Watermark

A new treatment for business methods

11 Apr 2012 - Over the past two years the Australian Patent Office has issued a string of decisions rejecting applications for so-called "business method patents" on the grounds of unpatentable subject matter. The recent Patent Office decision of Celgene Corporation has been received with interest, as it marks a subtle departure from the prevailing Patent Office treatment of business method patents. Full text

Customs notices of objection – a powerful tool in an IAM strategy

28 Mar 2012 - Brand owners are becoming increasingly concerned about the quality of counterfeit goods imported into Australia. Customs assists brand owners in keeping counterfeit goods from entering Australia by enforcing notices of objection which are in place. Customs notices of objection can therefore be a powerful tool in any intellectual asset management strategy, especially if implemented early. Full text

Driving improved commercialisation outcomes for Australian research

29 Feb 2012 - Approximately 80% to 85% of the value of a company lies in its intellectual assets. However, intellectual assets other than intellectual property can be more difficult to identify. The corporate sector is beginning to appreciate that these other intellectual assets have potential value and is embarking on ways to identify and capture them. Full text

Fasken Martineau LLP

Where’s my Oasis? Juice company wins in court, but loses social media battle

16 May 2012 - In a recent case involving alleged trademark infringement, juice company A Lassonde Inc learned the hard way that the power of social media knows no bounds. Good branding strategies can no longer rest on classic formulae of trademark registration, oppositions and enforcement. Rather, brand owners must gauge the impact of their actions and anticipate public sentiment. Full text

How much disclosure is required to support utility of a patented drug?

02 May 2012 - The Federal Court of Canada has held that Sanofi-Aventis Patent 1,336,777 for clopidogrel bisulfate (Plavix) was infringed by Apotex, but was invalid on the basis of lack of utility. The same patent had previously been the subject of a complex litigation under the Patented Medicines (Notice of Compliance) Regulations, and was found to be both infringed and valid in a landmark decision by the Supreme Court of Canada. Full text

At last! CIPO starts accepting sound mark applications

18 Apr 2012 - Pursuant to a recent groundbreaking Federal Court order, the Canadian Intellectual Property Office has issued a new practice notice stating that as of 28th March 2012, the Trademarks Office is accepting applications for sound marks. Full text

Wilkinson & Grist

Persistence pays off: TONI&GUY is finally registered

25 Apr 2012 - Despite facing hurdles at the Trademark Review and Adjudication Board and the Beijing Intermediate Court, the Chinese mark TONI&GUY has finally been registered following a decision of the Beijing High Court. The 2004 application had previously been partially rejected due to a prior similar mark registered by a Chinese individual covering a similar range of beauty products. Full text

Clearing the trademark backlog

14 Mar 2012 - The State Administration for Industry and Commerce has announced that the examination period for trademark applications has been reduced to 10 months, which is comparable to the time taken by the trademark offices of the United States and Japan. Full text

Tenth Edition of Nice Classification comes into force

22 Feb 2012 - The State Administration of Industry and Commerce has announced the adoption of the 10th edition of the Nice Classification with effect from 1st January 2012. The new edition makes various changes to the classification of items across several classes. 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

Baker & McKenzie

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

Construction group loses rights in Eiffel name

22 Jun 2011 - Trademark infringement claims are often followed by counterclaims for revocation or invalidity of the claimant’s trademark, which may have devastating consequences if improperly anticipated. French construction group Eiffage learnt this expensive lesson in a recent ruling from the Bordeaux Court of Appeal. Full text

Owner of well-known mark avoids genericness

27 Apr 2011 - In the trademark field, fame has a price – trademarks can be so well known that they become generic and lose their trademark status. Therefore, the owners of popular trademarks are constantly trying to protect their property. The owner of the DIVX mark is particularly active in this respect, as demonstrated in a recent case before the Paris Court of Appeal. Full text

COHAUSZ & FLORACK

European Patent Court: under attack from friendly fire?

09 May 2012 - The European unitary patent is just around the corner, and the new European Patent Court promises to become the most efficient patent court worldwide based on a new, specific code of procedure. Most applicants are expected to shift to the new system and a new EU IP era will begin. Accordingly, future European patent filing strategies should be obvious – but are they? Full text

The Dusseldorf World Patent Court?

