Intellectual Property updates

Argentina

Contributed by Obligado & Cia
Designations, trade names and the Civil and Commercial Code
  • Argentina
  • 25 February 2019

The terms 'corporate name', 'trade name' and 'designation' are frequently used without distinction in commerce and business. However, these expressions must be clearly distinguished. While corporate names distinguish corporations and their use and protection are based on the Companies Law, designations are protected under the Law on Trademarks.

Amendments to law on industrial models and designs
  • Argentina
  • 03 December 2018

The Argentine Executive Power recently issued Decree 27/2018, which has introduced significant and substantial amendments to the Law on Trademarks, the Law on Patents and the Industrial Model and Design Decree 6,673/63. The most important amendments include a simpler registration process, an expansion of the facts that do not destroy novelty and adjustments to renewal and grace periods.

Regulation of new trademark opposition system
  • Argentina
  • 08 October 2018

The government recently issued a decree which introduced substantial changes to the trademark opposition system, empowering the National Institute of Industrial Property to settle disputes concerning oppositions that parties cannot resolve through negotiation. The changes include the establishment of a three-month term to obtain oppositions and a 40-day evidence period.

Health Authority and use of trademarks on pharmaceuticals
  • Argentina
  • 06 August 2018

The Health Authority examines all relevant information to decide whether to authorise a product's introduction to the market, including its trademark or product name. In this regard, the Health Authority considers potential health risks that could occur in the event of confusion and error as regards trademarks or product names and how such confusion could affect physicians, pharmacists and consumers.

New trademark opposition system
  • Argentina
  • 14 May 2018

Decree 27/2018 was recently issued with the aim of further reducing and simplifying the regulations of different regimes in order to improve commerce and industry. In the IP sphere, the decree introduced important and substantial changes to the trademark opposition system. As a result, the administrative authority will be empowered to settle disputes concerning oppositions that cannot be resolved between the parties by means of negotiation.


Austria

Contributed by Graf Pitkowitz Rechtsanwalte GmbH
Dispenser for free newspapers – work of art?
  • Austria
  • 17 December 2018

The Supreme Court recently set out clear principles regarding the protection of a work of visual art under the Copyright Act where technical functions played a role. In its decision, the court explained that the assessment as to whether a (visual) piece of work is actually protected by copyright must be assessed by the court as a legal issue only. There is no room to consider the opinion of experts or any other third parties.

Exhaustion of trademark rights and burden of proof
  • Austria
  • 03 September 2018

The Supreme Court recently clarified the circumstances in which the burden of proof regarding the exhaustion of trademark rights shifts from the defendant to the trademark owner. It made clear that unless the defendant can prove a concrete risk of partitioning markets, it is up to the defendant to prove that the trademark rights relied on by the plaintiff are exhausted. This should be borne in mind when raising this defence.

Selective distribution systems and exhaustion of trademark rights
  • Austria
  • 04 June 2018

The Supreme Court recently affirmed once more that the exemptions to the principle of exhaustion of trademark rights must be construed narrowly. In its decision, the court made clear that once trademark rights are exhausted, resellers may use not only word marks, but also figurative marks without any limitations when advertising or reselling original products.

Marketability is key: if a work can be separated it is not a joint work
  • Austria
  • 08 January 2018

In a welcome development of Austrian copyright law, the Supreme Court recently ruled that a combination of works by two artists does not constitute a joint work if it can be separated, even if the works involved were created for the sole purpose of being combined as a jointly planned contribution. Strong indicators of whether parts of a work are separable are the individual marketability and possible depreciation of the separated parts.

Introduction of certification marks and other amendments to Trademark Law
  • Austria
  • 20 November 2017

Parliament recently transposed parts of EU Directive 2015/2436 into national law. Most important is the introduction of certification marks, which did not previously exist under Austrian law. Other provisions of the bill concern the division of trademark applications, the shortening of the validity period of a registration and the reduction of the registration fee.


Belgium

Contributed by ALTIUS
Desperate times call for ex parte interim measures in patent disputes
  • Belgium
  • 18 March 2019

Preliminary injunctions are rarely granted on an ex parte basis in Belgium and adversarial debates are considered a cornerstone of legal proceedings which can be deviated from only in cases of absolute necessity. However, ex parte interim measures have been granted in at least four patent disputes in Belgium in recent years, which helps to shed light on the circumstances under which patentees can consider them to be a measure of last resort to stop a threat of infringement.

