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Intellectual Property

12 August 2019
Daniel Hnatchuk Competition Bureau updates IP Enforcement Guidelines

Canada - Smart & Biggar

The Competition Bureau recently released its updated IP Enforcement Guidelines. While the guidelines are technical and directed at IP and competition law practitioners, there are key aspects of the bureau's approach and various scenarios involving competition and intellectual property that could arise for consideration. As such, when issues relating to IP and competition law arise, including when deciding whether to pursue the licensing or enforcement of IP rights, legal advice should be sought.

Author: Daniel Hnatchuk
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Urszula Wojtyra Federal Court of Appeal requires PMPRB to redetermine whether patent pertains to Galderma's Differin

Canada - Smart & Biggar

The Federal Court of Appeal recently granted the Patented Medicine Prices Review Board's (PMPRB's) appeal and returned to the board the matter of whether the invention of the patent at hand pertained to Galderma's Differin. The court addressed several issues, including whether the PMPRB had acted unreasonably in limiting its review of the patent to selected portions.

Author: Urszula Wojtyra
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Yajun Yu Dilemma and solution – enforcement of GUI patents

China - Wanhuida Peksung IP Group

China has followed the global trend of protecting graphical user interfaces (GUIs) by acknowledging them as patentable designs in its amended Patent Examination Guidelines. However, under the Patent Law, designs are patentable only when filed together with a product which embodies the design. Since GUIs and software per se are not recognised as products, GUI patentees are faced with a dilemma if they attempt to challenge software developers for merely offering software which exploits their patented GUI design.

Author: Yajun Yu
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Cesare Galli Italy implements EU Trademarks Directive and further strengthens trademark protection

Italy - IP Law Galli

Legislative Decree 15/2019, which implements the EU Trademarks Directive, entered into force on 23 March 2019. The decree's main innovations include the reinforcement of trademark protection (in particular, the possibility of using cross-border measures and reacting against certain preparatory acts of counterfeiting has been extended to transported goods) and the removal of the anachronistic requirement of graphic representation for the registration of non-conventional trademarks.

Author: Cesare Galli
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Benjamin Z Lerma Two tests – Supreme Court case law on determining trademark infringement

Philippines - Romulo Mabanta Buenaventura Sayoc & De Los Angeles

The Supreme Court has repeatedly stated that there are no set rules to determine whether one trademark is confusingly similar to, or a colourable imitation of, another and that each case must be decided on its own merits. Nonetheless, over the years, the Supreme Court has fashioned two tests (ie, the dominancy and holistic tests) to determine whether a mark infringes another. This article reviews a number of landmark Supreme Court decisions that applied these tests.

Author: Benjamin Z Lerma
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Recent updates

Alexander Vida Significance of third-party prior use in annulment proceedings

Hungary - Danubia Patent and Law Office LLC

Author: Alexander Vida
Magdalena Borucka UKIPO considers whether LINKEDIN is similar to KINKEDIN

United Kingdom - Taylor Wessing

Authors: Magdalena Borucka, Christopher Benson
Sonica Wilken Interplay between company name reservations, trademark registrations and defensive registrations

South Africa - KISCH IP

Author: Sonica Wilken
Julien George Newly recognised tool for effective and expedient resolution of technical matters

India - Saikrishna & Associates

Author: Julien George
Cesare Galli New regulations on brands that evoke Italy or are linked to Italian territory

Italy - IP Law Galli

Author: Cesare Galli
Mark Evans Pampered Chef succeeds in trademark infringement battle

Canada - Smart & Biggar

Authors: Mark Evans, Tierney GB Deluzio
Julia Carretero Offering goods or services online may be decisive in determining territorial jurisdiction

Spain - Grau & Angulo

Author: Julia Carretero
Okan Can Potential changes to copyright takedown request procedure

Turkey - Deris Attorney At Law Partnership

Authors: Okan Can, Enes Kağan Bek

Upcoming events

Software IP 2019

2 October 2019 – Silicon Valley, Hyatt Place San Jose

Software is not just a thriving industry in its own right; these days it’s also an integral part of most industries. But as quickly as innovations arise, so to do challenges for IP executives and their advisers. IAM’s third annual Software IP event heads to Silicon Valley (2 October) to provide a platform for discussion around creating value from software IP and devising new protection strategies in areas such as AI, open source and SaaS.

For more details go to:

Patent Licensing 2019

3 October 2019 – San Francisco, Mission Bay Conference Centre

Although the licensing landscape is turbulent, there are still major opportunities for both licensors and licensees to conclude win-win agreements. But to do this, dealmakers need strategies to overcome the many obstacles and hurdles that they face, both internally and externally. IAM’s fifth annual Patent Licensing conference (San Francisco, 3 October) will provide licensors and licensees with best practices and innovative techniques for successfully negotiating deals.

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IoT IP 2019

20 November 2019 – The Charles Hotel, Munich

IAM’s IoT IP conference will provide a platform for senior IP decision makers across multiple industries to discuss how IP strategies are fundamentally changing to meet the demands of the fourth industrial revolution.

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Brand Protection Online Europe 2019

14 October 2019 – London, etc.venues Monument

In the developing digital age, the requirements of brand protection have evolved in response to increasing threats around cybersecurity, advances in technology and the shifting roles and responsibilities within a business. Following a successful launch in Chicago earlier this year, Brand Protection Online heads to London on 14 October, gathering senior brand experts to discuss state-of-the-art online brand protection strategies.

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IPBC Latin America 2019

4 December 2019 – São Paulo, Brazil

In its second year, IPBC Latin America heads to São Paulo (4 December) to showcase and explore winning strategies for managing the IP lifecycle to maximise corporate value. Rights holders from Latin America and beyond will delve into the best practices, enforcement techniques and monetisation options that can be utilised to craft world-class IP management and value creation programmes.

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