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Intellectual Property

22 April 2019
Claudia c Flashlight decision illuminates compensation guidelines for unlawful use of IP rights

Austria - Graf & Pitkowitz Rechtsanwalte GmbH

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.

Authors: Claudia c, Isabella Wiener
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Abigail Smith Federal Court finds invalidity allegations relating to patent for metformin formulations unjustified

Canada - Smart & Biggar/Fetherstonhaugh

Valeant Canada's application for an order prohibiting the minister of health from issuing a notice of compliance to Generic Partners for its generic version of Valeant's Glumetza, a metformin formulation, was recently granted. With respect to anticipation and double patenting, the court found that the prior art document on which Generic Partners had relied for both allegations did not disclose all three of the size, shape and time elements of the claimed formulations.

Author: Abigail Smith
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Mingming Yang Andreas Stihl registers orange and grey colour combination as trademark

China - Wanhuida Peksung IP Group

Colour combinations have been registrable as marks since the Trademark Law was amended in 2001. However, in practice, this has been difficult, as examiners often opt for the easy solution of refusing such marks on account of their lack of distinctiveness. The Beijing IP Court case involving Andreas Stihl AG & Co KG's orange and grey abstract colour combination trademark illustrates the difficulties in this regard and showcases how to register a colour combination trademark in China.

Author: Mingming Yang
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Beatriz Bejarano Battle of the bottles: EU Trademark Court of Appeal finds infringement of well-known Malibu bottle

European Union - Grau & Angulo

In December 2018 the EU Trademark Court of Appeal declared that the Ibiza Beach drink marketed by Productos Ibicencos, SL and Aromáticas de Ibiza, SL – whose bottle was highly similar to the well-known Malibu bottle – infringed The Absolut Company AB's (TAC's) 3D and graphic trademarks which protect the shape of such bottle. Among other things, the court held that the defendants had taken unfair advantage of TAC's trademarks, as their product was very similar in appearance.

Author: Beatriz Bejarano
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Kevin Dam Royalties, currency conversion and taxes: what rights holders need to know

South Africa - KISCH IP

South Africa has significant exchange control regulations in place that restrict and require approval for payments in international IP licensing relationships. Typically, if an IP right in issue has been commercialised or if its commercialisation is imminent, exchange control requires an appropriately motivated valuation substantiating the price to be furnished.

Author: Kevin Dam
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Okan Can Counterfeiting through small shipments – new border measures expected

Turkey - Deris Attorney At Law Partnership

The absence of a clear reference to small shipments in customs legislation has created doubt over whether customs officers should seize small shipments of counterfeit goods. This unfortunately encourages manufacturers of counterfeit goods to minimise the risk of seizure by using small shipments. However, the government looks set to enact a new Customs Law to regulate small shipments and protect rights holders.

Authors: Okan Can, Gizem Kucukarslan Bayer
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Ha Kung Wong Biosimilars and the BPCIA: past, present and future

USA - Venable LLP

While the biosimilar market in the United States has gotten off to a relatively slow start compared with Europe – where biosimilars have been available since 2006 – it has recently gained momentum and will continue to grow in the coming years as more blockbuster biologics lose regulatory exclusivity and patent protection.

Authors: Ha Kung Wong, April Breyer
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Recent updates

Tsung-Yuan Shen Supreme Administrative Court interprets teaching away requirements

Taiwan - Lee and Li Attorneys at Law

Author: Tsung-Yuan Shen
Héctor Elias Chagoya Multiple dependent claims: clarity over cost

Mexico - Becerril, Coca & Becerril SC

Author: Héctor Elias Chagoya
Andrew Mandlsohn Apotex seeks leave from Supreme Court of Canada in cefaclor damages action

Canada - Smart & Biggar/Fetherstonhaugh

Author: Andrew Mandlsohn
Shuhua Zhang Patent enforcement: administrative or judicial?

China - Wanhuida Peksung IP Group

Author: Shuhua Zhang
Muazzez Korutürk Private expert reports and cross-examination in patent litigation

Turkey - Deris Attorney At Law Partnership

Authors: Muazzez Korutürk, Okan Can
At van Rooy Patent law overview

South Africa - KISCH IP

Author: At van Rooy
Ana-Laura Morales Barcelona Court of Appeal confirms validity and infringement of Nescafé Dolce Gusto patents

Spain - Grau & Angulo

Author: Ana-Laura Morales
Alexander Vida Who owns a mark used by multiple business parties?

Hungary - Danubia Patent and Law Office LLC

Author: Alexander Vida

Upcoming events

Auto IP USA 2019

May 8, 2019 – Detroit, USA

Building on three years of success in Detroit, IAM’s Auto IP USA will bring together the leading IP experts from across the automotive landscape. Through thought leadership, discussion and networking, attendees will gain insight into the IP challenges facing those driving change in the new era of mobility.

For more details go to:

Auto IP Europe 2019

16 May 2019 – Munich, Germany

Returning to Munich for its second year, Auto IP Europe will offer IP professionals in the automotive industry the opportunity to hear expert strategies from the complete supply chain – from the OEMs and industry suppliers, to the innovators in high-tech and connectivity.

For more details go to: