Latest updates

Italy nominates Milan as third head office of UPC instead of London
IP Law Galli
  • Italy
  • 19 October 2020

At a recent Unified Patent Court (UPC) Preparatory Committee meeting on the effects of the United Kingdom's withdrawal of its ratification of the court's founding agreement, Italy announced its intention to nominate Milan as the new branch of the UPC headquarters instead of London. Although Milan is not a mandatory choice, this nomination should be taken seriously for many reasons.

New trademark system's 'soft opening'
Mirandah Asia (Myanmar) Affiliate Office
  • Myanmar
  • 19 October 2020

Myanmar's recently enacted Trademark Law 2019 is gaining traction. The initial focus is on developing a system to register marks. This will be introduced in two phases: the 'soft opening' (which commenced 1 October 2020), followed by the 'grand opening' (scheduled for 1 April 2021). If a brand has taken any steps thus far to establish itself in Myanmar, this soft opening is a golden opportunity to get registered and stake a priority claim early.

French language requirements in Quebec: an introduction
Smart & Biggar
  • Canada
  • 19 October 2020

The Charter of the French Language gives the French language the status of an official language in Quebec, thus making its use mandatory in all spheres of public life in the province, including commerce and business. An exception to this rule is the 'recognised trademark' exception, which provides that recognised trademarks need not be translated into French unless a French version of the mark is registered.

Vehicle workshop owner convicted for using labels featuring BOSCH trademark on his machines
Grau & Angulo
  • Spain
  • 19 October 2020

The Castellon Court of Appeal (Section 2) recently confirmed the criminal conviction of a vehicle workshop owner for a crime against industrial property rights consisting of a six-month prison sentence. Further, the court imposed the additional penalty of disqualification from standing for public office during the time of the sentence and payment of the procedural costs, reserving the right to take civil actions that may correspond to the injured party.

Is commercial success a factor considered in determining non-obviousness of a patent?
Lee and Li Attorneys at Law
  • Taiwan
  • 19 October 2020

A pitfall that is difficult to avoid when determining whether a patent is non-obvious is hindsight bias when comparing a patent with prior art. This is why the Taiwan Patent Examination Guidelines have introduced secondary considerations to determine the non-obviousness of a patent, including 'unexpected results', 'long-felt but unsolved needs', 'overcoming technical prejudice' and 'commercial success'.

Likelihood of confusion decision draws on ECJ case law
Danubia Patent and Law Office LLC
  • Hungary
  • 19 October 2020

The Hungarian Intellectual Property Office (HIPO) and the Metropolitan Tribunal recently rejected a word mark application based on European Court of Justice (ECJ) case law. While it seems likely that the HIPO and the Metropolitan Tribunal would have come to the same conclusion without referring to ECJ case law, the guidance was useful for the development of a unified EU doctrine and case law.

Why you should designate Canada – and a Canadian agent – in your next Madrid application
Smart & Biggar
  • Canada
  • 19 October 2020

A little over one year has passed since Canada overhauled its trademark legislation and acceded to the Madrid Protocol, making it easier than ever to protect trademark rights in Canada. This article explores some of the key reasons why international brand owners should consider designating Canada in international trademark applications and outlines the importance of appointing a Canadian agent to monitor and oversee international applications designating Canada.

Clear and convincing evidence standard should be applied to prior art taking form of physical objects
Wanhuida Intellectual Property
  • China
  • 19 October 2020

In 2019 the IP Tribunal of the Supreme People's Court confirmed that a physical mobile phone was eligible prior art in assessing the novelty and inventiveness of a patent. The tribunal clarified that a party that asserts a physical object as prior art must specify the asserted prior technical solution, specify the corresponding relation between such prior technical solution and the physical object and prove or demonstrate that the public can intuitively obtain the technical solution from the physical object.

Approaching 420: cannabis trademark scene one year on from USPTO examination guidelines
Venable LLP
  • USA
  • 19 October 2020

Products involving CBD and hemp seeds have been flooding the US market and businesses are seeking to protect their brands in connection with products in this emerging market, given the legalisation of various forms of marijuana in individual states. Where federal or state registration is not legally obtainable with regard to various goods or services, users may be able to obtain common law rights to cannabis-related trademarks if they are in use.