Express recognition and clarification of trade secret protection in Belgium
  • Belgium
  • 11 February 2019

On 30 July 2018 the Belgian legislature transposed the EU Trade Secrets Directive into domestic law via the Trade Secret Law. The Trade Secret Law is welcomed, as no general regulatory framework regarding trade secrets previously existed in Belgium. It remains to be seen how the law will be used and applied in practice, but it is an essential means in effectively appropriating, protecting and exploiting innovation by providing trade secret holders with the tools to protect valid trade secrets.

Trademarks versus artistic freedom of expression: milestone referral for preliminary ruling
  • Belgium
  • 09 July 2018

In a high-profile trademark infringement case involving Moët Hennessey Champagne Services and a Belgian painter, the courts were asked to strike a balance between the right to property, including intellectual property, and artistic freedom of expression. The decision is expected to set an important precedent on how to strike a fair balance between freedom of speech and the protection of trademarks when these two concepts conflict.

Parallel import of medicinal products
  • Belgium
  • 06 November 2017

Merck Sharp & Dohme (MSD) recently sued PI Pharma before the Brussels Commercial Court for the parallel import and repackaging of one of MSD's medicinal products. MSD based its claim on the alleged violation of the first, third and fourth Bristol-Myers Squibb conditions. Although this is not the first time that the Brussels Commercial Court has been involved in a dispute over the parallel importation of medicinal products, the judgment further refines the scope of certain Bristol-Myers Squibb conditions.

Court issues decision on parallel importation of debranded Mitsubishi forklift trucks
  • Belgium
  • 10 April 2017

In a recent judgment, the Brussels Court of Appeal ordered two parallel traders to pay provisional compensation of €3 million to the Mitsubishi Corporation for illegally importing hundreds of Mitsubishi forklift trucks which had been on the Asian market into the European Economic Area via parallel trade routes. The court held that the parallel traders had failed to provide conclusive evidence that Mitsubishi, the proprietor of the Benelux and EU trademarks, had consented to the parallel trade.


Canada

Contributed by Smart & Biggar/Fetherstonhaugh
Orders of prohibition relating to polymorphic form patent for Pristiq upheld on appeal
  • Canada
  • 18 March 2019

In a pair of decisions, the Federal Court granted orders prohibiting Apotex and Teva from marketing their generic o-desmethyl-venlafaxine succinate products until the expiration of Patent 2,436,668. Both Apotex and Teva appealed the decisions, claiming – among other things – that the application judge had misapplied the test for obviousness and erred in considering several aspects of the inventors' course of conduct. However, the Federal Court of Appeal recently dismissed both parties' appeals.

2018 round-up: notable trademark case law
  • Canada
  • 04 March 2019

A number of trademark cases were heard by the Canadian courts in 2018, including a decision on a motion for summary judgment brought by Duracell, a decision on whether Imperial Tobacco Canada Limited's trademarks were confusing in light of new survey evidence filed on appeal and a decision on whether retail store services require a brick-and-mortar establishment or direct delivery of products to Canada to constitute use of a trademark in Canada.

Trademarks in Canada: a year of change and global harmony
  • Canada
  • 04 March 2019

Canada's trademarks profession had an exciting 2018. The long-awaited changes to the Trademarks Act were announced, many of which will bring Canada into line with the rest of the world. In addition, further unexpected legislative developments were announced, which will significantly affect trademark protection.

Abbott and Takeda plead that third party's patent would be infringed by non-infringing alternative
  • Canada
  • 25 February 2019

On the eve of a Section 8 trial, the Ontario Superior Court granted Abbott and Takeda leave to amend their pleadings to assert that Apotex's alleged non-infringing alternative was unlawful as it would have infringed a third party's patent. The court found that Apotex had not established that it would be prejudiced by the amendment, as any delay to the trial could be compensated by costs and an adjournment if appropriate.

Apotex seeks leave to appeal ramipril pleadings amendment decision
  • Canada
  • 25 February 2019

The Ontario Court of Appeal granted Sanofi and Schering leave to amend their defences to plead the Supreme Court of Canada's decision in AstraZeneca Canada Inc v Apotex Inc. In the underlying action, Apotex relied on the invalidity decision in Sanofi-Aventis Canada v Apotex Inc as a central element of its novel claims under the Ontario Statute of Monopolies, the UK Statute of Monopolies and the Trademarks Act. Apotex recently applied for leave to appeal to the Supreme Court of Canada.


Cayman Islands

New Cayman Islands IP regime
  • Cayman Islands
  • 11 September 2017

The Trademarks Law 2016, the Patents and Trademarks (Amendment) Law 2016 and the Design Rights Registration Law 2016 recently came into force, introducing a new IP regime in the Cayman Islands. The legislation establishes a standalone trademark registration system, prohibits the assertion of patent infringement in bad faith and allows existing UK and EU-registered design rights to be extended to the Cayman Islands, among other things.