18 Apr 2012 - The Ministry of Justice of the State of North Rhine-Westphalia recently issued a press release stating that: "Because of their acknowledged high quality in specialist circles, the Dusseldorf patent courts have acquired the reputation of a 'world patent court'." But how accurate is this claim? Full text

Bridge or tunnel? The Germany-UK Patent Prosecution Highway

14 Mar 2012 - A new highway exists between Germany and the United Kingdom: the Patent Prosecution Highway (PPH), connecting the German Patent and Trademark Office and the UK Intellectual Property Office for the first time. Using the PPH will greatly improve efficiency and should also improve the quality of the patents issued by both patent authorities. Full text

Ballas, Pelecanos & Associates LPC

New Trademark Law finally comes into force

09 May 2012 - Following various attempts to reform the Greek trademark legislation, Greece's obligation to implement the EU IP Rights Enforcement Directive has finally led to the adoption of the new Trademark Law. Only partially enacted so far, the new law brings about several changes to the existing trademark framework. Full text

Athens court sees yellow in directory trademark dispute

28 Mar 2012 - In a recent judgment in preliminary injunction proceedings the First Instance Court of Athens ruled on a number of interesting IP protection issues, including colour protection. The applicant, the producer of the Greek Yellow Pages, had claimed that the defendant's business directory was confusingly similar to its own. Full text

Communication Review Board touches on trade dress infringement

22 Feb 2012 - The Communication Review Board, the quasi-judicial panel which reviews advertising material and implements the Code of Advertising and Communication – the self-regulatory instrument of the Greek advertising industry – recently handed down a decision addressing trade dress infringement issues. Full text

Wilkinson & Grist

Megaupload case and other internet piracy issues

16 May 2012 - The Megaupload website, which allowed users to download pirated films, music and other content, has been taken down. While Megaupload’s main servers were located in the United States, Megaupload Limited is incorporated in Hong Kong. Pursuant to the Mutual Legal Assistance in Criminal Matters Ordinance, Hong Kong Customs cooperated with the US Department of Justice in the action. Full text

WONDERFUL held to be laudatory

28 Mar 2012 - The trademark registrar has refused an application for registration of the mark WONDERFUL by Paramount International IP Holding Company for “processed nuts” in Class 29 for being descriptive and devoid of distinctive character. From the perspective of relevant consumers, the overall impression of the mark was of a laudatory and descriptive word describing the quality of the processed nuts. Full text

MARLBORO LIGHTS mark not liable to mislead public

29 Feb 2012 - In a recent decision the Trademark Registry of Hong Kong upheld registration of the MARLBORO LIGHTS trademark in respect of cigarettes in Class 34. The registrar was unable to reach the conclusion that the subject mark was misleading to the public as to the quality of the cigarettes sold at the material date based on the limited evidence submitted by the applicant. Full text

Ehrlich & Fenster Patent Attorneys

Patent reform is on the way

02 May 2012 - Further to a 2010 agreement with the US Trade Commission, the Israeli government is finalising an amendment to the Patent Law. The agreement has resulted in the removal of Israel from the blacklist of countries that fail to protect copyright adequately and enabled Israel to join the Organisation for Economic Cooperation and Development. Under the amendment, Israeli applications will publish 18 months after the filing or priority date, as in most Western countries. Full text

New examiner guidelines for software-related inventions

21 Mar 2012 - The Israeli patent registrar has issued new guidelines to determine patentable inventions by clarifying the definition of "technological invention", as defined by Section 3 of the Patent Law. The long-awaited guidelines clarify the Israeli approach regarding software inventions in an attempt to make all Israeli examinations consistent. Full text

Jacobacci & Partners

Preliminary declaration of non-infringement introduced – but with limitations

09 May 2012 - The Industrial Property Code now explicitly allows for a declaration of non-infringement in certain circumstances. Such a declaration could previously be issued only during the main judgment. A recent decision of the Court of Venice clarified the appropriate basis for such declaration by finding that a preliminary declaration of non-infringement is inadmissible if it is based only on a challenge to the validity of an IP right. Full text

