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Intellectual Property

17 February 2020
Paul Ranjard SPC clarifies requirements for citing prior use defence in trademark infringement cases

China - Wanhuida Intellectual Property

A recent Supreme People's Court (SPC) decision clarified the requirements to cite the prior use defence under Article 59.3 of the Trademark Law. In this regard, the court stated that the only person eligible to cite this defence is the prior user themselves and that such use must have occurred prior to the registration application and the trademark owner's use of the registered trademark. Further, for the first time, the SPC made it clear that geographical scope is a key element in defining the original scope of use.

Authors: Paul Ranjard, Hui Huang, Binbin Du
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Natasha Mohunlal Conditional acceptance of trademark applications

South Africa - KISCH IP

Trademark applications are examined by the Office of the Registrar of Trademarks approximately eight to 10 months after their date of application. This article discusses several possible conditions that examiners often prescribe for accepting trademark applications and which applicants must therefore consider before filing.

Author: Natasha Mohunlal
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Ruey-Sen Tsai Copyright protection and Fair Trade Act: handbag design issues

Taiwan - Lee and Li Attorneys at Law

In the ever-changing fashion industry, every signature handbag design represents the designer's endeavour and the brand's goodwill. However, whether a handbag design is protected under the Copyright Act remains controversial. In recent civil decisions, the IP Court has demonstrated how the Taiwanese courts approach this issue.

Authors: Ruey-Sen Tsai, Celia Tao
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Recent updates

Jason Chuang Broadest reasonable interpretation, presumption of validity and doctrine of claim differentiation

Taiwan - Lee and Li Attorneys at Law

Author: Jason Chuang
Barbara Krystkowiak Appeal court upholds criminal sentence for possession of infringing handbags

Spain - Grau & Angulo

Author: Barbara Krystkowiak
Wang Yan Disputes over geographical indications

China - Wanhuida Intellectual Property

Authors: Wang Yan, Nan Jiang
Philip Lapin Trademarks Office issues new limits on time extensions to respond to office actions

Canada - Smart & Biggar

Authors: Philip Lapin, Mark Evans
Asli Tireli Liability of online marketing platforms for counterfeiting activities

Turkey - Deriş Patents and Trademarks Agency

Authors: Asli Tireli, Serra Coral
Noboru Taniguchi Expanded protection for building and interior designs under revised Design Act

Japan - Nishimura & Asahi

Author: Noboru Taniguchi
Christopher Loh Supreme Court prohibits USPTO from shifting attorneys' fees in certain district court proceedings

USA - Venable LLP

Author: Christopher Loh
Alexander Vida All that jazz: bad-faith trademark applications

Hungary - Danubia Patent and Law Office LLC

Author: Alexander Vida

Upcoming event

Managing and Mitigating Risk in Intellectual Assets

26 March, 2020 – London, UK

IP may be the single most important asset a company possesses. Whether it is physical or digital, customer data or operational information, trade secrets or business strategies, IP is often the main driver of revenue for any organisation. As IP becomes a more valuable corporate asset, managing the risks around it become a major business priority. IAM’s inaugural IP Risk Management series will provide organisations with best practices for identifying, evaluating, managing and mitigating IP risks within the business.

For more details go to: