Intellectual Property updates

Argentina

Contributed by Obligado & Cia
Likelihood of confusion of pharmaceutical trademarks
  • Argentina
  • December 18 2017

Argentine law contains no specific rules on the risk of confusion regarding pharmaceutical products and legal commentators and case law provide opposing views of whether common or stricter criteria should be applied. In this context, the most recent legislation and judicial decisions recognise that each particular case should be analysed separately in order to determine which criteria should be applied.

Trademarks and pharmaceutical products – an overview
  • Argentina
  • October 23 2017

The pharmaceutical industry is a regulated activity in the sense that medicaments require government authorisation in order to be commercialised. As a result, registering a trademark with the Trademark Office is insufficient to guarantee its use on a pharmaceutical product, as the name of the medicament must be accepted by the Health Authority at the time of issuance of the required marketing and sales authorisation.

Domain name and trademark dispute resolutions
  • Argentina
  • May 15 2017

The Internet's introduction, boom and speed of development has resulted in many conflicts and abuses, including the registration of domain names featuring the unauthorised use of a trademark owned by a third party. Argentina has not yet issued a substantive ruling referring to disputes between domain names and trademarks. Until 2009, the interested parties in a conflict had to seek remedy in court due to the non-existence of an alternative dispute resolution system.

Repair of damages in trademark infringement
  • Argentina
  • March 20 2017

IP rights – including rights to a trademark – enable rights holders to exploit certain intangible assets exclusively. In the event of misappropriation or trademark infringement, the trademark owner subject to the infringement will suffer damage due to the fact that a third party is using a similar or identical trademark without its consent. In this regard, the courts must adopt broad criteria when repairing damages, even when it is difficult to prove the effect of the damages concretely.

Recovery of intangible property rights under Civil and Commercial Code
  • Argentina
  • January 09 2017

The new Civil and Commercial Code includes a series of rules referring to intellectual and industrial property matters, including rules referring to image rights, the names of legal entities, the marital community regulation and a series of regulations regarding intellectual and industrial property and franchise, concession and leasing agreements. The code also has a significant impact on the recovery of intangible property rights.


Australia

Let's get physical? Software patentability in Australia
  • Australia
  • March 28 2016

In the last few years three subject matters have been lurking on the fringes of patentability: methods of treatment, genes and software. The High Court recently considered methods of treatment (which are generally patentable) and isolated naturally occurring genes (which are not). Now the High Court may have the opportunity to consider the extent to which software is properly the subject of patent protection.


Austria

Contributed by Graf & Pitkowitz Rechtsanwälte GmbH
Introduction of certification marks and other amendments to Trademark Law
  • Austria
  • November 20 2017

Parliament recently transposed parts of EU Directive 2015/2436 into national law. Most important is the introduction of certification marks, which did not previously exist under Austrian law. Other provisions of the bill concern the division of trademark applications, the shortening of the validity period of a registration and the reduction of the registration fee.

Age of technology – metadata is sufficient to retain author's right of attribution
  • Austria
  • July 17 2017

The Supreme Court recently ruled that the producer of a photograph who marks his or her name in the photograph's metadata must be credited as the producer on copies of the photograph made by other persons and intended for distribution. This judgment is good news for producers of digital photographs who wish to safeguard their copyright. Persons reproducing and distributing digital photographs should routinely check the metadata to ensure that the producer's name is listed on any reproduction.

Different panels, different opinions – different decisions
  • Austria
  • February 20 2017

The Supreme Court recently confirmed its view that the issuance of contradicting decisions in, on the one hand, infringement proceedings and, on the other hand, opposition proceedings by different panels of the same appellate court is no reason to admit an extraordinary appeal to the Supreme Court. The decision stresses that, in principle, the appellate courts must consider the issue of likelihood of confusion, and that it will step in only if the appealing party can demonstrate gross misjudgment.

Copyright owners beware! Supreme Court judgment defines author's distribution rights anew
  • Austria
  • September 19 2016

In light of a European Court of Justice ruling, the Supreme Court recently overturned its earlier interpretation of an author's exclusive distribution right in relation to his or her work of art. The court found that any kind of distribution – regardless of whether it is a transfer of ownership – falls under the author's exclusive distribution right. Further, it held that this distribution right is violated only if ownership in the work is actually transferred.

Intersection between trademark rights and naming rights
  • Austria
  • July 13 2015

In a recent case a trademark comprising a famous family name was infringed through use in the course of trade by someone with the same family name. The Court of Appeal defined the limits of trademark protection when competing with naming rights and the requirements that trademark owners must meet to shield their trademarks from exploitation under the cover of exercising legitimate naming rights.


