Watermark

BOOST gets a boost

18 Jan 2012 - The Australian Trademarks Office recently decided in favour of Boost Juice Holdings Pty Ltd in its opposition to an application by Boost Foods Holdings Pty Ltd to register the mark BOOST FOODS. The BOOST FOODS application was rejected in its entirety, as Boost Juice had established the "reputation" opposition ground under Section 60 of the Trademarks Act. Full text

Preliminary skirmish concludes in Apple versus Samsung down under

21 Dec 2011 - The opening gambit in the Australian arm of the global dispute between Apple and Samsung has finally drawn to a close. The High Court of Australia refused Apple's request for special leave to appeal from a decision of the Full Bench of the Federal Court denying a preliminary injunction against the launch of the Galaxy Tab 10.1. Full text

Plain packaging tobacco products: is there a trademark issue?

23 Nov 2011 - As part of reforms to reduce smoking and the harmful effects of tobacco, the government has passed the Tobacco Plain Packaging Act 2011. The act restricts trademarks from being placed on tobacco products or their retail packaging, thus preventing such trademarks from being used as a design feature to divert attention away from health warnings. Full text

Fasken Martineau LLP

Amazon sent back to the Patent Office

21 Dec 2011 - The Federal Court of Appeal recently released its decision regarding Amazon.com's now famous patent application for a 'one click' internet shopping method, filed in 1998. The patent application has survived this latest test and has been returned to the Patent Office for expedited examination. Full text

Get ready for the anti-spam act

24 Aug 2011 - Bill C-28, which aims to regulate unsolicited electronic commercial messages or "spam", is expected to come into force at the end of Autumn 2011. The act will require Canadian individuals and companies, as well as foreign individuals and companies sending commercial electronic messages to Canada, to obtain prior consent from recipients before sending them commercial electronic messages. Full text

Monoclonal antibodies now patentable in Canada without working example

27 Apr 2011 - In a recently published decision the Canadian Patent Appeal Board endorsed the principle established in other jurisdictions that in cases where an antigen is a novel polypeptide and has been fully characterised, a pioneering applicant can claim monoclonal antibodies that are immunoreactive with the polypeptide without the applicant actually having made or deposited a specific embodiment of such antibody. Full text

Wilkinson & Grist

Apple loses its IPAD trademark in China

25 Jan 2012 - The Intermediate People’s Court in Shenzhen, Guangdong has rejected Apple’s claim of ownership of the IPAD trademark, holding that Proview Technology Shenzhen Company Limited had prior registration of the mark. Proview has also filed a claim of approximately US$1.6 billion against Apple for alleged infringement of the trademark. Full text

Cognac marks considered misleading as to geographic origin

21 Sep 2011 - The Trademarks Law prohibits the registration of a trademark that incorporates a geographical indication when the commodity concerned does not originate from that geographical region, such that the trademark would mislead the public. The Chinese Trademark Office recently upheld oppositions to marks which would have misled consumers to believe that the products came from the Cognac region. Full text

Volume of trademark applications heads for record high

07 Sep 2011 - According to the State Administration for Industry and Commerce, in the first half of 2011 the number of trademark applications increased by 34.84% compared to the same period in 2010. As a result, this year China is expected to achieve a record high for the number of trademark applications filed. 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

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

Online copyright infringement: when Google Images finally meets French law

09 Mar 2011 - While Google’s exemption from liability for trademark infringement through its AdWords service has now been well established by the Supreme Court, the situation with regard to copyright infringement remains more uncertain. The latest service to be considered is the Google Images search, in regard to which the Paris Court of Appeal recently issued a long-awaited ruling. Full text

COHAUSZ & FLORACK

Statutory attorney fees: thou shalt not lie

25 May 2011 - The Dusseldorf Appeals Court recently issued a decision with the unorthodox title, "Thou shalt not lie". This title, chosen by the leading German patent infringement appeals court, referred to the obligation of the parties to disclose the value of litigation in good faith. Legally, the value of litigation is the plaintiff's interest in the claims asserted (eg, back damages plus future injunctive relief). Full text

A new IP era in Europe – consensus gentium

30 Mar 2011 - The European Court of Justice has concluded that the envisaged agreement creating a European and Community Patents Court was not compatible with the provisions of EU law. However, there is no reason to believe that the political process will be stopped at this point based on legal arguments. Full text

A new IP era in Europe?

08 Dec 2010 - The EU Competitiveness Council recently featured a prominent item on its agenda. As a result of this meeting, it appears as if the introduction of the Community patent may finally become a reality, having accounted for more than 30 years of endless consultations among EU member states. Full text

Wilkinson & Grist

Registrar reclassifies goods following Nice changes

01 Feb 2012 - The 10th Edition of the Nice International Classification of Goods and Services came into force on 1st January 2012. The revisions and changes made by the new edition will affect the Trademarks Registry's cross-search list of identical or similar earlier registered trademarks and applications, used in the examination of new applications for registration in certain classes. Full text

Review of the patent system

18 Jan 2012 - Under the existing patent regime, two types of patent are granted: standard patents and short-term patents. As this system has been in place for more than 10 years, the government has carried out a public consultation seeking views on a review of the patent system. Full text

Draft Code of Practice for online service providers

16 Nov 2011 - The secretary for commerce and economic development has sought public views on a draft Code of Practice to provide practical guidance to online service providers on the relevant practices and procedures to be adopted in order to limit or prevent copyright infringement on their service platforms. The code sets out the steps to be taken by a service provider in order to send a notice to a subscriber following a complaint of alleged infringement. Full text

Saikrishna & Associates

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

Appealing to the Intellectual Property Appellate Board

28 Sep 2011 - Although the Intellectual Property Appellate Board (IPAB) has been operating for some time, its real powers are yet to be clarified. For example, there is confusion as to which orders of the controller of patents are appealable before the IPAB: can an interim order passed by the controller of patents or the Opposition Board in a pre-grant or post-grant opposition proceeding be appealed before the IPAB? Full text

Supreme Court settles jurisdiction questions

17 Aug 2011 - The identical jurisdiction provisions of the Copyright Law and the Trademarks Law, which stipulate that the competent court to try an infringement suit is the court within whose territorial jurisdiction the plaintiff resides, carries on business or works for gain, irrespective of whether the cause of action arose at such place, have been the subject of much debate. The Supreme Court settled these issues back in 2004 in Exphar v Eupharma. Full text

Jacobacci & Partners

Patent Office launches examination of national applications

02 Nov 2011 - The Italian Patent and Trademark Office has introduced examination proceedings for those national patent applications for which a search report and a preliminary patentability opinion has already been issued. The new examination stage on the merits of inventions is based on the results of the international search report and the written opinion annexed thereto. Full text

Interpreting the provisions governing the registration of names as trademarks

28 Sep 2011 - In a recent decision the Grand Chamber of the Court of Justice of the European Union (CJEU) confirmed that the General Court had correctly interpreted Article 8(3) of the Italian Code of Industrial Property, which requires a party to give consent for his or her name to be registered as a Community trademark. The decision is a reminder that the CJEU examines only the application of procedural rules, and not the merits of a dispute. Full text

Domain names: reform or revolution?

10 Aug 2011 - To date, private parties can register only second-level domains; they can decide which second-level domain they wish to register in association with a top-level domain selected in a pre-determined list approved by the Internet Corporation for Assigned Names and Numbers. All this will change in 2012, when individuals and companies will be admitted to file applications for new generic top-level domains. Full text

ART Intellectual Property BV

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

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

Third parties can now request expedited examination of trademark applications

23 Nov 2011 - The Korean Intellectual Property Office has amended its Regulation on Requests for Expedited Examination of Trademark Applications. Under the amended regulation, a third party can request expedited examination of a trademark application when it has received a warning letter from the applicant that it is using a mark that is identical or similar to the pending trademark application in connection with identical or similar goods. 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

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

Anti-piracy case referred to the ECJ

27 Oct 2010 - The Supreme Court has asked the European Court of Justice for a preliminary ruling in a case concerning an order to provide information pursuant to the Swedish Copyright Act. The request concerns whether the EU Data Retention Directive prevents an internet service provider from being ordered to reveal to a rights holder the identity of a subscriber suspected of infringing IP rights. Full text

Lenz & Staehelin

Decoding the "Swissness" legislation: what constitutes "Swiss made"?

30 Nov 2011 - Swiss goods and services enjoy an excellent reputation worldwide for the values that they represent, such as quality, exclusiveness and reliability. This reputation, highly appreciated by customers, represents a clear competitive advantage as it enables the positioning of these goods and services in higher price brackets. However, a negative consequence is that the abuse of indications of source has increased in recent years. 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

Formosa Transnational

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

Influence of draft Patent Act amendment on protection of biotech patents

09 Nov 2011 - According to Article 24 of the Patent Act, animal and plant varieties are not patentable subject matter. However, as an incentive to encourage the development of the Taiwanese biotech industry, in the draft amendment to the Patent Act the Taiwan Intellectual Property Office has proposed to allow animal and plant varieties as patentable subject matter in the near future. Full text

Amendments to Trademark Law passed

19 Oct 2011 - A major amendment of the Trademark Law has been passed by the Legislative Yuan and promulgated by the Presidential Office. The new Trademark Law is expected to take effect in mid-2012. As the Trademark Law was last amended in 2003, the amendment contains substantive revisions. Full text

Carpmaels & Ransford

SPC decisions rain down from the ECJ

25 Jan 2012 - Towards the end of 2011 there was a flurry of activity at the Court of Justice of the European Union, with Europe’s highest court handing down a number of decisions relevant to supplementary protection certificates – a unique form of IP right that provides an additional monopoly that comes into force after expiry of a patent. Full text

Kenyon & Kenyon LLP

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

House reignites debate over copyright protection of fashion designs

30 Nov 2011 - The House of Representatives has reignited the debate regarding the extension of copyright protection to fashion design through the introduction of the Innovative Design Protection and Piracy Prohibition Act. Policymakers are being urged to pass legislation by sectors of the fashion industry seeking additional tools to enforce IP rights against copyists and counterfeiters. Full text

The war of the rose-coloured shoes

26 Oct 2011 - An ongoing case between Christian Louboutin and Yves Saint Laurent pits French couture footwear house against French couture fashion house, but the decision will affect the entire fashion industry, from high-end to mass market. At stake is the freedom to use colour for fashion versus the rights of a trademark owner to stake a claim and build a brand. 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

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

Supreme Court reverses Eve-Eva trademark decision

21 Dec 2011 - In May 2010 then Deputy Commissioner of Patents and Trademarks Noah Shalev Shlomovits ruled that Eva cigarettes, produced by Aktsionerno Droujestvo Bulgartabac Holdings in Bulgaria, were not confusingly similar to Eve cigarettes, produced by Philip Morris. The Supreme Court recently ruled on Philip Morris's appeal of this decision.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

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