Watermark

When did your patent portfolio last have a health check?

25 Aug 2010 - Like all other assets, intellectual assets require proper care and maintenance. In the case of patents, there is more to this than just paying periodic renewal fees. Aside from managing the content of your patent portfolio to ensure that it has continuing relevance to your commercial strategy, you must also review your important patent assets to ensure that they remain valid and useful. Full text

The Australian innovation patent: the "perfect storm" loses a little wind?

11 Aug 2010 - The Australian innovation patent has a number of real advantages when considering a holistic view of protection for an invention. In practice, these have led to innovation patents being extremely difficult to invalidate. However, a recent decision provides a reminder that there are limitations as to how robust an innovation patent can be considered to be. Full text

Why the Bilski decision matters in Australia

21 Jul 2010 - Innovative Australian companies that do business in the United States can take comfort from the recent US Supreme Court decision in Bilski, which confirmed the availability of patent rights for processes generally and did not exclude business processes and methods. Full text

Fasken Martineau

Living off fame: protecting a celebrity's name as a trademark in Canada

01 Sep 2010 - In a globalised market it is essential to protect a celebrity's name properly in each jurisdiction. However, in Canada, protecting a celebrity's name can be a legal headache. This is why understanding the different types of protection available and using them in a timely manner is important. Full text

Be wary of paid advertisements: keyword advertising in Canada

28 Jul 2010 - The use of competitors’ names in keyword advertising is an emerging area of the law of trademarks and passing off, but has not received judicial consideration in Canada until now. The British Columbia Supreme Court recently considered the issue of confusion as it has been developed in trademark jurisprudence when deciding whether the use of such keywords constituted misleading advertising. Full text

Court clarifies what constitutes special circumstances in absence of use

09 Jun 2010 - In Cobalt Brands LLC v Gowling Lafleur Henderson LLP the Federal Court has reinstated a previously expunged registration for the trademark USQUAEBACH for Scotch whisky. The court concluded that the owner of the mark, Cobalt Brands LLC, had met the criteria for special circumstances of non-use. Full text

Wilkinson & Grist

Judicial opinion to clarify certain trademark issues

21 Jul 2010 - The Supreme People’s Court has issued the Opinion on Several Issues Regarding Administrative Adjudication of Trademark Grant and Confirmation. The opinion lays down certain general guidelines – for example, widespread use of a trademark is a factor in favour of granting or maintaining its exclusive rights, and vice versa. Full text

Customs Borders Regulations amended to strengthen protection

16 Jun 2010 - The Intellectual Property Customs Protection Regulations have been amended. The new regulations increase the penalties against individuals who carry or transport an unreasonable quantity of infringing goods. In addition to the goods being confiscated, as set out under the previous regulations, Customs may now impose a fine. Full text

The Tort Law and internet service providers

21 Apr 2010 - The first Chinese law specifically dealing with torts will come into force in July 2010. Article 36 of the new law provides that an internet service provider may be held jointly and severally liable for the infringing acts of a website operator that uses its services. The article's clear wording provides an effective way to deal with IP rights infringement on the Internet. 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

Recent developments in IP legislation

22 Jul 2009 - As part of Croatia's negotiations to join the European Union, the government must harmonise its legislative framework with EU law. The negotiations over Chapter VII on IP protection have been completed and changes to Croatian IP legislation have been made as a direct consequence of these negotiations. Full text

Border measures and other methods of Customs intervention against infringers

06 May 2009 - The Croatian legislation sets down border measures to protect IP rights. These measures are structured in accordance with global trends in IP protection and are designed to provide an environment that does not tolerate IP rights infringement in any form. Full text

Michael Kyprianou & Co LLC

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

MISS COOL accepted for registration

10 Feb 2010 - The trademarks registrar has accepted an application to register the trademark MISS COOL in Cyprus. The registrar had previously filed a provisional refusal against the trademark application, but revoked this refusal following a hearing. 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

Burberry defeats Zebra in Supreme Court ruling

01 Jul 2009 - The Supreme Court has issued its final ruling in a dispute between UK company Burberry and Zebra A/S, which operates a number of TIGER stores in Scandinavia. The court held that although Zebra's wallets had a pattern closely resembling Burberry's well-known check pattern, it was unlikely that Burberry's sales had been affected as the two products had different end users. Full text

A CORONA copy?

20 May 2009 - The Maritime and Commercial Court has held that a Danish company that sold online copies of a designer chair produced in China infringed copyright in the chair. However, it remains legal for a Danish individual to import a copy of the same chair if it is produced and purchased in a country where no copyright exists in the original chair. Full text

Baker & McKenzie

New appeal court rulings add confusion to sports issues

07 Apr 2010 - In two decisions issued in late 2009 the Paris Court of Appeal was asked whether the owners of trademarks ROLAND GARROS and JUVENTUS could prevent online betting sites from using these signs to identify and/or promote their services. The court took a different stance in each case. Full text

Google Books infringes French copyrights, but not trademarks

03 Feb 2010 - The Paris High Court has found Google Inc liable for copyright infringement just as it is about to launch Google Editions, which allows consumers to purchase books previewed on Google Books. It held that Google infringed numerous protected works by digitising and displaying them on Google Books without the authorisation of the relevant copyright owners. Full text

Court finds that eBay benefits from hosting services provider defence

24 Jun 2009 - The Paris Court of First Instance has rejected L'Oréal SA’s claims of trademark infringement against eBay, holding that the latter was acting as a hosting services provider in supplying announcement spaces against remuneration. However, the court highlighted the fact that trademark owners and eBay must collaborate to fight counterfeiting, and called for the parties to go to mediation. Full text

COHAUSZ & FLORACK

New rules put time limit on divisional applications

10 Feb 2010 - On 1st April 2010 new Implementing Regulations to the European Patent Convention will enter into force. The regulations will have a major impact on the hitherto generous provisions regarding the filing of divisional applications in the European Patent Office patent prosecution process. Full text

Federal Supreme Court passes stem cell case to ECJ

09 Dec 2009 - The Federal Supreme Court has referred a case dealing with the patentability of methods to generate cells from embryonic stem cells to the European Court of Justice (ECJ). In presenting the case to the ECJ, the Supreme Court is seeking EU-wide uniform interpretation of Article 6 of the EU Legal Protection of Biotechnological Inventions Directive. Full text

Options for trademark opposition brought into line with international practice

02 Dec 2009 - As of 1st October 2009, an opposition to a newer trademark registration at the German Patent and Trademark Office need no longer be based on a registered trademark or trademark application. Rather, it is now possible to base such an opposition on certain unregistered signs. Full text

Wilkinson & Grist

New criminal offence regarding certain types of printed work

04 Aug 2010 - Further provisions of the Copyright (Amendment) Ordinance 2007 recently came into force. They lay down a new business end-user criminal offence of regularly distributing or making with a view to distributing infringing copies of printed books, newspapers, magazines and periodicals which results in financial loss for the relevant copyright owners. Full text

Court of Appeal strips High Court NAKED decision

12 May 2010 - The Hong Kong Court of Appeal has upheld the registrar of trademarks' 2008 refusal to register the trademark NAKED for condoms. In the latest instalment of this long-running case, the appeal court found that the registrar had applied all the correct tests and that the High Court judge had interfered with the registrar’s discretion without grounds. Full text

New companies bill benefits trademark owners

03 Mar 2010 - In order to address concerns raised by trademark owners regarding the problem of "shadow companies" in Hong Kong, the new Companies (Amendment) Bill 2010 considers, among other things, certain changes to the company name registration system with a view to enhancing enforcement against possible abuses by shadow companies. Full text

