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Intellectual Property

January 08 2018
Claudia Csáky Marketability is key: if a work can be separated it is not a joint work

Austria - Graf & Pitkowitz Rechtsanwälte GmbH

In a welcome development of Austrian copyright law, the Supreme Court recently ruled that a combination of works by two artists does not constitute a joint work if it can be separated, even if the works involved were created for the sole purpose of being combined as a jointly planned contribution. Strong indicators of whether parts of a work are separable are the individual marketability and possible depreciation of the separated parts.

Authors: Claudia Csáky, Markus Bitterl
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Andrew Mandlsohn PMPRB releases Annual Report 2016

Canada - Smart & Biggar/Fetherstonhaugh

The federal minister of health recently submitted the Patented Medicine Prices Review Board Annual Report 2016 to the House of Commons and the Senate. The report indicates that in 2016 Canadian patented drug prices were the fourth-highest among the seven comparator countries against which the board reviewed prices and that sales of patented drug products totalled C$15.5 billion. Research and development spending remained unchanged from 2015.

Author: Andrew Mandlsohn
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Brandon Heard Federal Court declines to assess litigation funding arrangement in patent infringement case

Canada - Smart & Biggar/Fetherstonhaugh

The plaintiff in a patent infringement action against Pfizer recently brought a motion seeking approval of a litigation funding agreement (LFA) with a third party, as required by the terms of the agreement. The prothonotary dismissed the motion on the basis that such approval is not required beyond class proceedings. Further, the Federal Court had no jurisdiction to determine the validity of the LFA.

Author: Brandon Heard
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Yunquan Li Trademarks comprising different letters may still cause confusion and thus constitute similar trademarks

China - Wanhuida Peksung

The China Trademark Office (CTMO) recently held that although the word marks in question were spelt differently, their similarities in terms of font, design and arrangement created a similar overall visual effect. As such, the coexistence of the marks in the market was likely to cause confusion among the relevant public with regard to the origin of the designated goods. The CTMO's comprehensive examination of the likelihood of confusion was in line with a recent Supreme People's Court interpretation.

Authors: Yunquan Li, Sang Qingqing
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Alexander Vida When is a trademark application made in bad faith?

Hungary - Danubia Patent & Law Office LLC

As it is usually difficult to prove the existence of bad faith in respect of trademarks, case law is often reluctant to apply this prohibition. This was the case with a recent Metropolitan Tribunal case. Fortunately, the Metropolitan Court of Appeal was more flexible in this respect and interpreted the facts concerning bad faith alongside another issue, thus leading to different interpretations of the concept of due cause by the tribunal and the court.

Author: Alexander Vida
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Núria Ribera Preliminary injunctions revoked due to prima facie invalidity of Truvada SPC

Spain - Grau & Angulo

Barcelona Commercial Court Number 4 recently lifted the preliminary injunctions that it had previously granted ex parte at the request of Gilead against Mylan and Teva for the alleged imminent infringement of Gilead's supplementary protection certificate (SPC) for the combination of tenofovir disoproxil and emtricitabine. The defendants successfully opposed the preliminary injunctions, alleging the invalidity of the SPC and invoking the applicable European Court of Justice case law.

Author: Núria Ribera
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Mehmet Nazim Aydin Deriş New IP Code – changes regarding patents, new post-grant opposition and enforcement provisions

Turkey - Deris Avukatlik Ortakligi

The new Industrial Property Code 6769 has introduced new provisions regarding patent enforcement. The code aims to improve the quality of patented inventions and harmonise Turkish patent law with EU legislation and the international agreements to which Turkey is a party. Although the new IP Code has yet to be fully harmonised with the European Patent Convention, it is expected that these gaps will be filled when parties enforce their patent rights before the courts.

Authors: Mehmet Nazim Aydin Deriş, Okan Can
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Recent updates

Alexander Vida Globalisation and the use of geographical names in trademarks

Hungary - Danubia Patent & Law Office LLC

Author: Alexander Vida
Urszula Wojtyra Federal Court finds PMPRB unreasonable in determining that patent pertains to medicine

Canada - Smart & Biggar/Fetherstonhaugh

Author: Urszula Wojtyra
Juan Pablo Zamora New law reforms IP Act and creates new ministry

Chile - Montt y Cia SA

Author: Juan Pablo Zamora
Xiangrong Wu TRAB rules that unusual product shape is eligible for 3D trademark registration

China - Wanhuida Peksung

Author: Xiangrong Wu
Christopher Loh Supreme Court hears oral argument on constitutionality of inter partes review in oil states

USA - Fitzpatrick, Cella, Harper & Scinto

Author: Christopher Loh
Daniel R Zuccherino Likelihood of confusion of pharmaceutical trademarks

Argentina - Obligado & Cia

Author: Daniel R Zuccherino
May Chen Do substantial differences exist in determination of equivalent infringement?

Taiwan - Lee and Li Attorneys at Law

Author: May Chen
Cesare Galli Collecting societies and the SIAE – another step towards liberalisation

Italy - IP Law Galli

Author: Cesare Galli