Illinois Institute of Technology

International reports

Sent to over 18,000 subscribers, the IAM Weekly email features reports from an international team of correspondents who report on recent developments in IP law and practice in their home jurisdictions, as well as strategic issues and those relating to finance, deal-making and valuation.

Most recent

Fraserburgh

IP finance More reports

29 Oct 2014
No hay regla sin excepción

The fashion industry's business model is to combine the lowest-cost manufacturing with algorithmic analysis of customer data to refine sales and marketing campaigns generating more bang for the buck. However, Spanish clothing chain Zara has turned this logic on its head. The market loves Zara because it delivers. But what does it do differently? Full text

15 Oct 2014
Zen and the art of idea maintenance

There is a much-quoted statistic that 80% of market capitalisation now resides in intangible assets. Many presenters imply that these intangible assets are intellectual property and in that way legitimise the dramatic importance of intellectual property in the 21st century. But is this a realistic analysis? Full text

08 Oct 2014
Alice in Patent Land: investment strategy in a post-Alice world

The final decision in Alice v CLS Bank got me thinking about the impact of this on investors, business models and company valuations. Neither the mainstream financial press nor Wall Street has picked up on the potential price impact of having the vast majority of your patents extinguished overnight, but the unintended consequences of this decision should perhaps now register as a significant risk factor for investors. Full text

EverEdgeIP

IP transactions More reports

03 Sep 2014
The Moneyball phenomenon – new metrics for R&D planning

How do most businesses decide where to focus their R&D? In many cases, R&D – especially the 'R' – has a strong aspect of 'revelation' to it. However, directing R&D (and thus IP creation) need not be revelatory or reactionary. The secret is to look at the metrics of innovation in a different way. Full text

25 Jun 2014
Hard and soft rights combine to solve the age-old question: function or form?

Following objections to its latest technology, Google Glass, Google announced that it had formed a strategic partnership with Luxottica “to design, develop and distribute a new breed of eyewear for Glass” to be released in 2015. Intellectual property can have a positive combinatorial effect for a product – particularly when blending somewhat diverse sets of rights. What does this mean for a product and what this can mean for the parties involved? Full text

04 Jun 2014
Knowing what you buy: the importance of IP audits in the transaction process

Transactional due diligence often lacks a comprehensive audit of the business’s intellectual property. Given that intangible assets now constitute 80% of the assets of most businesses and that intellectual property is itself considered a major and critical asset class, its absence should be deemed conspicuous during any major business transaction due diligence. Full text

Foresight Valuation Group LLC

IP valuations More reports

05 Nov 2014
What’s in a name? Valuation lessons from the demise of Nokia

Microsoft has officially announced its decision to discontinue the Nokia branding on smartphones. A closer look at the Nokia brand in light of Microsoft’s decision reveals a fast devaluation, the likes of which have rarely been seen in the consumer space. What lessons can we learn from Nokia regarding the factors that affect brand valuation in the marketplace? Full text

25 Jun 2014
When big iron meets big data: unlocking value creation opportunities in the Internet of Things

The global enthusiasm surrounding the ecosystem known as the 'Internet of Things' (IoT) has positioned data as one of the most valuable intangible assets that a company can own and monetise. However, the valuation of technologies in the emerging IoT ecosystem will largely depend on the revenue models around data monetisation. Full text

21 May 2014
IP due diligence in M&A transactions: how to avoid another Rolls Royce

IP due diligence plays a critical role in the acquisition process, but acquisitions are risky deals. Due diligence all too often becomes an exercise in verifying the target’s financial statements rather than conducting a fair analysis of the deal’s strategic logic and the acquirer’s ability to realise value from it. Full text

Drakopoulos Law Firm

Albania More reports

08 Oct 2014
Competence to hear IP-related disputes

The law provides that administrative courts are competent to decide on disputes arising from individual administrative acts issued by a public body in the course of its administrative activity. However, an issue arises with respect to IP-related disputes between private entities in which the Albanian Patents and Trademarks Office is involved as a defendant or a third party. Full text

09 Jul 2014
Recent amendments to Industrial Property Law

Parliament has adopted certain amendments and procedural changes to the Industrial Property Law, with the aim of harmonising Albanian law with EU legislation and reflecting Albania's accession to the European Patent Convention. The IP rights affected by the amendments are industrial designs, patents and trademarks. Full text