Luthra & Luthra Law Offices

Balancing legal protection in India

18 Aug 2010 - An understanding of the relationship between trademark and design law is essential to protecting trade dress in India. The judiciary has long recognised trade dress and the get-up of goods, and has traditionally provided protection from unauthorised appropriation under the tort action of passing off. Full text

Securing domain name protection in India

26 May 2010 - As India continues to present itself as an attractive destination for investment, an increasing number of both Indian and international companies are seeking to assert their trademark rights by obtaining ".in" country-code top-level domains as part of their Indian operations. Full text

Use of Gandhi's portrait on commemorative pen prohibited

31 Mar 2010 - Following a writ petition filed by the Centre for Consumer Education before the Kerala High Court, Montblanc has been ordered not to use Mahatma Gandhi’s portrait on a commemorative pen. The petitioner alleged that Montblanc’s use of Gandhi’s portrait violated the Emblems and Names (Prevention of Improper Use) Act 1950. 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

IP tax incentives to form key pillar of Irish economic recovery plan

10 Dec 2008 - The Irish government recently announced improved IP tax incentives in the hope that Ireland will become a global centre for IP development. It is also reported to be close to announcing a plan involving a range of tax incentives to entice foreign companies to establish research and development (R&D) activities in Ireland and to foster the development of indigenous R&D. Full text

Passing off: two key decisions from the High Court

10 Sep 2008 - Two recent cases before the Irish High Court highlight the value of an action for passing off as a means of protecting brand features in the absence of trademark registration. The first considered a claim against United Biscuits, while the second involved St Patrick’s Whiskey. Full text

No miracle for publisher of religious law code

26 Nov 2008 - The Jerusalem District Court has dismissed claims of copyright infringement, misappropriation, passing off, unjust enrichment and defamation brought by Ketuvim Almog Ltd, the publisher of an indexed edition of Maimonides's Mishneh Torah (a classic code of Jewish religious law), against
a Jewish institute of learning. Full text

Parallel registration of two GALILEE WINERY marks allowed

01 Oct 2008 - In cross-opposition proceedings, the deputy registrar of trademarks has dismissed oppositions to the registration of the marks GALILEE WINERY and GALILEE MOUNTAINS WINERY for goods in the same class, holding that both marks could coexist on the register. Among other things, the registrar held that the market for wine and that for other alcoholic beverages are clearly distinguishable. Full text

Descriptive use exception does not obviate need for disclaimer

27 Aug 2008 - The registrar of trademarks has upheld a decision to make the registration of three device marks containing the words "lady speed stick" conditional on the applicant including a notice of disclaimer for "lady" and "stick". Among other things, the registrar held that the applicant could not rely on the descriptive use exception under Section 47 of the Trademarks Ordinance. Full text

Jacobacci & Partners

Impact of EU enlargement on trademark protection

23 Jun 2010 - The accession of certain West Balkan states to the European Union is expected to take place within the next few years. The enlargement of the European Union will raise problems in connection with Community trademarks - such registrations will automatically become effective in the new member states, but conflicts with existing marks may occur. Full text

Italian opposition proceedings: from utopia to reality

19 May 2010 - Regulation 33/2010 has come into force, providing implementing regulations for opposition proceedings as set forth in the Code of Industrial Property. However, in practice, the procedure cannot yet be used and is unlikely to be available during 2010 for a variety of reasons. Full text

Board rules on confusingly similar device marks based on copyright protection

10 Mar 2010 - The Office for Harmonisation in the Internal Market Board of Appeal has upheld a claim by Gucci regarding its G logos and has revoked a Community trademark registration for the device mark G GLITZY. This case is significant because the board recognised the existence of an earlier right according to the national law of only one EU member state. 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

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. Full text

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. Full text

Olivares & Cia

New Linkage Gazette omits formulation patents

01 Sep 2010 - The Mexican Trademark and Patent Office (IMPI) has made available the new edition of the Linkage Gazette. Regrettably, IMPI excluded formulation patents, disregarding the petition by the Pharmaceutical Association of R&D Companies and failing to follow Supreme Court jurisprudence. Full text