Copyright and industrial designs: the saga continues

11 Apr 2012 - The Italian provision granting copyright protection to works of industrial design has been amended five times in the past 11 years. Controversial provisions establishing a long grace period for infringers that commenced their activities before 2001 have been repeatedly amended under pressure from the European Commission. The most recent amendment has now extended the grace period for infringement to 13 years. Full text

Re-establishment of rights and validation of European patents in Italy

07 Mar 2012 - A recent decision of the Board of Appeal of the Italian Patent and Trademark Office has introduced a more liberal interpretation of the re-establishment of rights following a missed deadline for filing an Italian translation of a European patent in connection with validation of the patent in Italy. Full text

ART Intellectual Property BV

The Hague leads the way in IP rights decisions

25 Apr 2012 - In recent months the courts of The Hague have issued some key decisions relating to IP rights. As well as guaranteeing the right of copyright owners to receive proper compensation for the private use of copyrighted material, the courts have made their mark in the ongoing IP battle between Apple and Samsung. Full text

Stepping up the tax facilities for innovative business

07 Dec 2011 - The government has scaled up a tax facility created in 2007 for innovative businesses operating in the Netherlands. Intellectual property qualifying for the tax facility now includes research and development acitivities, such as those aimed at technological developments of new physical products, physical production processes or software or technical research. Full text

Kim & Chang

Patent laws amended in order to implement Korea-US FTA

21 Mar 2012 - Following the ratification by both countries of the free trade agreement between South Korea and the United States, the Korean government recently amended the Patent Act and the Pharmaceutical Affairs Act. The amendments are expected to have a significant impact on anyone with patent rights in Korea, including those relating to patent term adjustment and patent-pharmaceutical product approval linkage. Full text

Enactment of Korea-EU Free Trade Agreement triggers amendments to IP laws

11 Jan 2012 - The Korea-EU Free Trade Agreement recently came into effect. As a result, a number of acts that directly relate to intellectual property have been amended. Full text

New precedent: commission finds patent invalid for the first time

07 Dec 2011 - The Trade Commission recently dismissed its investigation of unfair trade practices after finding that the asserted patent was invalid. In the past, the commission has denied investigations after the asserted patents have been invalidated by the Korean Intellectual Property Office. However, the commission has now taken the position that it has the authority to decide questions of patent validity on its own. Full text

Gómez-Acebo & Pombo Abogados

Internet protocol as personal data

01 Feb 2012 - The National High Court has confirmed the Data Protection Agency's rejection of a request by Productores de Música de España to process data regarding the internet protocol addresses of internet users in order to combat online music piracy. Full text

ECJ clarifies the exhaustion of rights

26 Oct 2011 - The Court of Justice of the European Union recently issued a new decision on the exhaustion of rights, providing clarification as to how Article 7 of the EU First Trademark Directive should be interpreted and applied in practice. The case involved the commercialisation of gas bottles and the refilling thereof. Full text

When is a work "original" under the Copyright Act?

24 Aug 2011 - The Copyright Act protects human creations only when these are “original” – that is, when they meet the requirement of originality. One of the most controversial issues refers to the determination of this requirement. In a recent ruling the Supreme Court considered this problem in relation to photographs. Full text

Mannheimer Swartling

Market Court rules on piracy of PS3 games

08 Feb 2012 - In a case brought by Sony against three defendants, the Market Court has held that as the PS Jailbreak chipset was considered to violate the Copyright Act and was thus illegal, the marketing of the product was held to violate the Marketing Practices Act, in particular the act’s prohibition on marketing which creates the impression that a product can be legally sold when it cannot. Full text

Protection in relation to third parties when acquiring IP rights

08 Jun 2011 - The Supreme Court has clarified that when acquiring IP rights, protection in relation to third parties is obtained through the acquisition agreement. If the seller terminates the agreement, the reversion of IP rights will be protected in relation to the purchaser’s creditors through the termination. Full text

Pirate Bay: appeal court increases damages, but lowers jail sentences

26 Jan 2011 - The Svea Court of Appeal has issued its judgment in the Pirate Bay case, in response to an appeal of the Stockholm District Court’s April 2009 judgment. Although the appeal court increased the amount of damages, it reduced the prison sentences laid down. Full text

Lenz & Staehelin

Indirect (contributory) patent infringement: requirements for the precautionary taking of evidence

18 Apr 2012 - The Swiss Federal Supreme Court recently clarified the provisions of the new Code of Civil Procedure regarding interim measures in general, and the precautionary taking of evidence in particular. The importance of this decision lies in the clarification that general interim measures (including the precautionary taking of evidence) may be requested in patent infringement cases. Full text

AUS DER REGION. FÜR DIE REGION rejected: court sets formal opinion poll requirements

04 Apr 2012 - In a recent decision regarding a trademark registration filed for AUS DER REGION. FÜR DIE REGION, the Federal Administrative Court has confirmed and further developed its jurisprudence regarding the requirements for opinion polls that it laid down in the OKTOBERFEST-BIER case. Full text

Court assesses use of opinion poll in OKTOBERFEST-BIER case

21 Mar 2012 - The Swiss Federal Administrative Court recently ruled on an appeal by the Munich Breweries Association against a decision of the Federal Institute of Intellectual Property refusing to grant trademark protection for the term "OKTOBERFEST-BIER" with respect to beer in Class 32. Full text

Formosa Transnational

TIPO determines royalty rates for public performance

02 May 2012 - The Taiwan Intellectual Property Office (TIPO) recently completed a review of several copyright public performance royalty rates set by copyright collective management organisations. The royalty rates reviewed and determined by TIPO will remain effective for three years. Full text

Amendments to the Patent Act

29 Feb 2012 - The Legislative Yuan has passed the amendment to the Patent Act proposed by the Executive Yuan. Among other changes, the claims and abstract are no longer regarded as part of the specification, but rather as independent sections. Full text

Warning letters must conform to Fair Trade Commission warning letter guidelines

11 Jan 2012 - Two recent Taiwan Supreme Administrative Court decisions confirm that IP owners are required to follow specified preliminary procedures when issuing warning letters to assert rights or to request the cessation of infringement. Full text

Carpmaels & Ransford

The Patents County Court – faster, easier and cheaper

11 Apr 2012 - The Patents County Court is likely to become a more popular forum for enforcing and challenging IP rights in the United Kingdom following recent changes to streamline the litigation procedure and to limit the costs and financial remedies available. Full text

Regeneron and Bayer caught in Genentech’s VEGF Trap

04 Apr 2012 - In the UK leg of the litigation involving potential blockbuster drug Eylea, the High Court has handed down a judgment that potential blockbuster drug Eylea infringes a patent held by Genentech, Inc. Full text

Wrinkles for L’Oréal during BOTOX® battle with Allergan

07 Mar 2012 - Advocate General Mengozzi has delivered his opinion on the appeal to the Court of Justice of the European Union brought jointly by Helena Rubinstein and L’Oréal against a 2010 judgment of the General Court of the European Union which dismissed appeals filed by those two companies. Full text

Kenyon & Kenyon LLP

Federal Circuit rules losing parties may appeal issue noticed for review by ITC

14 Mar 2012 - The Federal Circuit’s recent decision in General Electric Co v Int’l Trade Comm’n vindicates the right of a losing party to appeal any issue noticed for review by the International Trade Commission (ITC), regardless of whether the ITC actually decides the issue in its final determination. Full text

TTAB decision highlights value of well-conducted consumer surveys

08 Feb 2012 - In In re Country Music Association the Trademark Trial and Appeal Board, in a precedential opinion, considered whether the phrase "Country Music Association" could be registered as a trademark for “association services” relating to country music or whether such use was generic. Full text

ITC announces new ALJs and new public interest rules

14 Dec 2011 - The US International Trade Commission (ITC) recently welcomed two new administrative law judges (ALJs), David P Shaw and Thomas Bernard Pender, bringing the total number of ITC ALJs back up to six. In addition, the ITC has announced new rules relating to the public interest, specifically "to gather more information on public interest issues arising from complaints filed with the Commission". 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

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

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

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 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