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Trademark protection of mobile apps
Deris Attorney At Law Partnership
  • Turkey
  • 22 July 2019

Turkey's trademark classification system does not cover the term 'mobile applications' specifically. However, software and computer programs fall within the scope of Class 9 of the classification system. As mobile apps are classified as software or programs, trademark protection under Class 9 only may be insufficient for apps that also cover services in other classes. This article examines how best to protect mobile apps under the Trademark Law.

Is my work original enough?
KISCH IP
  • South Africa
  • 22 July 2019

According to the Copyright Act, for copyright to subsist in a work, the work must be original and reduced to material form. However, if ideas and innovation are the result of the shared lived experience of the common person, how can it be determined whether a work is 'original' as defined in, for example, the Copyright Act? In order to be original, a work need not be innovative or new, but rather the result of the author's own skill, time and effort expended in creating the work.

Lisbon Court of Appeal finds that BELCANTO is a "trademark with a reputation"
Baptista Monteverde & Associados
  • Portugal
  • 22 July 2019

The Lisbon Court of Appeal recently found that the trademark BELCANTO, used by the Belcanto restaurant in Lisbon, was a "trademark with a reputation" and another party's application to register the trademark to sell wines. The judgment shows that Portuguese case law is departing from the mere quantitative parameters of assessing the reputation of a trademark to focus on the relevance of a mark's national and international recognition.

Implications of new unfair competition legislation for IP practitioners
Obligado & Cia
  • Argentina
  • 22 July 2019

Emergency Decree 274/2019 has established a comprehensive system for regulating unfair competition. Many practices punished by the new unfair competition rules affect IP rights. Further, the new legislation establishes a series of provisions that are highly valued in the IP field, including the detailed regulation of comparative advertising and provisions referring to names of origin and trade secrets.

Supreme Court recognises Modelo's right to register and use CONTINENTE mark
Grau & Angulo
  • Spain
  • 22 July 2019

The Supreme Court recently declared a Madrid Court of Appeal judgment to be final, confirming the cancellation of Carrefour's CONTINENTE trademarks and recognising Modelo's right to register and use its CONTINENTE mark in Spain. The decision supports the previous case law criterion that protection cannot be sought for trademarks which are no longer used on the market.

Matters to be addressed in future revision of Trademark Law
Wanhuida Peksung IP Group
  • China
  • 22 July 2019

In 2019 the Trademark Law was rapidly revised without public consultation. This revision, which was relatively limited, aimed to address the problem caused by trademark applications made in bad faith and without the intention to use and to increase the powers of the courts in judicial enforcement. This article analyses what remains to be done and what a fifth revision of the Trademark Law should cover.

New Industrial Property Code enters into force
Baptista Monteverde & Associados
  • Portugal
  • 15 July 2019

The new Industrial Property Code recently entered into force with a number of amendments resulting from the implementation of the EU Trademark Regulation. Most of the changes represent a real break with the previous legal framework. The main changes concern trademark registration, the scope of rights conferred by patents and limitations on the subject matter of utility models.

What to do when your product is copied
KISCH IP
  • South Africa
  • 15 July 2019

South Africa has seen a dramatic rise in entrepreneurial activity, with many seeking to launch new products in the marketplace. However, with the success of a product comes the risk of the idea being copied and advantage being taken of the already established route to market, thereby affecting the original product's sales and brand. Therefore, any party that creates or legitimately distributes a product that they believe will be well received must take the appropriate steps to protect it.

What happens when an EU mark is not well known in Hungary?
Danubia Patent and Law Office LLC
  • Hungary
  • 15 July 2019

The Hungarian Intellectual Property Office (HIPO) recently refused to register a mark on the basis that the opponent had proved its prior mark's reputation in a substantial part of the European Union. The applicant requested a review by the Metropolitan Tribunal, contesting the significance of the HIPO's decision for Hungary if reputation could be proved only in other EU member states. As the tribunal had doubts in this regard, it referred the case to the European Court of Justice for the first time.

Patent Cooperation Treaty patents allowed
IP Law Galli
  • Italy
  • 15 July 2019

The so-called 'Growth Decree' includes a rule which allows an Italian patent application to be filed based on an international patent application filed under the Patent Cooperation Treaty. The adoption of this provision offers companies a cheaper alternative where the potential exploitation of an invention does not justify the investment required to obtain a European patent. The provision responds to a pressing practical need and is a welcome change.

Effectiveness of protective briefs in pharmaceutical patent matters
Grau & Angulo
  • Spain
  • 15 July 2019

In order to better understand the usefulness of protective briefs, this article examines some recent cases that show that protective briefs can, in certain cases, reduce or even eliminate the risk of an ex parte preliminary injunction and the inconveniences associated therewith.