Protecting trade dress

04 Aug 2010 - IP law allows the protection of products through distinctive signs such as trademarks, trade names, slogans and appellations of origin. However, while these four options may seem adequate to ensure protection, IP law still provides no protection for trade dress. Full text

Battling counterfeits through Customs

23 Jun 2010 - For many years Mexico has faced significant problems regarding the sale and distribution of counterfeit products. The Mexican government, with the collaboration of IP rights owners, has taken various enforcement actions against counterfeiters. The most noteworthy of these have been the actions taken at the border to challenge the import of counterfeits into Mexico. Full text

Advertising Standards Authority keeps “Patent Expert” from Dutch market

21 Oct 2009 - The Advertising Standards Authority has stopped a man from calling himself a “Patent Expert”. His action was deemed to violate the Advertising Standards because “Patent Expert” is not an official term and because the defendant’s qualifications were insufficient. Full text

Use of Teletubbies on merchandising products

10 Jun 2009 - The Court of The Hague recently ruled on whether use of a character under licence meant use of the trademark. The question at issue was whether use of the TELETUBBIES trademark on merchandising products could be interpreted as use of the trademark with the intention to inform the public as to the origin of the products involved. Full text

Court bans further PINK RIBBON mark applications

04 Mar 2009 - The Court of The Hague has imposed a ban on the registration of the Benelux and Community trademarks for the word mark PINK RIBBON and any marks using a combination of the words “pink” and “ribbon”. The court held that the Scheffrahn group had deliberately forced the Pink Ribbon Foundation to spend huge sums of money by repeatedly filing new applications and subsequently withdrawing them. Full text

Advokatfirmaet Grette

Supreme Court finds something fishy in nudity scene broadcast

12 May 2010 - The Supreme Court has upheld an actress's right to control the broadcasting of her frontal nudity scene from the film Burnt by Frost. The court found that state broadcaster NRK had taken an excerpt from the original film beyond what was required for the purpose, and that the broadcasting of the nude scene was therefore illegal. Full text

Research foundation may be liable for patent infringement

14 Apr 2010 - The Supreme Court has held that a research foundation delivering means for the exploitation of a patented invention may be liable for patent infringement, even where such means are developed during commissioned research work. Full text

Patent law harmonisation continues

07 Apr 2010 - The Patents Act has been amended to introduce a Bolar-type exemption from the exclusive right of the patent owner. In addition, the Norwegian Patent Office has issued a decision removing the "reasonable technical difference" requirement from the novelty test. 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

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. Full text

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. 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 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. Full text

Gómez-Acebo & Pombo Abogados

Copyright issues surrounding press clippings

04 Aug 2010 - Law 23/2006 introduced into the Copyright Act the complex regulation of press clipping activities. The new regulation has led to certain lawsuits pending before the courts. The main interpretive problem raised with the regulation is the identity of “the author” to whom the rule refers is: should it be the journalist who wrote the article or the company that owns the newspaper? Full text

Liberalisation extended to collective management of IP rights

07 Apr 2010 - Law 25/2009 has amended the Copyright Law in regard to the modification of certain laws in order to adapt them to the Law on Free Access to Service Activities and the Exercise Thereof. However, a study of the amendments shows that the brunt of the modifications are unrelated to liberalisation of the collective management of IP rights. Full text

Advertising regulation under draft Bill for General Audiovisual Communication Law

13 Jan 2010 - The draft Bill for the General Audiovisual Communication Law, which will transpose into Spanish law the EU Audiovisual Media Services Directive, has been approved by the Spanish Congress and is now being analysed by the Senate. In particular, the bill establishes an obligation to identify advertising messages clearly to distinguish them from other audiovisual content and regulates advertising targeted at minors. Full text

