Intellectual Property updates

Argentina

Contributed by Obligado & Cia
Trademark opposition process under Law 27,444
  • Argentina
  • 17 May 2021

Law 27,444, which was enacted in May 2018, reformed the trademark opposition process by introducing a new system in which trademark oppositions are no longer initially settled in federal courts, but are instead settled administratively by the National Institute of Industrial Property (INPI). This reform aims to accelerate proceedings and reduce costs. Since the law became effective and with the new system in operation, the INPI has issued a series of resolutions in administrative opposition processes.

Registering people's names as trademarks
  • Argentina
  • 15 March 2021

Section 3(h) of the Law on Trademarks prohibits the registration of a person's name, pseudonym or portrait as a trademark without either their consent or that of their heirs up to the fourth degree. The National Federal Court of Appeals in Civil and Commercial Matters recently held that the great-granddaughter of Cuban rum manufacturer José Arechabala could not prevent the registration of the trademark ARECHABALA in Argentina under Section 3(h).

Trade secrets legal regime – an updated overview
  • Argentina
  • 23 November 2020

In Argentina, confidential information and trade secrets are protected by Section 39.2 of the Agreement on Trade-Related Aspects of Intellectual Property Rights, Section 156 of the Argentine Penal Code, Law 24,766 (the Confidentiality Law) and the recently passed Emergency Decree 274/2019, which regulates different unfair competition aspects. This article provides an overview of the Argentine trade secrets legal regime.

Use of third-party trademarks as keywords
  • Argentina
  • 27 July 2020

The rapid growth in internet use has given rise to conflicts between registered trademark owners and third parties using said marks. For example, search engine advertising systems make it possible to create ads that show products or services to users who are looking for them. Federal Court of Appeals in Civil and Commercial Matters case law provides useful guidance on the use of third-party trademarks as keywords in internet advertising.

New legislation on unfair competition and designations of origin
  • Argentina
  • 02 March 2020

Until the approval of Emergency Decree 274/2019 in April 2019, the regulation of unfair competition in Argentina was characterised by a lack of organisation, narrow scope and lack of a general rule for standardising acts of unfair competition. The new decree sets out numerous provisions that are relevant to the IP field, including provisions addressing the regulation of comparative advertising, designations of origin, secrecy, data exclusivity and trademarks.


Australia

Contributed by King & Wood Mallesons
Challenges (and terrors) of long-term brand licensing deals
  • Australia
  • 24 May 2021

Structuring and negotiating a long-term brand licensing deal is always challenging because a lot can change over time. A licensing deal struck by Bega Cheese Ltd and Fonterra Brands (Aust) Pty Ltd 20 years ago was recently put under the judicial microscope. This article examines the result of the case, looks at the lessons learnt and considers how to structure marketing obligations to support brand growth and changing market circumstances.


Austria

Contributed by Graf & Pitkowitz Rechtsanwalte GmbH
Use of clandestine recordings as evidence
  • Austria
  • 17 May 2021

The Supreme Court recently confirmed that both the production and disclosure of clandestine recordings violate copyright. However, clandestine recordings are admissible as evidence if the infringer cannot prove their claim in any other way and the infringer's interests outweigh those of the affected person. The Supreme Court further pointed out that a court cannot decide on the admissibility of evidence obtained under a copyright breach which is to be submitted in other court proceedings.

Refill products infringe trademark
  • Austria
  • 19 April 2021

The Supreme Court recently held that selling refill products for a dispenser that is manufactured by another party without indicating that the refill product is not produced by the dispenser's manufacturer constitutes trademark infringement. The decision clarifies that parties must label refill products to prevent the relevant public (ie, the users of the refill product) thinking that the manufacturer of the refill product is also the manufacturer of the dispenser.

Flashlight decision illuminates compensation guidelines for unlawful use of IP rights
  • Austria
  • 22 April 2019

The Supreme Court recently had to decide whether the infringer of a registered Community design had to hand over the entire net profit or just a share of profit earned due to its use of an infringed design. The decision has great practical importance, as it gives IP rights holders clear guidelines regarding what to expect when claiming compensation for an unlawful use of their rights.

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.


Belgium

Contributed by GEVERS
More than a wine label when prestige is at stake
  • Belgium
  • 10 May 2021

When a trademark achieves a reputation, its owner can claim a broader protection which extends to goods and services not designated by their trademark registrations. However, such trademarks are more likely to be the target of parasitism and unauthorised use by unscrupulous infringers. A recent judgment regarding infringement of the well-known trademark PETRUS reaffirmed that trademark counterfeiting damages the prestige and reputation of the affected trademark.

Thin line between legitimate copies and unfair trade practices
  • Belgium
  • 03 May 2021

In Belgium, any party is generally free to copy or imitate another party's creation. However, the freedom to copy principle has two exceptions – namely, that copying is not permitted if it constitutes infringement of IP rights or is considered to be contrary to honest and fair trade practices. This article addresses how to tackle a parasitic copy of a creation in Belgium.

Extrajudicial admissions: can everything you say be used against you?
  • Belgium
  • 26 April 2021

Extrajudicial admissions are those that are made outside court proceedings. In some countries, such admissions may be used against a party in court proceedings. In Belgium, no specific provisions exist regarding the admissibility of extrajudicial admissions in court proceedings relating to patents. However, case law shows that the courts will take extrajudicial admissions into account and that it can be difficult for parties to take back such statements.

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

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


Brazil

Contributed by Montaury Pimenta, Machado & Vieira de Mello
Why are compulsory licences not an effective solution to the COVID-19 pandemic?
  • Brazil
  • 07 June 2021

Reports which indicate a supposed direct link between compulsory licences and the acceleration of global vaccination have been circulating in the Brazilian media. However, such a relationship does not yet exist. Even though the process of decreeing a compulsory licence for a patent is quite simple, this does not mean that the technology will be easily available for any interested company to produce and commercialise it, or that such technology will be free of charge.

Online brand protection: five tips to build effective strategies
  • Brazil
  • 24 May 2021

In Brazil, there has been an exponential increase in online sales and the number of companies of various types that invest in technology and e-commerce. However, there has also been a dramatic increase in online infringement of various types, especially through '.br' websites, apps, marketplaces and social media. Businesses and companies must be vigilant and constantly develop new takedown techniques and strategies against bad actors.

Operating virtually in pursuit of greater effectiveness
  • Brazil
  • 05 April 2021

Over the past year the Brazilian courts and the Brazilian Patent and Trademark Office have been adapting to the new reality brought about by the COVID-19 pandemic. In light of these judicial and administrative changes, the Brazilian IP landscape is becoming increasingly favourable for entrepreneurs and companies. While Brazil still has a long way to go, the government's pursuit of greater effectiveness in its judicial and IP systems is commendable.

Off-field football dispute: Brazilian spray patent battle
  • Brazil
  • 29 March 2021

A patent dispute about a spray used to mark the distance between the defenders and the ball when a free kick is taken in football is ongoing in Brazil. The spray's inventor filed an infringement action against the International Federation of Association Football (FIFA), which was rejected on the grounds that the inventor had not proved that the products used by FIFA corresponded to infringed copies of his products or that any damage had been caused. The inventor has appealed this decision.

New guidelines for examining patent applications that involve computer-implemented inventions
  • Brazil
  • 22 March 2021

In recent years, the Brazilian Patent and Trademark Office has taken actions to improve IP protection policies. As such, it recently published the Guidelines for Examining Patent Applications Involving Computer-Implemented Inventions. The new guidelines were long overdue, considering that technology and intelligent systems (eg, the Internet of Things and AI) are becoming increasingly integrated into everyday life.


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