Most interlocutory decisions under the Patented Medicines (Notice of Compliance) (PMNOC) Regulations are made by prothonotaries of the Federal Court. The first Federal Court of Appeal decision in an appeal of an interlocutory order under the amended PMNOC Regulations was recently issued. The court found that the prothonotary had been entitled to arrive at a view of what was best for the particular proceeding and saw no reviewable error that would justify its intervention.
The Patented Medicines Prices Review Board (PMPRB) Steering Committee on the Modernisation of Price Review Process Guidelines recently released its final report summarising its deliberations in providing stakeholder feedback on the PMPRB's proposed new framework for the regulation of the prices of patented medicines.
The Supreme Court recently issued a decision regarding non-use cancellation actions and the retroactive enforcement of Article 9 of the Industrial Property Code (IP Code). The decision has clarified the longstanding debate and unpredictability concerning the implementation of the IP Code's non-use provision. The courts will now implement Article 9 against non-used trademarks without hesitation.
Legislative Decree 15/2019, which implements the EU Trademarks Directive, entered into force on 23 March 2019. The decree's main innovations include the reinforcement of trademark protection (in particular, the possibility of using cross-border measures and reacting against certain preparatory acts of counterfeiting has been extended to transported goods) and the removal of the anachronistic requirement of graphic representation for the registration of non-conventional trademarks.
The Supreme Court has repeatedly stated that there are no set rules to determine whether one trademark is confusingly similar to, or a colourable imitation of, another and that each case must be decided on its own merits. Nonetheless, over the years, the Supreme Court has fashioned two tests (ie, the dominancy and holistic tests) to determine whether a mark infringes another. This article reviews a number of landmark Supreme Court decisions that applied these tests.
The Federal Court of Appeal recently granted the Patented Medicine Prices Review Board's (PMPRB's) appeal and returned to the board the matter of whether the invention of the patent at hand pertained to Galderma's Differin. The court addressed several issues, including whether the PMPRB had acted unreasonably in limiting its review of the patent to selected portions.
China has followed the global trend of protecting graphical user interfaces (GUIs) by acknowledging them as patentable designs in its amended Patent Examination Guidelines. However, under the Patent Law, designs are patentable only when filed together with a product which embodies the design. Since GUIs and software per se are not recognised as products, GUI patentees are faced with a dilemma if they attempt to challenge software developers for merely offering software which exploits their patented GUI design.
The Competition Bureau recently released its updated IP Enforcement Guidelines. While the guidelines are technical and directed at IP and competition law practitioners, there are key aspects of the bureau's approach and various scenarios involving competition and intellectual property that could arise for consideration. As such, when issues relating to IP and competition law arise, including when deciding whether to pursue the licensing or enforcement of IP rights, legal advice should be sought.
The Delhi High Court recently recognised, for the first time, the merit of applying Section 20 of the Evidence Act 1872 in technical IP matters. This decision may have far-reaching consequences in the IP world, as it could eliminate the controversy surrounding infringement suits which involve complex technical questions and help the courts to reach a finding by relying on the opinion of an expert agreed on by both parties.
The Hungarian Intellectual Property Office recently granted the cancellation of the mark MINIME on the basis that the term 'mini me' had been widely used with regard to 3D printing services before the mark's filing date. Although the owner of the mark argued that the term had been used by others for only a short time before the mark's filing date, in special circumstances, even a relatively short period of use of a term by third parties can be sufficient for the term to become known by the relevant public.
Grifols, SA filed a lawsuit before the Barcelona courts against Algoritmos Procesos y Diseños, SA (APD) for infringement of a patent which protected a blister pack handling machine. Once the lawsuit was admitted, APD filed a declinatory plea due to lack of territorial jurisdiction. However, the court rejected APD's plea and pointed out that this was a case of forum choosing (rather than forum shopping) which illustrates the importance of patent owners' right to choose.
Business owners often fail to conduct trademark availability searches before they register their company name at the Companies and Intellectual Property Commission (CIPC). The CIPC considers only identical or confusingly similar company names that are contained on the company names register (and not those that are contained on the trademarks register) to be potential blocks to registration. Therefore, company names that proceed to registration may infringe on trademark rights as set out in the Companies Act.
Pampered Chef, a world leader in the sale of premium kitchenware products, recently succeeded at trial in defending trademark infringement, passing off and dilution and depreciation of goodwill claims brought by Canada's largest retailer, Loblaws, in relation to its use of a trademark that includes the letters 'P' and 'C'. After considering all of the factors, the court dismissed all of the claims against Pampered Chef, notwithstanding the fame of Loblaws' marks and the similarities between the parties' goods.
The so-called 'Growth Decree' has made provision for IP rights, particularly by introducing new regulations dedicated to 'Italian-sounding terms'. Specifically, the new regulations concern the adoption by foreign manufacturers of distinctive signs that evoke Italy and, more generally, trademarks linked to Italian territory. The adoption of such marks is now an act of piracy and considered substantially equal to counterfeiting.
The UK Intellectual Property Office recently upheld LinkedIn Ireland Unlimited Company's opposition to JK Solutions' registration of the word mark KINKEDIN in Class 45 designating, among other things, internet and video dating services. Despite the high degree of aural and visual similarity between LINKEDIN and KINKEDIN, the examiner held that there was no likelihood of confusion on the basis of conceptual dissimilarity alone.
The government recently published the final version of the new Patent Rules in Part II of the Canada Gazette. The new rules and associated amendments to the Patent Act will come into force on 30 October 2019. In order to safely and effectively prosecute Canadian patent applications under the new Patent Rules, there are a number of recommendations of which practitioners should be aware.
In an age where business is conducted online, trademarks are commercialised through websites and social media pages and consumers want to deal with businesses online instead of face to face, a business' virtual address is of the utmost importance if it wants to drive traffic to its website and conclude commercial transactions online. So, what happens if a third party registers a domain name that incorporates an existing trademark? How can trademark owners begin to take action and enforce their rights?
Offering to sell is an independent act of patent exploitation. However, it is not necessarily established on the premise that the product is physically manufactured or actually sold. In this context, the Beijing Intellectual Property Office recently had to consider how to determine whether an accused drug falls within the protected scope of a patent, without appraising a physical product, and the criteria needed to determine whether a product is being offered for sale.
Valencia Criminal Court Number 15 recently convicted the managers of a company operating in the souvenir industry for a crime against IP rights in accordance with the Criminal Code. In its decision, the court rejected the defendants' allegations of defencelessness, deeming that both the objective and subjective elements of Article 273 of the Criminal Code had been met based on the expert report and the raid conducted against the defendants in 2009.
Although the amendments to the Patented Medicines Regulations did not come into force as expected, a number of life sciences IP and regulatory law developments took place in the first half of 2019. For example, there were two Patented Medicines (Notice of Compliance) Regulations decisions on the merits, as well as a pair of appeal decisions. In addition, the Competition Bureau released its IP Enforcement Guidelines and Bill C-100 was published to implement the United States-Mexico-Canada Agreement.