07 May 2014
Non-use cancellation actions: ambiguities regarding burden of proof

Albanian IP law requires that a trademark be used in order to protect its validity. If the mark owner does not use its trademark for the goods or services for which it was registered for an uninterrupted period of five years, the trademark is subject to cancellation. Recent case law reflects the complexity of non-use cancellation actions, particularly with regard to the burden of proof. Full text

Watermark

Australia More reports

27 Aug 2014
Personal property securities and intellectual asset management: thinking outside the box

The Personal Property Securities Act 2009 was introduced to reduce the uncertainties in creating, registering and searching for security interests held over personal property in Australia, and to an extent it has achieved this purpose. However, the act can have surprising consequences for rights holders and IP financiers. Full text

20 Aug 2014
Minister proposes patents, not papers, as basis for research grants

In a recent address, Minister for Industry Ian Macfarlane stated that university researchers should receive government grants based on the number of patents they are granted, not the number of academic papers they publish. Although the minister is correct in identifying that Australia is lagging in its protection of intellectual property, his proposal has faced harsh criticism and has fundamental flaws. Full text

13 Aug 2014
Plain packaging for alcohol may happen sooner than you think

Since late 2012 cigarettes and other tobacco products in Australia must be sold in plain packaging and include large health warnings and disturbing graphics of the ill-health effects of smoking. This led to debate over how plain packaging might spread to other industries, particularly the alcohol industry. Now New South Wales has taken initial steps that may eventually lead to plain packaging laws for alcohol products. Full text

Gowling Lafleur Henderson LLP

Canada More reports Archive

23 Jul 2014
Federal Court affirms standing for innovative drug manufacturer

What rights do innovative drug manufacturers have in situations where generics challenge certain Health Canada decisions but do not name the innovators as parties? A recent Federal Court decision highlights that innovators should monitor judicial review proceedings at the Federal Court for proceedings implicating their rights. Full text

16 Jul 2014
Experimental testing in patent actions: Federal Court issues notice to the profession

The Federal Court of Canada recently issued a notice to the profession with respect to experimental testing in patent actions. The notice codifies existing and general practices for patent infringement actions and provides more structure and certainty for litigants considering experimental testing in connection with their actions. Full text

09 Jul 2014
Federal Court of Appeal updates Section 8 damages law

The Federal Court of Appeal has issued its highly anticipated decisions concerning claims by Teva and Apotex for damages pursuant to Section 8 of the Patented Medicines (Notice of Compliance) Regulations. These claims followed prohibition proceedings involving Apotex and Teva related to generic versions of ramipril, marketed by Sanofi as ALTACE®. Full text

Wilkinson & Grist

China More reports

22 Oct 2014
Examination criteria for sound marks defined

Following the clarification of filing requirements, the Chinese Trademark Office has defined the examination criteria of sound marks in China. Certain sounds are prohibited from being used and registered as trademarks. These include sounds that are identical or similar to the national anthem of China or other countries and sounds that have an adverse influence. Full text

20 Aug 2014
New regulations on well-known trademarks issued

The State Administration for Industry and Commerce has issued the new Regulations for the Recognition and Protection of Well-Known Trademarks 2014. The 2014 regulations amend the 2003 regulations in a number of ways, including by expressly stating that recognition of a well-known mark will be considered on a case-by-case basis and following a separate request in writing to the relevant authority. Full text

23 Jul 2014
Filing requirements for sound marks clarified

Sound marks are registrable in China pursuant to the new Trademark Law, which took effect on May 1 2014. The new Trademark Implementation Regulations have clarified the filing requirements. In order to register a sound mark, the applicant must fulfil certain requirements. Full text

Michael Kyprianou & Co LLC

Cyprus More reports

25 Sep 2013
Halloumi versus hellim: more than just a trademark battle?

The European Court of Justice recently dismissed a challenge to the registration of the mark HELLIM for cheese, approving it for registration. The registration was challenged by the owner of the collective Community trademark HALLOUMI based on the likelihood of confusion. Full text

19 Dec 2012
New IP tax regime takes effect

Amendments to the Income Tax Law have turned Cyprus into one of the best jurisdictions for royalty and holding structures. The new regime provides attractive opportunities for structuring the exploitation of IP assets through Cyprus, in particular through the use of Cyprus-resident IP owners. Full text