Mannheimer Swartling

Interim injunctions may be based on partially invalid claims

02 Jun 2010 - Traditionally, the Swedish courts have been restrictive in allowing patentees to overcome prior art by amending patent claims in invalidity proceedings. However, following a 2007 amendment to the Patent Act, the Svea Court of Appeal recently concluded that a request for an interim injunction may be granted on the basis of a partially invalid patent claim. Full text

Appeal court reverses district court decision in first enforcement directive case

16 Dec 2009 - The Svea Court of Appeal recently reversed a district court’s decision in the first Swedish case involving the EU IP Rights Enforcement Directive. The appeal court held that internet service provider ePhone should not be required to hand over user information requested by five book publishers. Full text

Rights holders succeed in first IP rights enforcement case

23 Sep 2009 - The first case has been heard under Sweden’s new Intellectual Property Rights Enforcement Directive Law. A district court has ordered an internet service provider to provide five publishers with the identity of an individual who was allegedly responsible for the illegal dissemination of audio books over the internet. Full text

Supreme Court sings the praises of sound marks

16 Sep 2009 - Since July 2005 the Swiss Intellectual Property Office has refused to register sound marks. However, the Supreme Court recently reopened the door to such registrations by allowing August Storck KG to register a sound mark for chocolate. Full text

AFRI-COLA comes from Africa

10 Jun 2009 - In a recent case the Supreme Court upheld a previous judgment that the international trademark AFRI-COLA could not be registered for goods in International Classes 29 and 30 on the grounds that the mark was descriptive and deceptive for goods that did not come from Africa. Full text

Supreme Court considers Madrid Agreement versus Madrid Protocol

11 Feb 2009 - The Supreme Court has analysed and applied the differences between the Madrid Agreement and the Madrid Protocol. Although this is one of very few Supreme Court decisions interpreting the Madrid System, it was issued before Article 9sexies of the Madrid Protocol came into force in Switzerland, giving primacy to the protocol where the countries concerned are members of both conventions. Full text

Formosa Transnational

Business custom prevails in music and lyrics licensing

23 Jun 2010 - It is vital that both parties to a licensing agreement decide on the scope, duration and other limitations of the licence. However, even when expressly stipulated in the licensing agreement, the licence duration and scope may go beyond what was agreed to due to custom or business practice. The IP Court recently ruled on such a case. Full text

Taiwan decriminalises specific types of secondary use of works

24 Mar 2010 - The Legislative Yuan has amended the Copyright Act in order to decriminalise certain specific types of secondary use, with the intention of improving the stability of the licensing market. In addition, the Copyright Collective Management Organisation Act has been promulgated in order to simplify the royalty rates and organise collectors into a single group. Full text

All change at the TIPO: the Accelerated Examination Programme and a new fee structure

27 Jan 2010 - The Taiwan Intellectual Property Office (TIPO) has formally commenced use of the Accelerated Examination Programme. An applicant can now apply to speed up patent examination by providing an examination report or official action response received for a corresponding application abroad. In addition, the TIPO has amended the fee structure for patent examination. 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

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. Full text

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. Full text

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. Full text

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. Full text

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? Full text

Kenyon & Kenyon LLP

A few problems with licences and how to avoid them

25 Aug 2010 - In negotiating licence agreements and mediating, arbitrating or litigating disputes involving them, the same types of provision seem to cause a disproportionate amount of the trouble. This article identifies a few such provisions and presents some ideas for avoiding them. Full text

Bilski: "machine or transformation" not exclusive test for patentable processes

21 Jul 2010 - In its long-awaited decision in Bilski v Kappos, the Supreme Court has held that the "machine or transformation" test is not the exclusive test for determining whether a claimed process is eligible for patenting under Section 101 of the patent statute. The opinion effectively overrules the Federal Circuit's earlier decision. Full text

Waxman-Hatch litigation strategies for generic and brand companies

14 Jul 2010 - The Waxman-Hatch Act offers opportunities to manufacturers of both brand and generic drugs in terms of market entry and exclusivity periods. A canny and fluid litigation strategy can help parties to take best advantage of the provisions available. Full text