Belgium

Contributed by ALTIUS
Parallel import of medicinal products
  • Belgium
  • November 06 2017

Merck Sharp & Dohme (MSD) recently sued PI Pharma before the Brussels Commercial Court for the parallel import and repackaging of one of MSD's medicinal products. MSD based its claim on the alleged violation of the first, third and fourth Bristol-Myers Squibb conditions. Although this is not the first time that the Brussels Commercial Court has been involved in a dispute over the parallel importation of medicinal products, the judgment further refines the scope of certain Bristol-Myers Squibb conditions.

Court issues decision on parallel importation of debranded Mitsubishi forklift trucks
  • Belgium
  • April 10 2017

In a recent judgment, the Brussels Court of Appeal ordered two parallel traders to pay provisional compensation of €3 million to the Mitsubishi Corporation for illegally importing hundreds of Mitsubishi forklift trucks which had been on the Asian market into the European Economic Area via parallel trade routes. The court held that the parallel traders had failed to provide conclusive evidence that Mitsubishi, the proprietor of the Benelux and EU trademarks, had consented to the parallel trade.

Court rules on use of competitor's trademark as AdWord
  • Belgium
  • May 02 2016

The Mons Court of Appeal recently issued a judgment in a dispute between Verabel, holder of a complex trademark, and Verandas Confort, which used the word VERABEL as a Google AdWord. The court found that the AdWord VERABEL created likelihood of confusion between the goods concerned and infringed the trademark's function of origin. As a result, Veranda Confort was ordered to cease using the AdWord.

Supreme Court defines online patent-infringing offer
  • Belgium
  • April 04 2016

The Supreme Court recently issued a judgment in a dispute between a European patent holder and Swiss-based medical and dental equipment manufacturer Nouvag. The court confirmed that Nouvag had failed to comply with an order not to offer an infringing product in Belgium, as the product was presented on its website as being available throughout Europe. The judgment provides clarity on 'offering' as an act of patent infringement in Belgium.

Potpourri I: patents and suspensive effect of appeals
  • Belgium
  • January 25 2016

The Potpourri I reform of civil procedure has made the suspensive effect of an appeal the exception rather than the rule. This could change the stakes of first-instance patent revocation cases. A literal reading of the relevant provisions suggests that, as a rule, a first-instance judgment revoking a patent is now enforceable pending an appeal. It thus makes sense to request the first-instance court to exclude the provisional enforcement of patent invalidity decisions.


Canada

Contributed by Smart & Biggar/Fetherstonhaugh
Federal Court finds PMPRB unreasonable in determining that patent pertains to medicine
  • Canada
  • December 18 2017

The Federal Court recently found that the Patented Medicine Prices Review Board's assessment that a patent pertained to Galderma Canada's Differin was unreasonable, as it had failed to consider the entire patent. As a result, the court quashed the board's decision requiring Galderma to file pricing information for Differin.

Recent developments in Alexion cases
  • Canada
  • December 18 2017

The Federal Court of Appeal recently heard Alexion's appeal of a decision striking out its constitutional challenge to the price regulation scheme and confiscatory powers found in the Patent Act. A decision is under reserve. Alexion also has a pending judicial review of the Patented Medicine Prices Review Board's decision that it sold Soliris (eculizumab) at excessive prices.

Court declares that administrative errors during application cannot void issued patent
  • Canada
  • November 27 2017

The Federal Court of Appeal recently ruled that Pfizer's failure to pay the correct issue fee did not render its patent void. In the context of a Section 8 case, Apotex had brought a partial summary judgment motion to have Pfizer's patent declared void for failure to comply with the Patent Act. The court cited the general principle that "pre-patent issuance defects in the administrative process for applying for a patent cannot be relied upon by an alleged infringer to render a patent void".

Patented Medicine Prices Review Board update
  • Canada
  • November 27 2017

The Patented Medicine Prices Review Board recently announced the release of a hearing panel's decision regarding the pricing of a breakthrough drug and the publication of a report which compares lists of drugs covered by the public drug plans to determine the extent of overlap in drug coverage. Further, in response to an unopposed request filed by the board to do so, a hearing panel discontinued an excessive pricing proceeding relating to Apotex's Apo-Salvent CFC Free.

Idenix seeks leave to appeal from Supreme Court in SOVALDI dispute
  • Canada
  • November 13 2017

The Federal Court of Appeal recently affirmed a trial decision relating to two competing patents concerning Gilead's SOVALDI (sofosbuvir). The Court of Appeal upheld the validity of Gilead's Patent 2,527,657 and declared Idenix's Patent 2,490,191 invalid on the basis of insufficiency of disclosure and inutility. Idenix has applied to the Supreme Court for leave to appeal.