Supreme Court rules that inter partes review time-bar determinations are not appealable
Venable LLP
  • USA
  • 12 October 2020

The Supreme Court recently ruled by a seven-to-two majority that determinations by the Patent Trial and Appeal Board of whether to apply the time bar of 35 US Code 315(b) to inter partes review proceedings are not appealable. In so doing, the Supreme Court effectively abrogated the Federal Circuit's en banc decision that such determinations are appealable.

Significant amendments introduced to Trademarks Law
A G Paphitis & Co
  • Cyprus
  • 05 October 2020

In June 2020 the Trademarks Law Cap 268 (as amended) was published in the Official Gazette, implementing the EU Trademarks Directive into Cypriot law. The new directive aims to accommodate the modern business environment by standardising the rules applicable in EU member states in order to facilitate transnational company activities, improve cooperation among trademark offices and support anti-counterfeiting.

Cambodia ratifies Berne Convention as 2021 TRIPS deadline looms
Mirandah Asia
  • Cambodia
  • 05 October 2020

In July 2020 Cambodia brought its ever-developing IP protection regime further into line with international standards, with the ratification of the Berne Convention for the Protection of Literary and Artistic Works. With consistent annual gross domestic product growth of more than 8% for the past two decades, Cambodia is one of the fastest-growing economies in the world. This timely ratification of the convention can only increase confidence between Cambodia and the international trading community.

Congress acknowledges shift towards e-commerce with bills to reduce counterfeits
Venable LLP
  • USA
  • 05 October 2020

Congress is taking action after recognising the growing problem of counterfeit and unregulated products being sold through online marketplaces and the associated safety concerns. This article provides a high-level overview of the proliferation of counterfeits on online marketplaces and summarises three pending bipartisan bills and their stated goals.

China embraces pharmaceutical patent linkage system
Wanhuida Intellectual Property
  • China
  • 05 October 2020

The exposure draft for the Implementation Measures for Early Resolution Mechanism of Pharmaceutical Patent Disputes (for Trial Implementation) was recently published to solicit public opinion. The measures are the first legal document explicitly addressing the pharmaceutical patent linkage system in China since the idea was first floated by the National Medical Products Administration in 2017. This article examines the measures' key takeaways.

Federal Court rejects problem-solution approach, opening field for computer-implemented inventions
Smart & Biggar
  • Canada
  • 05 October 2020

In a significant decision, the Federal Court has rejected the Canadian Intellectual Property Office's (CIPO's) approach to examining computer-implemented inventions. This decision could significantly affect how CIPO assesses patent-eligible subject matter and have important implications for the patentability of diagnostic methods.

IP marking: risks and benefits
NAM & NAM
  • South Korea
  • 05 October 2020

There is no obligation to mark IP rights on products in South Korea. Whether to do so is at the discretion of the IP owner and no direct negative legal consequences arise from a failure to indicate IP rights. Nevertheless, indicating IP rights does grant some legal benefits. Further, from a practical sense, it may be a useful advertisement or marketing tool. This article examines the risks and benefits of IP marking.

Federal Court of Appeal does not disturb lower court's finding of use for hotel services
Smart & Biggar
  • Canada
  • 05 October 2020

In a highly anticipated decision, the Federal Court of Appeal recently held that a trademark owner could demonstrate use of a trademark in Canada in association with hotel services in the absence of a brick-and-mortar hotel. While the decision is not the first to analyse the Internet's impact on use of a trademark, this case provides important guidance to brand and trademark owners which offer services to consumers in Canada without a physical brick-and-mortar location.

Not all pun and games: Federal Court not amused with cannabis company's brand parody
Smart & Biggar
  • Canada
  • 28 September 2020

A recent Federal Court decision illustrates the danger of adopting a mark or name inspired by a famous or well-known brand, even when confusion is unlikely. The decision is a cautionary tale, particularly for those in burgeoning industries, such as Canada's cannabis industry, which may wish to piggyback on an established brand's goodwill and reputation.

Laboratoire de la Mer and Omega Pharma in disguised trademark infringement claim procedure
GEVERS
  • Belgium
  • 28 September 2020

This article has been removed at the request of the contributing firm.

Parody – fair dealing versus infringement
Saikrishna & Associates
  • India
  • 28 September 2020

Various jurisdictions provide protection to parodies under the doctrines of fair use and fair dealing. However, the lack of a concrete definition of 'fair dealing' under Indian law creates various pitfalls regarding the term's legal interpretation. Copyright does not protect ideas but only the specific form of expression of the same. Arguably, a definition of parody, outlining its scope and limitations and balancing these competing rights, may be a solution to this issue.

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