Watermark

High Court considers contributory infringement provisions of Patents Act 1990 for the first time

05 Nov 2008 - The recent decision of the High Court of Australia in Northern Territory of Australia v Collins provides guidance as to the meaning of the contributory infringement provisions under Section 117 of the Patents Act 1990 in patent infringement proceedings. Through the decision, a controversial issue of Australian patent law has been laid to rest. Full text

Implementing the Cutler Review recommendations in the current economic climate

22 Oct 2008 - The recently published Cutler Review made many recommendations regarding the Australian innovation economy, including that IP policy making should form part of the general economic policy-making process. However, as the government has just allocated A$10 billion to “pump prime” the national economy, it is unclear whether the Cutler recommendations will be taken forward. Full text

Impact of showing at trade exhibitions on design novelty

01 Oct 2008 - It is not unusual for companies to display new developments at trade shows and exhibitions as early as possible in order to showcase their latest products and technology. However, unless such exposure is planned to fit in with a formal IP protection strategy, it can raise questions over whether the product remains novel for the purposes of patent or design protection. Full text

Ogilvy Renault LLP

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

Inequitable conduct in patent prosecution in Canada?

27 Aug 2008 - Since 1927 Canadian courts have held that a patent is not invalid simply as a result of a misrepresentation made during the prosecution of the application, at least in the absence of fraud. Allegations of such misrepresentation are frequently based on the applicant’s response to a request from the patent examiner under Rule 29 of the Patent Rules. Full text

Wilkinson & Grist

Draft changes to the Patent Law under public consultation

08 Oct 2008 - The Patent Law is undergoing its third revision to date and draft amendments to the law have been published for public consultation. Among other things, the draft adopts the absolute novelty standard and imposes a higher patentability threshold for design patents. Full text

Implementation of State Intellectual Property Strategy

03 Sep 2008 - The recent publication by the State Council of the State Intellectual Property Strategy Outline marked the formal launch of the implementation of the new State Intellectual Property Strategy. The strategy represents a long-term plan to transform China into a nation of advanced IP creation, utilisation, protection and administration. Full text

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. Full text

Korper I Partneri

Overlap between parallel imports and the protection of IP rights

10 Sep 2008 - Although Croatia is not an EU member state, the Market Competition Protection Agency considers EU practice when dealing with conflicts between legislation relating to trademark protection and regulations protecting competition. However, Croatia has yet to establish its own position on this issue. Full text

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. Full text

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. Full text

Markides, Markides & Co Law Office

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

Patent challenge is finally resolved after 28 years

15 Oct 2008 - On 21st August 2008 the Danish Supreme Court handed down a final ruling in a patent dispute that had been running for 28 years. Even after the presentation of a pertinent French patent, Fritz Amstrup used all the available appeal options - but at no time did he produce anything to justify the granting of the patent. Full text

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. Full text

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. Full text

Baker & McKenzie SCP

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

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. Full text

Cohausz & Florack

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? Full text

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. Full text

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. Full text

Wilkinson & Grist

NAKED mark not registrable for condoms

01 Oct 2008 - The trademarks registrar has rejected an application to register the mark NAKED for condoms on the grounds that the mark was descriptive and devoid of any distinctive character. The registrar considered that consumers would perceive the mark as describing a characteristic of the goods rather than as a badge of origin. Full text

New offence under the Trade Descriptions Ordinance

10 Sep 2008 - The Trade Descriptions (Amendment) Ordinance 2008, which was published in the Government Gazette on 27th June 2008 but has yet to come into force, introduces a new offence of false or misleading representation in regard to a seller’s connection with another party, which is akin to statutory passing off. Full text

Government moves to strengthen copyright protection in the digital environment

03 Sep 2008 - The government has sought public opinion on preliminary proposals to strengthen copyright protection in the digital environment. The proposals include providing a new exemption for temporary reproductions of copyrighted works by online service providers where technically necessary, and drawing up a compliance code of practice for online service providers. Full text

A&L Goodbody

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

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. Full text

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. Full text

Gilat, Bareket & Co, Reinhold Cohn Group

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

VERSACE marks cancelled after 20 years

20 Aug 2008 - The registrar of trademarks has cancelled five Israeli trademarks containing the word ‘Versace’ on the grounds of bad-faith registration. The registrar held that an action for cancellation on such grounds may be filed at any time under the Trademarks Ordinance, even where the relevant provision came into force after the mark was registered. Full text

Jacobacci & Partners

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. Full text

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. Full text

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. Full text

Uchida & Samejima Law Firm

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

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

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. Full text

Nederlandsch Octrooibureau

Second and further medical use claims under the EPC 2000

08 Oct 2008 - The European Patent Convention (EPC) 2000 provides for the patentability (subject to the requirements of novelty and inventive step) of a known substance or composition not only for its first use as a medicament, but also for further medical uses. Recently a referral to the Enlarged Board of Appeal was made regarding the allowability of dosage regimes in (further) medical use claims under the EPC 2000 - an issue that was generally considered resolved under the old EPC. Full text

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. Full text

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. Full text

Advokatfirmaet Grette DA

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. Full text

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. Full text

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. 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

Appeal court clarifies patent issues in Pfizer decision

10 Sep 2008 - The Barcelona Court of Appeal has issued a decision dealing with a number of key issues in the field of patents. In particular, the court clarified the meaning and scope of Article 61.2 of the Patents Act, and considered whether damages should be applied automatically in cases of patent infringement. Full text

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. Full text

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. Full text

Mannheimer Swartling

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

Implementation of EU IP Enforcement Directive delayed… again

20 Aug 2008 - The Swedish implementation of the EU IP Enforcement Directive is severely delayed. The government’s failure to implement by the original April 2006 deadline recently caused the European Court of Justice to find Sweden guilty of breaching its treaty obligations. Sweden also failed to meet the new deadline of 1st July 2008 and implementation is now scheduled for 1st January 2009. Full text

Lenz & Staehelin

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. Full text

Formosa Transnational

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

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. Full text

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. Full text

Chavalit & Associates Ltd

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

Marks & Clerk

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

In Re Bilski and its impact on business method patents

12 Nov 2008 - The US Court of Appeals for the Federal Circuit has issued its decision in In Re Bilski. Although the decision is primarily directed to so-called “business method” patents and is therefore of particular significance to the financial services and online retailing communities, it has broader application to all process patents. Full text

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. Full text

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. Full text