Watermark

A controversial end for a controversial patent application

17 Jun 2009 - IP Australia recently announced the official lapse of Australian patent application 2004309300, which relates to a human embryonic stem cell line generated by the process of somatic cell nuclear transfer. The question has been raised of whether the patent application lacks utility; however, this particular issue is beyond the considerations required for examination. Full text

Utilising the Australian Customs Service to protect trademark rights

08 Apr 2009 - Brand owners are increasingly utilising the Australian Customs Service (ACS) to assist in keeping counterfeit goods from entering Australia by filing a trademark notice of objection with the ACS. Seizure of goods at the border can prevent, or at least substantially reduce, the amount of counterfeit products that are available for sale. Full text

Pharma losing ground in pharmaceutical patent extensions of term

18 Mar 2009 - In several recent court and Patent Office decisions previously granted patent extensions of term have been reduced by the court and the commissioner of patents in light of information brought to their attention. Such decisions have provided interpretation of aspects of the provisions of the Patents Act 1990 relating to extensions of term of pharmaceutical patents. Full text

Ogilvy Renault LLP

New Canadian trademark opposition practice

22 Apr 2009 - On 31st March 2009 Canadian trademark opposition practice changed when a new practice notice issued by the Trademarks Opposition Board came into force. Significant features include the introduction of a cooling-off period and clearer guidelines with respect to the granting of extensions for opposition deadlines. Full text

Inadvertent lapse of patent rights in Canada

08 Oct 2008 - The Federal Court of Appeal has rendered a decision in DBC Marine, a closely watched case concerning the inadvertent lapse of patent rights. However, the ruling could have implications beyond the inadvertent abandonment of rights in a patent application. Full text

Protecting your natural health products

24 Sep 2008 - Natural health products (NHPs) represent a growing market in Canada. This has made protection and dealing with regulatory authorities more important for manufacturers and sellers than ever. A myth persists that no protection of intellectual property is available for NHPs; but this is a common misconception. Full text

Wilkinson & Grist

Supreme Court issues guideline on IP rights protection

06 May 2009 - The Supreme Court of China has published the Guideline on the Protection of Intellectual Property Law. Although the guideline is not binding, it does have some influence over judicial practice and legislation. Full text

Supermarket pays for background music

08 Apr 2009 - A Beijing court has ordered a supermarket to pay the Music Copyright Society of China Rmb500 for the unauthorised use of a song in its store. As MerryMart had indirectly benefited from using the song in the supermarket, it was obliged to pay royalties to the copyright owner. Full text

Notice clarifying renewal procedures issued by Trademark Office

18 Mar 2009 - The Chinese Trademark Office has issued a notice on the renewal of trademarks that are the subject of opposition, review or court proceedings. Among other things, the notice states that where the initial period of registration of the trademark is due to expire, the owner may apply for renewal within six months of the expiry of the registration. Full text

Korper I Partneri

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

The collection and distribution of fees paid to phonogram producers

25 Feb 2009 - The distribution of fees for the use of phonograms on radio and television is organised by the Association for the Protection, Collection and Distribution of Phonogram Producers’ Rights and is carried out according to the airplay of certain recordings. However, due to the ever-increasing use of the Internet, the need to regulate explicitly the use of authors’ works and their related rights in that environment has arisen. Full text

Examining the rights of phonogram producers

18 Feb 2009 - Rights for phonogram producers were first introduced into the Croatian legal system in 1999. However, the Copyright and Related Rights Act 2003 widened the scope of such rights to give phonogram producers the exclusive right to make their phonograms available to the public, among other things. Full text

Co-ownership of a Cypriot patent

29 Oct 2008 - In enacting the Patent Law the Cypriot legislative authorities missed an opportunity to enact comprehensive legal rules regulating the rights and obligations of each co-owner of a patent towards each other and towards third parties. As a result, uncertainty surrounds the issue of the co-ownership of patents. Full text

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. Full text

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. Full text

Zacco

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

SPC harmonisation in Denmark

15 Apr 2009 - The Danish guidelines on the examination of supplementary protection certificate applications explicitly state that patents for pharmaceutical compositions cannot be designated as basic patents. This has long been the position of the Danish Patent and Trademark Office, but it has now changed its position. Full text

Baker & McKenzie SCP

Jurisdiction in online infringement cases: “substantial link” theory confirmed

28 Jan 2009 - In an eagerly awaited decision, the Criminal Chamber of the French Supreme Court has confirmed the applicability of the ‘substantial link’ theory in criminal cases involving the infringement of IP rights on foreign websites. The decision puts an end to the theory that the French courts will automatically have jurisdiction to hear online infringement cases provided that the foreign website is accessible from France. Full text

New dispute resolution procedure for ".fr" domain names

22 Oct 2008 - AFNIC, the registry responsible for the ".fr" country-code top-level domain, has implemented a new online dispute resolution procedure dedicated to “obvious” infringements. The most significant advantage is that AFNIC now handles the whole procedure itself, from examination of the application to enforcement of the decision. Full text

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. Full text

Cohausz & Florack

Supreme Court confirms FRAND jurisdiction

13 May 2009 - The Supreme Court has confirmed that a defendant which refuses to offer a licence and pay a reasonable royalty cannot defend a patent infringement case based on the compulsory licence, or FRAND, defence. Full text

Intangible assets and the Accounting Modernisation Act

21 Jan 2009 - The German legislature is considering the biggest revision of the accounting rules in the Commercial Code since 1985 - the Accounting Modernisation Act. Among other things, the act modifies the provisions dealing with “self-produced” intangible assets. However, it does not embrace fair value accounting for such assets. Full text

Olanzapin decision further strengthens patent enforcement practice

14 Jan 2009 - In a recent decision the Federal Supreme Court confirmed the validity of the German part of a European patent protecting the drug Olanzapin. In its decision the Federal Supreme Court confirmed a groundbreaking ruling of the leading German patent infringement court of appeal, the Dusseldorf High Court. Full text

Wilkinson & Grist

Dunhill claims victory over imitated mark

10 Jun 2009 - The registrar of trademarks has declared invalid a registration for the trademark DEERLU obtained by French Dunhill, as it created an overall impression that was very similar to that of the trademark DUNHILL, owned by Alfred Dunhill Limited, and would lead to customer confusion. Full text

New Copyright (Amendment) Bill 2009

20 May 2009 - Section 119B(1) of the Copyright Ordinance 2007, which is not yet in force, creates a new criminal offence applicable to four types of printed work. However, the new Copyright (Amendment) Bill 2009 sets down certain circumstances in which Section 119B(1) does not apply. Full text

Increased awareness of IP rights protection

13 May 2009 - The 2008 annual survey on public awareness of IP rights protection has revealed increased awareness of IP rights among the Hong Kong people. Over 50% of respondents considered that the measures imposed by the government during the last two years have helped to protect against IP rights infringement. Full text

A&L Goodbody

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

Obligation to use registered Community trademark registrations

20 May 2009 - The EU Community Trademark Regulation requires the owner of a Community trademark to make genuine use of the mark within five years of registration. Advocate General Sharpston recently raised doubts as to whether "using a trademark in one member state only supposedly suffices to keep a [Community trademark] alive”. Full text

Court finds VENUS and VENUS IV marks to be confusingly similar

25 Mar 2009 - In a recent decision the Supreme Court found that the mark VENUS, registered for cosmetics, and the mark VENUS IV, registered for herbal laxative beverages, were confusingly similar, notwithstanding the differences in the goods and the fact that they were registered in different classes of the Nice Classification. Full text

IPTO Board of Appeals rules on validation application submitted by successor to patent owner

11 Feb 2009 - The Board of Appeals of the Italian Patent and Trademark Office recently reversed two IPTO pronouncements rejecting the validation in Italy of European patents where validation had been applied for in the name of the former patent owner which had ceased to exist due to a merger or assignment of its rights. 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

Court rejects collecting society’s bid to claim royalties for film music

04 Feb 2009 - A Mexico City appeal court has ruled that the Sociedad de Autores y Compositores de México failed to demonstrate legal standing to take action against Cinemex, a national cinema company. The collecting society failed to prove the rights of its members in the musical works or that the composers had asked it to represent them. Full text

Using the criminal law to fight online piracy

15 Oct 2008 - To date, the Mexican criminal law system has proved to be an effective means of fighting certain forms of online piracy. One recent example was a criminal action brought by the member studios of the Motion Picture Association of America against SigloX.com, an illegal television website. Full text

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. Full text

Nederlandsch Octrooibureau

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

EPC 2000 improves position of Dutch patent proprietors

10 Dec 2008 - Under Dutch patent law, patent proprietors may amend claims after grant. The conditions for such amendments are identical to the conditions imposed by the European Patent Convention (EPC) 2000 on amendments of granted patents during opposition proceedings, and substantially similar to the conditions under which the EPC 2000 allows national law to revoke patents. Full text

Advokatfirmaet Grette DA

Trademark law reform in the pipeline

03 Jun 2009 - The Ministry of Justice has published the long-awaited Bill on the Act on the Protection of Trademarks. The bill proposes various new measures, including a simpler and cheaper procedure to have trademarks cancelled for non-use which will not involve the courts. Full text

