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.
The National Institute of Industrial Property (INAPI) recently inaugurated its technology and innovation support centre, which was backed by the World Intellectual Property Organisation. The INAPI also recently implemented an advanced electronic signature programme, strengthened security measures to safeguard information and initiated a pilot plan that will enable the institute to become a paperless organisation.
Law 21,045, which was recently published in the Official Gazette, created the Ministry of Culture, Arts and Patrimony and reformed the IP Act through the creation of the National Cultural Patrimony Service. Under the changes introduced, the Intellectual Rights Department is now under the auspices of the National Cultural Patrimony Service. As a result, all IP matters are now part of the new Ministry of Arts, Cultures and Patrimony.
The Trademark Office recently rejected several trademark applications containing the terms 'corporation', 'corporations' or similar when the applicant was not a US-based company on the basis that they would result in error or confusion. However, the Industrial Property Appeals Court dismissed this argument and revoked the Trademark Office's decisions, stating that the law does not require a trademark to be concordant with the applicant's corporate structure or organisation.
After more than eight years of litigation, the Pablo Neruda Foundation (heir to the rights of the Nobel Prize-winning Chilean poet Pablo Neruda) obtained a favourable decision from the Industrial Property Appeals Court regarding its annulment action against the Reyes hereditary succession. This decision is not only relevant as an example of the application of IP Law and the Succession Law, but also refers to one of Chile's most famous names.
The National Institute of Industrial Property (INAPI) recently announced that, as of January 4 2017, it will apply the 11th edition of the Nice Classification for Goods and Services to all new trademark applications. By adopting the 11th edition of the Nice Classification, INAPI now maintains the same standards as the World Intellectual Property Organisation, thus providing improved international protection for trademarks.
The commissioner of the State Administration for Industry and Commerce (SAIC) recently delivered a keynote speech at the National Administration for Industry and Commerce and Market Supervision Conference, unveiling various 2017 statistics and the SAIC's new 2018 initiatives on trademark practice.
Following a lengthy battle regarding imitators' use of the letter 'N' on their trainers, the Supreme People's Court recently accepted New Balance's application for a retrial. The court may see this case as a good opportunity to apply the new direction regarding how courts should assess the likelihood of confusion. Alternatively, it may consider that the Trademark Review and Adjudication Board and the Beijing High Court erred when they ignored the prior judgments affirming the protection of trade dress.
The Supreme People's Court recently promulgated the Circular on Creating a Favourable Legal Landscape to Facilitate Innovation and the Start-Up of Entrepreneurs by Leveraging the Adjudicatory Function of the Court, in a bid to reassure the business sector. With respect to the protection of IP rights, the court has vowed to improve the rule of evidence to ensure that it applies to IP rights litigation, promote the 'three-in-one' system and establish a judicial assessment mechanism for damages, among other things.
The Beijing IP Court has ruled that an internet service provider which published rules stating that it had verified the legal status of vendors on its platform had to guarantee that the products sold on its platform were genuine. Despite taking measures after being officially informed of an infringement, the service provider remained jointly and severally liable for the infringement as, by publishing the rules, it had endorsed the vendor and lost its strictly neutral position. Therefore, the safe harbour principle did not apply.
The Zhongshan Intermediate Court has ruled that a trademark owner and his company must bear joint and several liability for the compensation of Rmb3 million after the distinctive element of their registered trademark was subtly modified in practice to appear visually similar to the trademark 3M. The case shows the courts' determination to penalise trademark infringement, particularly where a defendant is reluctant to disclose its accounts.
The Maritime and Commercial High Court recently granted Danish company Dyrup A/S a preliminary injunction without security against Nowocoat International A/S for design and layout infringement of Dyrup's wood protection products. This decision is notable, as the majority of judges found that it was possible for end-consumers to disregard a well-known trademark and recognise a product only by its design, while also confusing it with another product.
The bar for copyright infringement of industrial works in Denmark is rather high. A copy must be very similar to an original work and an original work cannot be of a simple or technical nature. In a recent Commercial and Maritime Court case, the Danish ceramics company Kähler's Omaggio series of vases and candleholders was granted copyright protection and Bovictus A/S's KJ collection was found to infringe Kähler's copyright.
A recent Supreme Court case explored the right of individuals to use their own names, an issue on which the general public has strong opinions. The court stated that where a person has used his or her own name as a trademark and assigned the trademark to a third party, the principle of good marketing practice entails that he or she is then prevented from using the name as a trademark for goods or services similar to those for which the trademark was registered.
The Maritime and Commercial High Court recently ruled in favour of shirt manufacturer JT Olesen, finding that competitor Natex's Stanfield Shirt infringed the registered design of JT Olesen's Oscar Shirt and was a slavish imitation of it under the Marketing Practices Act. The court noted that the distinctive features of the Oscar Shirt were, among other things, contrasting-coloured edges in combination with stripes.
The 8th Section of the Alicante Court of Appeal, acting as the EU Trademark Court of Appeal, recently confirmed that the use of third-party trademarks of reputed perfumes to advertise, offer and market so-called 'smell-alike' perfumes amounts to trademark infringement and unfair competition. Notably, the defendant's argument was based on the need to use the trademarks of other perfumes to inform consumers about the fragrance of its smell-alike perfumes.
The EU Trademark Court recently revoked in full the Commercial Court of Alicante Number 1 first-instance judgment, which had dismissed all of the claims filed by H-D USA, LLC (Harley-Davidson) against a third party for its unauthorised use of the Harley-Davidson bar and shield sign to identify and promote its bar restaurant. The court sentenced the defendant to pay Harley-Davidson damages and bear the costs incurred in the first instance.
EU Trademark Court Number 2 of Alicante recently upheld the lawsuit filed against Equivalenza for its use of trademarks belonging to Hugo Boss, Gucci and Lacoste in its sale of alleged smell-alike perfumes. Despite an earlier conviction for third-party trademark use, Equivalenza did not change its business model. Consequently, the court ordered it to cease and desist offering, marketing and promoting its perfumes using the plaintiffs' trademarks, among other things.
The issue of intermediary liability is a hot topic, particularly in the online environment, with decisions in Tommy Hilfiger and McFadden only intensifying the debate. European Court of Justice case law in this regard clarifies that any intermediary whose services are used by a third party to infringe an IP right can be ordered to take measures to end the infringement and prevent further infringements.
The EU Trademark Court Number 2 of Alicante recently upheld a lawsuit against Yodeyma Parfums SL for offering and marketing smell-alike perfumes identified by using comparison lists containing the plaintiffs' well-known trademarks. This decision is clearly in line with the findings of the EU Trademark Courts Number 1 and 2 and the EU Trademark Court of Appeal.