26 May 2010
The Cypriot patent system: Q&A

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

Kuhnen & Wacker

Germany More reports

13 Aug 2014
EPO introduces new acceleration scheme

Following consultation with users, the European Patent Office (EPO) has published a new early certainty from search scheme. The new scheme comes in addition to the 2010 rules for dealing with requests filed under the programme for accelerated prosecution of European patent applications. The EPO seems to be aiming for the world record in processing speed – but will the new scheme work? Full text

23 Jul 2014
Aspects of preliminary injunction proceedings in Germany

Preliminary injunctions are an important remedy in the German legal system. While they have frequently been used in clear-cut unfair competition cases, the courts have also started to make this remedy readily available to patent and even utility model owners. In such cases, the main problem is usually proving the validity of the patent or utility model with sufficient certainty. Full text

21 May 2014
Michelangelo’s David and Botticelli’s Venus – an attractive couple

The German Federal Patent Court has delivered a groundbreaking decision concerning the distinctiveness of a device mark. The applicant had applied for a device mark showing images of Michelangelo’s David and Botticelli’s Venus. Although the German Patent and Trademark Office had previously rejected the application for lack of distinctiveness, the court has now overturned that decision. Full text

Drakopoulos Law Firm

Greece

01 Oct 2014
Claiming damages for trademark infringement

In 2012 the new Trademark Law incorporated the EU Enforcement Directive into Greek law, significantly reforming the country’s trademark regime. The long-awaited implementation had been delayed, since the initial plan was to incorporate the relevant provisions into the existing legal framework. Full text

25 Jun 2014
Swimming among counterfeits: anti-counterfeiting solutions in the Greek islands

Counterfeiting in the Greek islands increases noticeably in summer – partly in terms of volume and sales points, but primarily in terms of visibility. Brand owners, managers and their staff witness the problem for themselves when they are trying to relax on holiday, given the numerous shops selling counterfeit goods on the islands. Full text

Wilkinson & Grist

Hong Kong More reports

03 Sep 2014
Bill proposes to update copyright regime

The Hong Kong government recently introduced the Copyright (Amendment) Bill 2014 into the Legislative Council for its first and second readings. The bill combines new proposals formulated following earlier public consultation on the treatment of parody and legislative proposals under the former Copyright Bill 2011. Full text

30 Apr 2014
Application for 'Cool Fresh' in Class 3 refused on absolute grounds

The trademarks registrar has refused an application by Unilever NV to register 'Cool Fresh' as a trademark in respect of goods in Class 3 including “soaps; perfumery; shaving foam; preparations for the bath and shower etc". The applied-for mark failed to distinguish the trade origin of the goods. Full text

05 Feb 2014
Registrability requirements of movement marks and holograms clarified

A movement mark or hologram is registrable as a trademark in Hong Kong provided that it is a sign that is capable of distinguishing the goods or services of one undertaking from those of others, and can be represented graphically. The Hong Kong Trademarks Registry recently issued a note presenting its examination practice and clarifying the filing requirements for this special category of mark. Full text

Lakshmikumaran & Sridharan

India More reports Archive

24 Sep 2014
Novartis continues its successful injunction spree

Following a suit for permanent injunction instituted by Novartis AG against Ranbaxy Laboratories Ltd for infringement of the vildagliptin patent, the Delhi High Court has restrained Ranbaxy from manufacturing, selling or offering for sale by any means, directly or indirectly, compounds or formulations containing vildagliptin either alone or in combination with other compounds. Full text

27 Aug 2014
Delhi High Court rules on Vringo-ZTE patent infringement litigation

A single judge of the Delhi High Court recently vacated an earlier ex parte interim injunction restraining Chinese telecoms major ZTE Corporation and its Indian subsidiaries from infringing Indian Patent 200572, owned by Vringo Infrastructure Inc. The patent in question was granted for an invention titled “A method and a device for making a handover decision in a mobile communication system”. Full text

06 Aug 2014
Judgment poised to transform licensing of public performance rights of Bollywood music

The Bombay High Court recently passed an interim order on the legitimacy of Novex Communications licensing public performance rights on behalf of certain music labels, despite not being a registered collecting society under the Copyright Act 1957. The court restrained Novex from threatening to sue anyone for copyright infringement on the grounds that it was not a registered collecting society. Full text

Jacobacci & Partners spa

Italy More reports

19 Nov 2014
A rose by any other name does not necessarily cause confusion

In Viparis the Board of Appeal determined that when two trademarks include figurative elements and the earlier trademark also includes a distinctive verbal element, the two trademarks must be compared as a whole, without a separate analytical comparison of each of their components. Full text

08 Oct 2014
Defendant pokes holes in screen patent claims

The Court of Milan has denied injunctive relief under the doctrine of equivalents to a plaintiff which tried to base an infringement claim on subject matter explicitly disclaimed in the background section of its patent. The court emphasised that the patent specification represents the essential starting point for determining the correct weight to be ascribed to claimed features. Full text

23 Jul 2014
The deer makes the difference: autonomous protection for each part of composite mark

In a recently published decision the Supreme Court ruled that for a composite mark consisting of two autonomously distinctive elements, the imitation of one element amounts to an imitation of the trademark as a whole. The court recognised the risk of confusion between the composite marks of appellant Mast Jägermeister AG and appellee Zwack Unicum. Full text

NLO

Netherlands More reports Archive

29 Oct 2014
The value of a sound trademark

The world’s most valuable trademarks are APPLE ($98 billion), GOOGLE ($93 billion) and COCA-COLA ($79 billion). Not only does the standard word mark or logo of these brands represent great value to the balance sheet of the business, but certain sound trademarks may achieve even greater recognition and represent even greater value than the associated word mark or logo. Full text

22 Oct 2014
Retro: registering 'lost' brands

Retro has made a comeback in recent years. Brands which used to be all the rage but then disappeared from the market are now getting a new lease of life. Reintroducing such names and benefiting from the goodwill often still associated with the brand is an attractive proposition for companies. But is it allowed? Full text

15 Oct 2014
Hollandaisas slips up on flip-flops

In a case brought by flip-flop manufacturer Havaianas, the Central Netherlands District Court held that the trademarks HOLLANDAISAS and HAVAIANAS were not similar enough to create confusion. However, the judge held that the Hollandaisas flip-flops were in breach of the Havaianas design. Full text

Hechanova & Co

Philippines

16 Jul 2014
Non-compete clauses in licensing agreements

Most licensing agreements – particularly those involving the sharing of trade secrets, know-how, confidential information and other IP rights – contain post-termination non-compete clauses to prevent injury to the licensor. The Documentation Information and Technology Transfer Bureau of the IP Office of the Philippines has held that such clauses can apply for only one year. Full text

15 Jan 2014
Court of Appeals says no to field trials of genetically modified aubergines

In a September 2013 decision which has alarmed the joint foreign chambers of commerce, universities and scientists in the Philippines, the Court of Appeals issued a permanent injunction against the conduct of field trials for genetically engineered aubergines on biosafety grounds. Full text

Drakopoulos Law Firm

Romania More reports

04 Jun 2014
Combating counterfeiting in Romania

In recent years, the global trade in counterfeit goods has boomed, particularly in transit countries where such goods enter the EU market, such as Romania. Identifying the real origin of counterfeit goods is a complex issue for Romanian Customs, since it requires a high level of vigilance and constant safeguarding of the entire Romanian territory from potential counterfeit products. Full text

09 Apr 2014
Impact of code changes on IP disputes

During the past three years Romanian legislation has undergone significant changes, which has had a major effect on IP rights. Considering that entirely new codes are being enacted and are entering into force, the changes are of paramount importance since they govern a wide array of legal issues governing IP rights. Full text

27 Nov 2013
Protecting your domain name

The importance of domain name protection is becoming increasingly evident to market players in Romania. Following initial mandatory mediation proceedings before Romania Top-Level Domain, parties may opt to pursue further disputes before the World Intellectual Property Organisation or the Romanian courts. Full text

Gorodissky & Partners

Russia More reports

24 Sep 2014
Inexorable XEROX

The Moscow Appellate Court recently ruled on an action brought by Xerox Corporation against a Russian person who had registered an internet site under the name 'hpxerox.ru'. As well as finding that there was confusing similarity between the trademark and the domain name, the decision dealt with the issue of which court is competent to hear IP rights disputes. Full text

27 Aug 2014
Life gets harder for collective rights management organisations

Collective rights management organisations wield considerable power: they make claims for the unauthorised performance of music, collect remuneration for the public performance and pay that remuneration to the relevant performer. This business model worked smoothly until recently, when the High Commercial Court issued a ruling that complicates this process. Full text

16 Jul 2014
New IP legislation friendlier for rights holders

The first Russian IP laws were not adopted until 1992, but the IP legislation has come of age quickly. Forthcoming changes to the legislation are intended to make the regime friendlier for rights holders. The result is a comprehensive set of laws which complies with the requirements of international law and practice. Full text