Supreme Court of Canada denies Apotex leave to appeal in two cases
Smart & Biggar/Fetherstonhaugh
  • Canada
  • 08 July 2019

The Supreme Court of Canada has denied Apotex leave to appeal in two recent cases. In the first case, Apotex sought leave to appeal a decision of the Ontario Court of Appeal permitting Sanofi and Schering to amend their defences to claims relating to ramipril. In the second case, Apotex sought leave to appeal a decision of the Federal Court of Appeal relating to damages awarded to Eli Lilly in respect of Apotex's infringement of process patents relating to cefaclor.

Federal Circuit panel holds that state sovereign immunity does not apply to inter partes review
Venable LLP
  • USA
  • 08 July 2019

A Federal Circuit panel recently held that state sovereign immunity does not apply to inter partes review proceedings conducted before the Patent Trial and Appeal Board of the Patent and Trademark Office. The dispute had arisen after the University of Minnesota (UMN) sued LSI and Ericsson customers in a district court for the infringement of several UMN patents claiming 4G LTE telecoms technology.

Experimental use exception under recently amended Patent Act
Smart & Biggar/Fetherstonhaugh
  • Canada
  • 08 July 2019

Canada recently introduced the Budget Implementation Act 2, which brought about several changes to the Patent Act affecting the scope of protection available under Canadian patents. Included in the changes was the addition of a new provision providing an exception from infringement for experimental use of patented technologies. The new provision applies to any action or proceeding that was not finally disposed of as of 13 December 2018.

Riding on popularity of foreign brands
Romulo Mabanta Buenaventura Sayoc & De Los Angeles
  • Philippines
  • 08 July 2019

Goods produced outside the Philippines are commonly perceived as being of better quality and, given their higher price point, are purchased by those who are more financially capable and consider themselves to have good taste. For this reason, some local business owners unlawfully attempt to ride on the popularity of foreign brands. However, Philippine law prohibits deception and protects the goodwill of foreign marks under the Intellectual Property Code and the Paris Convention.

Exception to exhaustion of trademark rights principle enforceable for non-luxury marks
Grau & Angulo
  • Spain
  • 01 July 2019

The Barcelona Court of Appeal recently revoked a judgment which had dismissed all of the claims filed by the owner and licensee of the MUSTELA trademark against its former distributor and various other companies. Notably, the court stated that EU doctrine and Spanish case law provide for an exception to the exhaustion of trademark rights principle with regard to luxury trademarks. However, this does not rule out the application of this exception to other trademarks in particular selective distribution cases.

Update on PMPRB guidelines modernisation
Smart & Biggar/Fetherstonhaugh
  • Canada
  • 01 July 2019

The Patented Medicine Prices Review Board (PMPRB) previously announced that the steering committee on guidelines modernisation would hold its final meeting on 13 May 2019 to discuss both a draft report of its deliberations and the working group's final report. Once the steering committee's report has been finalised and the regulatory amendments have been published in Part II of the Canada Gazette, the PMPRB will release its draft guidelines for public consultation.

Supreme Court holds federal agencies cannot petition for post-issuance review of patents under AIA
Venable LLP
  • USA
  • 01 July 2019

The Supreme Court recently ruled six-to-three that a federal agency cannot petition for the review of an issued patent under the America Invents Act. This decision prevents the government from challenging the validity of issued patents through inter partes, post-grant and covered business method reviews.

Infringement based on making and selling under existing NOC struck from action
Smart & Biggar/Fetherstonhaugh
  • Canada
  • 01 July 2019

The Federal Court has granted in part Pharmascience's motion to strike out portions of Teva's statement of claim under Subsection 6(1) of the Patented Medicines (Notice of Compliance) (PMNOC) Regulations relating to glatiramer acetate (Teva's Copaxone and Pharmascience's Glatect). The court found that it is plain and obvious that Section 6.02 of the PMNOC Regulations prohibits the joinder of a regular infringement action under the Patent Act with an action pursuant to Subsection 6(1).

No victory for sports giant Decathlon: limits of enforcement based on reputed mark
Danubia Patent and Law Office LLC
  • Hungary
  • 01 July 2019

Decathlon – one of the biggest sportswear companies in Europe – has a defensive trademark policy under which its reputed EU trademark is protected for all goods and services in Classes 1 to 42, including sporting activities, as well as services in Classes 41 and 42. However, the applicant in a recent case was clever enough to limit the scope of its application to register the coloured mark DUNATHLON VEDD BE A KANYART to special services, thereby limiting the authorities' examination of a potential conflict.

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