec 2011 - Few discussions on patents deal with the aspects of the law that provide succour to the patentee. One such provision is Section 13(4) of the Patents Act. Section 13 deals with the investigation that a patent examiner should undertake to check for anticipation of a patent application by prior publication or claim. Full text

Record labels and eircom agree "three strikes" policy

25 Mar 2009 - eircom, Ireland's largest ISP, and four major record companies have reached settlement over illegal downloading and peer-to-peer file sharing. eircom will now operate a "three strikes and you're out" policy: if suspected infringers ignore two warnings from the ISP, eircom will proceed to disconnect their internet service.Full text

Significant amendment to the Patent Law takes effect

16 Jan 2013 - Further to an agreement with the US Trade Commission, the 10th amendment to the Patent Law has now come into force. The amendment forms part of the revisions to local IP laws and regulations which removed Israel from the blacklist of countries that fail to protect intellectual property adequately and enabled Israel to join the Organisation for Economic Cooperation and Development.Full text

IP High Court sets new precedent for adding new material

17 Sep 2008 - Japanese patent practice is known as the strictest in the world in regard to the prohibition on adding new material. However, the Grand Panel of the IP High Court recently rendered a judgment that may lower the standard for the prohibition on adding new material. Full text

Approving follow-on biologics in Mexico

07 Sep 2011 - Although the period for the Mexican Ministry of Health to issue regulations on the approval of biocomparables has expired, the draft regulations are still being reviewed, with input from the Mexican Association of Pharmaceutical Research and the National Association of Drug Manufacturers. Full text

Dutch NPE obtains multimillion-dollar patent infringement settlement

29 Aug 2012 - In the wake of the patent trial between Apple and Samsung in the United States, Dutch engineering company ItoM BV has enjoyed success against both companies by obtaining a multimillion-dollar licensing settlement. ItoM challenged several major electronic companies for infringement of its proprietary transceiver technology. Full text

NIPO joins the Patent Prosecution Highway

14 Dec 2011 - The Patent Prosecution Highway pilot programme between the Norwegian Industrial Property Office (NIPO) and the US Patent and Trademark Office (USPTO) has commenced. The pilot programme is designed to provide for accelerated examination procedures allowing applicants to obtain corresponding patents faster and more efficiently in both the NIPO and the USPTO.Full text

RPTO offers new Ideas Envelope service

08 Oct 2008 - The Romanian Patent and Trademark Office has launched the Ideas Envelope, a new service allowing the deposit and protection of documents containing works and creations that cannot be protected under existing IP laws. Although the service does not confer IP protection, it may be effective in establishing the origin of contested works.Full text

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. Full text

Supreme Court upholds validity of selection invention patent for first time

19 Dec 2012 - The Supreme Court recently upheld the validity of a patent for a selection invention in relation to an anti-psychotic drug, overturning an earlier Patent Court ruling. This is the first case in Korean history in which a selection invention patent has been held valid by the Supreme Court. The court also clarified for the first time what constitutes a qualitatively different effect.Full text

SWATCH versus ICEWATCH: enforcing and terminating trademark co-existence agreements

27 Jun 2012 - The Federal Supreme Court recently ruled on the appeal of Swatch Ltd, a leading Swiss watch and jewellery manufacturer, against the decision of the Berne Commercial Court to hold a trademark co-existence agreement between Swatch and TKS Ltd valid. The Supreme Court partially approved Swatch’s appeal and remanded the matter to the commercial court for reappraisal. Full text

Supreme Court sets new precedent for figurative marks

10 Sep 2008 - Owners of figurative element marks have struggled to obtain trademark registrations from the IP Office since many limitations are imposed on such registrations. However, two recent Supreme Court judgments have set a new precedent, allowing the registration of Coca-Cola and Sprite bottles as figurative marks. Full text