Watermark

The probably invalid patent: is clearing the way a necessary strategy?

17 Feb 2010 - Occasionally a question arises regarding the proposed exploitation of a patent that is considered to be invalid. However, there is also a further question as to whether Australian law imposes a legal duty for the "infringer" to take action to revoke the patent(s) blocking its strategy. Full text

The Australian innovation patent: a "perfect storm" for rights enforcement?

03 Feb 2010 - Two recent decisions of the full bench of the Federal Court of Australia have confirmed the significant potential of the innovation patent as a powerful weapon in the arsenal of proprietors of patentable intellectual assets. Innovation patents were introduced in 2001 with the intention of providing second-tier protection for innovative technologies. Full text

Towards a stronger and more efficient IP rights system

13 Jan 2010 - IP Australia has issued the first of two papers setting out details of proposed changes initially discussed in its earlier series of consultation papers. The new consultation paper explains how IP Australia intends to progress each of the proposals put forward in the first-round consultation papers. Full text

Fasken Martineau

Application for judicial review dismissed as abuse of process

03 Mar 2010 - In Maple Leaf Foods Inc v Consorzio Del Prosciutto Di Parma the Federal Court of Canada dismissed Maple Leaf Foods Inc's application for judicial review of a notice for the adoption and use of the trademark PARMA (and ducal crown design) as an official mark in Canada. The court concluded that the application was an abuse of process. Full text

Trademark rights trump title of goods, says court

10 Feb 2010 - The Ontario Superior Court of Justice has confirmed that trademark rights trump title of goods in Canada. This was the message delivered to an applicant which sought a declaratory order stating that the respondent’s trademark rights would not be infringed by the applicant’s importation into Canada of goods bearing the COTTON GINNY marks. Full text

Wilkinson & Grist

Trademark Office clarifies valid proof of use for cancellation actions

16 Dec 2009 - The Chinese Trademark Office recently laid down specific examples of evidence of use that a registered trademark proprietor can provide to defend successfully against a cancellation action for three years' non-use of that mark. It listed valid proof of use for both product and service marks. Full text

Global financial crisis leads to drop in international registration of trademarks

04 Nov 2009 - This year, there has been a large reduction in internatonal trademark registration filings. This has motivated the Chinese Trademark Office to launch initiatives to increase awareness of registration among the public. Full text

Civil disputes involving well-known trademarks

05 Aug 2009 - The Supreme People’s Court has issued an Interpretation on Issues of Laws Applicable to Civil Proceedings involving Well-Known Trademarks following a public consultation. According to the interpretation, the court can recognise that a particular trademark has acquired 'well-known' status only where it is absolutely necessary and in certain prescribed cases. Full text

Croatian Quality and Croatian Creation marks

21 Oct 2009 - The Croatian Chamber of Commerce has launched a branding project to identify high-quality and authentic Croatian goods and services. The aim is to boost the competitiveness of local products on the global market. Full text

Recent developments in IP legislation

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

Border measures and other methods of Customs intervention against infringers

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

Michael Kyprianou & Co LLC

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

Examining the Cypriot trademark system

03 Feb 2010 - In Cyprus, the legal framework for trademarks is governed by both national legislation and international treaties, such as the Paris Convention for the Protection of Industrial Property. Any natural person or legal entity is entitled to apply for and own a mark, provided that it uses or intends to use the mark. Full text

Scope of protection for Hermès' Birkin bag trademarks

30 Sep 2009 - Hermès has failed in two claims for alleged infringement of several registered trademarks depicting its renowned Birkin bag. The court found that the Birkin bag was protected by copyright, but that the importers’ bags were not sufficiently similar for them to constitute copyright infringement. Full text

Burberry defeats Zebra in Supreme Court ruling

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

A CORONA copy?

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

Baker & McKenzie

Google Books infringes French copyrights, but not trademarks

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

Court finds that eBay benefits from hosting services provider defence

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

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

COHAUSZ & FLORACK

New rules put time limit on divisional applications

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

Federal Supreme Court passes stem cell case to ECJ

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

Options for trademark opposition brought into line with international practice

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

Wilkinson & Grist

New companies bill benefits trademark owners

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

Registrar finds TOMBOY mark descriptive and indistinctive

24 Feb 2010 - The registrar of trademarks recently refused an application to register the word mark TOMBOY in respect of clothing, footwear and headgear in Class 25 of the Nice Classification on the grounds that the mark consists exclusively of a sign which designates the characteristics of the goods applied for and is devoid of distinctive character. Full text

Refined proposals on copyright protection in the digital environment

09 Dec 2009 - Taking into account the views received on the preliminary proposals published last year and the latest developments overseas, the government recently refined its proposals to enhance copyright protection in the digital environment. The proposals attempt to strike a balance between the interests of copyright owners, internet service providers and users. Full text

Luthra & Luthra Law Offices

Keeping your finger on the pulse

20 Jan 2010 - While the courts are applying statutory provisions that afford protection to well-known marks, the lack of guidance on the evidence required to prove that a mark is well known means that brand owners need to rely on judicial precedent in their actions. Full text

Comparative advertising in India – puff under scrutiny

02 Dec 2009 - In a landmark decision, the High Court of Madras has attempted to tighten the rules on comparative advertising. However, the ruling may have opened the door to inconsistency in the interpretation of the law in this area. Full text

Registering unconventional trademarks

09 Sep 2009 - The Indian Intellectual Property Office is putting together a manual on trademark practice and procedure which provides thorough guidelines on the requirements to register non-traditional marks. This article examines the latest proposals in detail. Full text

Record labels and eircom agree "three strikes" policy

25 Mar 2009 - eircom, Ireland's largest ISP, and four major record companies have reached settlement over illegal downloading and peer-to-peer file sharing. eircom will now operate a "three strikes and you're out" policy: if suspected infringers ignore two warnings from the ISP, eircom will proceed to disconnect their internet service. Full text

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

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

Passing off: two key decisions from the High Court

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

No miracle for publisher of religious law code

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

Parallel registration of two GALILEE WINERY marks allowed

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

Descriptive use exception does not obviate need for disclaimer

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

Jacobacci & Partners

Import of products from another EU country insufficient to exhaust trademark rights

17 Feb 2010 - The Tribunal of Turin has held that the import of products from another EU member state is not sufficient to exhaust trademark rights. It found that Young Importers had unlawfully sold decoded products without knowing the exact origin of those products, thus committing trademark infringement as it could not prove that the rights were exhausted. Full text

Supreme Court rules on protection of three-dimensional trademarks

09 Dec 2009 - The Supreme Court has upheld an appeal filed against a decision of the Italian Trademark Office refusing registration of a three-dimensional trademark. The decision established in detail the steps and criteria for the examination of three-dimensional trademark applications. Full text

Board of Appeals rules on the validations of European patents by successors to patent owners

30 Sep 2009 - The Patent Office Board of Appeals has ruled that the office is not obliged to verify an applicant’s right to patent validation and should simply presume that the applicant owns the patent right and is entitled to enforce it. The decision is good news for owners of transferred rights and should help them cut both costs and paperwork. 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

Mexico’s hotel for the stars highlights power in the name

27 Jan 2010 - A recent marketing campaign highlights some of the intricacies inherent in Mexico’s trademark legislation. A well-known hotel in Mexico City had hired someone dressed as a chauffeur to stand at the arrival gates at Mexico City International Airport holding a sign bearing the names of celebrities alongside the hotel’s trademark. Full text

Repercussions expected on medicine advertising campaign

02 Dec 2009 - A recent high-profile marketing initiative by a Mexican pharmaceutical company appears to be a clear example of unfair competition. This article puts the campaign in context and looks at the likely outcome for the advertiser. Full text

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

Advertising Standards Authority keeps “Patent Expert” from Dutch market

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

Use of Teletubbies on merchandising products

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

Court bans further PINK RIBBON mark applications

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

Advokatfirmaet Grette

Supreme Court awards compensation for use of photograph

03 Feb 2010 - In a case involving the unauthorised use of a photograph of a snowboarder in a bid prospectus for the 2018 Olympic Winter Games, the Supreme Court has overruled the district and appeal courts to find for the snowboarder. The judgment shows the pragmatic and practical approach taken by Norwegian courts when deciding issues not clearly governed by statute. Full text

Court refuses to grant injunction against ISP in illegal file-sharing case

25 Nov 2009 - The Asker and Baerum District Court has rendered its long-awaited ruling in the Telenor file-sharing case. Although it found Telenor to be both an active and a passive contributor to the infringement, its contributory infringement was held not to be unlawful and thus was not actionable. Full text

Court of Appeal applies doctrine of equivalents as redefined by Supreme Court

11 Nov 2009 - Less than two weeks after the Supreme Court issued a key decision in Eisai v Krka, the Borgarting Court of Appeal has referred to that decision and applied the test defined therein to an appeal concerning Krka’s alleged infringement of Merck Co, Inc’s licensed patent for losartan. 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

Advertising regulation under draft Bill for General Audiovisual Communication Law

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

The nullity allegation of a patent in a precautionary measures proceeding

07 Oct 2009 - One commonly used defence against patent violation is for defendants to challenge the partial or total validity of the disputed patent by filing an objection or counterclaim. However, there is some confusion as to whether defendants should make this nullity claim at a proceeding for a preliminary injunction or wait until the main proceeding. Full text

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

Mannheimer Swartling

Appeal court reverses district court decision in first enforcement directive case

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

Rights holders succeed in first IP rights enforcement case

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

Pirate Bay: Swedish Court of Appeal dismisses bias plea; issues conditional fine order

16 Sep 2009 - A re-trial application filed by the defendants in The Pirate Bay has been rejected. The defendants had argued that the district court judge was biased due to his engagement in the Swedish Copyright Association and the Swedish Association for the Protection of Industrial Property. Full text

Supreme Court sings the praises of sound marks

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

AFRI-COLA comes from Africa

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

Supreme Court considers Madrid Agreement versus Madrid Protocol

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

Formosa Transnational

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

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

IP Court clarifies whether online publication counts in patent spat

30 Sep 2009 - The IP Court of Taiwan has handed down valuable guidance on when online information is deemed to have been published under the Patent Act. In particular, the court found that even limiting access to a network by a password or a payment is not enough to prevent “publication”, according to the act. Full text

Taiwan provides safe harbour for ISPs in copyright infringement cases

22 Jul 2009 - The Legislative Yuan has completed the final reading of the ISP Liability Limitation Bill, which strengthens the protection of copyrighted materials on the Internet. The amendment has its origin in the US Digital Millennium Copyright Act of 1998 and the safe harbour practices adopted by other countries in the past decade. 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

Motion for summary judgment denied on issue of fraud intent

24 Feb 2010 - In DaimlerChrysler Corp v American Motors Corp the Trademark Trial and Appeal Board followed the recent decision of the US Court of Appeals for the Federal Circuit in In re Bose Corp and denied DaimlerChrysler's motion for summary judgment on the question of whether American Motors Corp had attained registration of its trademark by way of fraud on the USPTO. Full text

The role of the expert witness in calculating damages

13 Jan 2010 - The Federal Circuit Court of Appeals has set aside a US$358 million damages award in Lucent v Gateway, finding that the evidence was insufficient to support the jury’s verdict. The case provides some useful guidance on the role of expert witnesses in working out damages. Full text

Tacking standard "exceedingly strict", says Ninth Circuit

09 Dec 2009 - In One Industries LLC v Jim O'Neal Distributing Inc the US Court of Appeals for the Ninth Circuit has held that the standard for tacking marks to claim priority based on the date of first use is "exceedingly strict" and very rarely met. The court refused to tack two iterations of the same basic mark - an "O" with an apostrophe - because the shape of the "O" had changed. Full text