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Intellectual Property

December 04 2017
Alexander Vida Same facts, different outcome: HIPO and Metropolitan Tribunal disagree on likelihood of confusion

Hungary - Danubia Patent & Law Office LLC

A recent Metropolitan Court of Appeal case demonstrates that the determination of likelihood of confusion is often a sensitive issue. This case is notable, as the Hungarian Intellectual Property (HIPO) and the Metropolitan Tribunal came to different conclusions after examining the same facts. Although the HIPO rejected the opposition – holding that the visual and phonetic similarities between the marks in question were weak – the tribunal (and subsequently the court) disagreed.

Author: Alexander Vida
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Chisako Yagi Similarity of device marks to be used as stitched ornamental marks

Japan - Nishimura & Asahi

A Japanese company recently claimed that a Chinese company's trademark should be invalidated due to its similarity with the plaintiff's trademarks and the likelihood of confusion as to the source of the designated goods. Although the Japanese Patent Office Trial and Appeal Board rejected the plaintiff's claims, the IP High Court overturned this decision. The conclusive factor in the case was the way in which the similarity of marks should be assessed when they are intended to be stitched on certain goods.

Author: Chisako Yagi
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Bram Woltering Supreme Court sets standards for direct and indirect infringement of Swiss-type claims

Netherlands - AKD NV

The Supreme Court recently rendered a landmark judgment on second medical use claims – more specifically, Swiss-type claims – which have been the subject of significant legal uncertainty throughout Europe. Although the judgment provides welcome clarification on Swiss-type claims with regard to the possibility of indirect infringement and the standards for direct and indirect infringement, some questions still remain.

Authors: Bram Woltering, Peter Claassen
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Seung Hee Lee Working with Customs: vital and effective way to combat counterfeiters

South Korea - Kim & Chang

One of the first lines of defence in preventing the spread of counterfeit and imitation goods is to stop such goods from entering a country at the borders. Accordingly, IP rights owners should always consider using customs' services as a part of their enforcement programmes in South Korea. In particular, IP rights owners should actively assist Customs in seizure cases and conduct training sessions for customs officers to educate them about their brands.

Authors: Seung Hee Lee, Jason J Lee
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Christopher Loh Federal Circuit holds that TC Heartland was change of law

USA - Fitzpatrick, Cella, Harper & Scinto

The Federal Circuit recently held that TC Heartland represented a change of law and that Micron Technology Inc's failure to raise a venue objection in its initial motion to dismiss did not waive the objection under Rule 12 of the Federal Rules of Civil Procedure. However, the court also explained that there may be other bases on which a defendant could be found to have forfeited a venue objection.

Authors: Christopher Loh, Judy Kim
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Andrew Mandlsohn Patented Medicine Prices Review Board update

Canada - Smart & Biggar/Fetherstonhaugh

Author: Andrew Mandlsohn
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Taiwan - Lee and Li Attorneys at Law

Authors: Hsiu-Ru Chien, Yu-June Tseng
Paul Ranjard Supreme People's Court holds trademark and packaging rights separate

China - Wanhuida Peksung

Author: Paul Ranjard
Corinne E Atton Two bites of the apple: five facts about drug patent inter partes review final written decisions

USA - Fitzpatrick, Cella, Harper & Scinto

Authors: Corinne E Atton, Ha Kung Wong, April Breyer
Mehmet Nazim Aydin Deriş Employee inventions and designs under new IP Code

Turkey - Deris Avukatlik Ortakligi

Author: Mehmet Nazim Aydin Deriş
Claudia Csáky Introduction of certification marks and other amendments to Trademark Law

Austria - Graf & Pitkowitz Rechtsanwälte GmbH

Authors: Claudia Csáky, Markus Bitterl
Anette Rasmussen Influence of reputed trademark on marketing practices

Denmark - Awapatent

Author: Anette Rasmussen
Duck Soon Chang Patent Court holds first hearing in English

South Korea - Kim & Chang

Authors: Duck Soon Chang, John J Kim, Ki Yun Nam