Mannheimer Swartling

Sweden More reports

08 Oct 2014
Registering geographical terms as trademarks

The EU Council's common position on trademark law reform envisions closer cooperation between the Office for Harmonisation in the Internal Market and national offices, which should achieve closer harmonisation in the application of trademark law. The registrability of geographical terms as trademarks is one area in which Sweden's position differs from that of the European Union. Full text

05 Mar 2014
District court applies two-decade-old EPO decision

Nearly two decades have passed since the European Patent Office Enlarged Board of Appeal handed down Decision G3/92, dealing with a European patent application made by an unlawful applicant. The decision was recently applied by a Swedish district court, which declared the plaintiff to be entitled to an invention covered by a Patent Cooperation Treaty application that had irrevocably lapsed several years earlier. Full text

04 Dec 2013
Court addresses copyright assignment in online advertising

Contractual clauses on copyright assignment have been construed narrowly by the Swedish courts using the principle of specification, according to which the assignor of the copyright is presumed to retain any rights not clearly specified in the assignment clause. A Svea Court of Appeal decision addressed a clause on copyright assignment in the general terms and conditions applicable when advertising on a Swedish online marketplace. Full text

Formosa Transnational

Taiwan More reports

22 Oct 2014
Profile for green-tech patent applications

Since January 1 2014 the Taiwan IP Office has accepted requests for accelerated examination of green-tech patents. By making such an accelerated examination request, an office action may be received approximately 70 days after the filing date, which is much shorter than the average 29-month examination period for general patent applications. Full text

10 Sep 2014
Must a company name include identical wording to a trademark in order to infringe?

Pursuant to a recent IP court decision, the wording in a company name need no longer be identical to a well-known trademark for the rights holder to claim that the company name infringes its well-known trademark. As the use of well-known trademarks as company names has become increasingly common, disputes between the owners of trademark rights and company names are also increasing. Full text

20 Aug 2014
Increasing investment in the cultural and creative industries

The Financial Supervisory Commission and the Ministry of Culture have announced a joint project to encourage investment in the cultural and creative industries in Taiwan. The project focuses on connecting the financial industry and the cultural and creative industries, and aims to increase loans from state-owned banks to the cultural and creative industries to at least NT$360 billion in the next three years. Full text

Carpmaels & Ransford LLP

UK More reports

19 Nov 2014
The IPEC leaves its cap on

The caps that are in place for the Intellectual Property Enterprise Court, formerly known as the Patents County Court, provide claimants and defendants alike with certainty when it comes to damages/account of profits and orders in relation to costs. Abbott v Design & Display Ltd focused on how the cap relating to awards of damages/account of profits should be applied in actions involving more than one defendant. Full text

05 Nov 2014
Court decides milk bottle patent case without trial

The UK courts have the power to dispose of all or part of a case without a trial if there is no real prospect of success. In a decision upheld by the Court of Appeal, Alpla UK Limited has successfully made use of these powers, receiving a favourable declaration of non-infringement from the High Court without the need for a trial. Full text

20 Aug 2014
Extended protection for medical devices – a hot topic in the United Kingdom

Manufacturers of medical devices are requesting an increasing number of patent term extensions in a bid to recover the cost of getting regulatory approval. Recent decisions show that the UK Intellectual Property Office is taking a strict approach when examining patent term extensions for medical devices, but there are still situations where extra protection might be available. Full text

Kenyon & Kenyon LLP

USA More reports

17 Sep 2014
Supreme Court rules on patentable subject matter in Alice

The Supreme Court has issued its decision in Alice Corporation v CLS Bank International. This case dealt with what constitutes patentable subject matter under 35 USC § 101. The decision affirmed the Federal Circuit's earlier en banc per curiam decision in which it unanimously held that the method and "computer-readable media" claims at issue were not patent eligible. Full text

09 Jul 2014
Latest launch schedule for gTLDs

This article provides the latest schedule for new generic top-level domains. Full text

07 May 2014
More on Myriad and the USPTO's Myriad-Mayo guidance

The US Patent and Trademark Office has issued its Guidance for Determining Subject Matter Eligibility of Claims Reciting or Involving Law of Nature, Natural Phenomena and Natural Products. However, despite the guidance and the Supreme Court cases on patent-eligible subject matter, there is still much uncertainty as to what constitutes patent-eligible subject matter. Full text

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