Oslo District Court applies Kodak rule in favour of TV soap Hotell Cæsar

11 Feb 2009 - The Oslo District Court has ruled that the registered trademark HOTELL CÆSAR is so well known and established as to qualify for protection under the Kodak rule. The rule affords protection to trademarks against the use of signs that would be unreasonably detrimental to the goodwill in those trademarks, even if the disputed signs or marks do not relate to identical or similar goods. Full text

Supreme Court reasserts principle of restraint in Norwegian Patent Office judicial review cases

17 Dec 2008 - Few patent cases make it all the way to the Supreme Court. However, in November 2008 the Supreme Court heard and decided an appeal in a case concerning judicial review of the Norwegian Patent Office’s refusal to grant a patent. In the decision the Supreme Court reassessed the well-established Swingball principle. 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

Selection inventions in light of recent Barcelona Provincial Court decisions

29 Apr 2009 - The Spanish courts use the European Patent Office Guidelines for Examination to interpret the European Patent Convention and national laws. In two recent cases the Barcelona Provincial Court considered the requirements for selection inventions set out by the guidelines. Full text

Applying prosecution history estoppel in patent infringement cases

18 Feb 2009 - A recent judgment has welcomed and confirmed the application in Spain of the limit known as prosecution history estoppel to the doctrine of equivalents in patent infringement cases. Previously, the Spanish courts had disagreed over whether prosecution history estoppel must be taken into account when applying the doctrine of equivalents. Full text

Using the hypothetical royalty fee to assess patent infringement damages

10 Dec 2008 - In recent years the Spanish courts have taken a divided approach to the application of the hypothetical royalty fee criterion when assessing damages for patent infringement. However, a recent Supreme Court decision has resolved the conflict in favour of the patentee-friendly approach. Full text

Mannheimer Swartling

The Pirate Bay – district court judgment appealed

03 Jun 2009 - In April 2009 the Stockholm Distict Court rendered its highly anticipated verdict in The Pirate Bay Case, finding four men behind the website guilty of contributory copyright infringement. However, the defendants and the plaintiffs have appealed the verdict and the case will now be heard by the Svea Court of Appeal. Full text

The Pirate Bay Case: latest developments

12 Nov 2008 - The proceedings against the founders of The Pirate Bay website in Sweden which were initiated in 2006 are still ongoing. The website facilitates the sharing of a wide range of files which are reproduced and made available to the public without the consent of the relevant rights holders. The main hearing has now been set for mid-February 2009. Full text

Strengthened protection for trade secrets

29 Oct 2008 - Since the entry into force of the Act for the Protection of Trade Secrets almost 20 years ago, the conditions for running businesses have changed in many ways. To deal with this, the government appointed an inquiry to review certain issues regarding the protection of trade secrets and to consider whether the act should be amended to fulfil the needs of modern businesses more effectively. Full text

Lenz & Staehelin

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

Names of official institutions as trademarks: POST and SWISS ARMY

04 Feb 2009 - It is not unusual for government entities to commercialise products and provide specific services, or allow licensees to do so, while using the entities’ names as brands. In two recent cases the courts reached different conclusions regarding the trademarks used for such brands. Full text

Formosa Transnational

Impact of proposed Patent Act amendments on the pharmaceutical industry

22 Apr 2009 - The Taiwan Intellectual Property Office has proposed a wide range of amendments to the Patent Act. The proposed amendments cover a broad range of issues, including major changes to the provisions on pharmaceuticals. Full text

TIPO publishes draft of amended Trademark Law

14 Jan 2009 - The Taiwan Intellectual Property Office has completed a draft of the amended Trademark Law. Among other changes, the draft law permits the trademark registration of motion marks, scent marks and holographic marks, and provides for a priority right based on a prior exhibition date. Full text

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. 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

Recent developments under Section 337

17 Jun 2009 - The US International Trade Commission has become an increasingly popular venue for patent infringement litigation. Such actions are brought pursuant to Section 337 of the Tariff Act of 1930 and are available to owners of US patents, provided that the "domestic industry" requirement is met. Recent developments show that the ITC will continue to be an attractive and popular forum for IP disputes. Full text

Significant decisions addressing written description and obviousness in biotechnology patents

06 May 2009 - The Federal Circuit recently released two important decisions concerning the patentability of biotechnology claims: one concerning written description and the other concerning obviousness. Full text

Federal Circuit resolves challenges to USPTO patent prosecution rules

22 Apr 2009 - In a majority decision the Federal Circuit has upheld the US Patent and Trademark Office's authority to limit effectively the number of continuations and to require applicants to conduct a prior art search if presenting more than a limited number of claims. Full text