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Intellectual Property

12 April 2021
Philip Lapin No more chasing rainbows: advantages of black and white when filing Canadian trademark applications

Canada - Smart & Biggar

Some foreign brand owners may be surprised to learn that in Canada, when seeking to protect design (or figurative) marks, it is sometimes better to register marks in black and white in cases where the marks would normally be displayed in colour. Moreover, broader protection can typically be secured in Canada by registering design (or figurative) marks in black and white as opposed to including a colour claim.

Authors: Philip Lapin, Nora Labbancz
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Huimin Qin Supreme People's Court promulgates opinions on copyright

China - Wanhuida Intellectual Property

Soon after the recent adoption of the third amendment to the Copyright Law, the Supreme People's Court promulgated the Opinions on Strengthening the Protection of Copyright and Copyright-Related Rights. The opinions aim to encourage the development of emerging industries and improve the quality and efficiency of copyright trials.

Authors: Huimin Qin, Nan Jiang
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Paula Sailas IP litigation and alternative dispute resolution options

Finland - Berggren Oy

In Finland, the validity of IP rights (except copyrights) is examined by the Finnish Patent and Trademark Office. The question of whether one party has infringed another party's valid IP rights may be addressed through litigation. A specialised IP court may be a good choice in certain circumstances. However, various alternative dispute resolution mechanisms are also available, depending on the IP right and the dispute in question.

Author: Paula Sailas
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Jean-Jacques Canonici Role of patent data in innovation lifecycle: development stage

International - GEVERS

Patent-related data is a recognised source of information about technological innovation programmes and the patenting strategies of parties in a particular field. Parties often use data reporting tools (eg, mapping or landscaping) to provide an overview of a competitive activity. This article focuses on how parties can use patent data at the development stage of a product's innovation lifecycle.

Authors: Jean-Jacques Canonici, Eugénie Bard
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Marietta Flores Common terms in pharmaceutical trademarks

Peru - OMC Abogados & Consultores

Pharmaceutical trademarks often comprise a combination of elements (eg, prefixes, suffixes or commonly used words) that evoke the product's properties, active ingredients or therapeutic function. Any party may include commonly used terms in a trademark. However, to avoid the risk of confusion, pharmaceutical trademarks must include elements in addition to the common term to ensure that consumers can identify and distinguish the product's commercial origin.

Authors: Marietta Flores, Kelly Sánchez
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Ben Yuu Trademark infringement theory – innocent or infringing?

South Korea - NAM & NAM

Where an application for a trademark which is substantially similar to a prior registered trademark is successful, does the use of the later filed trademark constitute infringement of the prior registered trademark? This situation is not explicitly addressed by the Trademark Act, but the courts have traditionally held that it does not constitute infringement. However, a recent Supreme Court ruling overturned this convention, highlighting the importance of early filing in South Korea.

Author: Ben Yuu
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Hsiu-Ru Chien Taiwan-Japan patent file wrapper exchange piloted

Taiwan - Lee and Li Attorneys at Law

In 2018 the Taiwan-Japan Relations Association and the Japan-Taiwan Exchange Association signed a memorandum of understanding on the exchange of patent file wrappers to facilitate the sharing of file histories and other relevant information sought by applicants and patent examiners between Taiwan and Japan. The Taiwan Intellectual Property Office recently announced the pilot of a shared platform for accessing patent examination documents.

Authors: Hsiu-Ru Chien, Elina Yu
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Tom Nener Online infringement: when is a platform 'targeted' at a territory?

United Kingdom - Pinsent Masons

Unsurprisingly, the combination of the COVID-19 pandemic and global lockdowns has resulted in increased consumer shopping online. To capture that increased demand, retailers have invested in both their website infrastructure and marketing budgets. Consumers now have no geographical limits on where they view and purchase goods. An unintended consequence of this is that it has shone a spotlight on the tension between trademarks which are territorial and online marketplaces which are not.

Authors: Tom Nener, Katy Bourne
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Martin L Saad Mona Lisa or dog doo? Humour avoids trademark liability

USA - Venable LLP

Trademark holders often face the dilemma of whether and how to respond when their marks are used for comic effect, particularly when the humour is at their expense for another's commercial gain. Instinctively, trademark holders want to protect their marks, often with an aggressive legal response. However, that approach is not always wise and is now less likely to succeed, at least in one appellate circuit, following a recent case involving the well-known Jack Daniel's brand.

Authors: Martin L Saad, Holly Gordon
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Recent updates

International Law Office Tell us what you think and you could win a £100 Mastercard voucher

International - International Law Office

Author: International Law Office
Huib Berendschot Supreme Court addresses confusion between descriptive, non-distinctive trade names

Netherlands - AKD

Author: Huib Berendschot
Robert Alderson Patent licensing – interview

Finland - Berggren Oy

Authors: Robert Alderson, Mariella Massaro
Mei Huang Court grants protection of unregistered Romanée-Conti GI

China - Wanhuida Intellectual Property

Authors: Mei Huang, Xiaoning Pu
David Schwartz Patentability of diagnostic methods – has the Patent Office drawn the line?

Canada - Smart & Biggar

Author: David Schwartz
Annalena Nordin Court finds that GLENETT trademark does not evoke Scotch Whisky GI

Sweden - Westerberg & Partners Advokatbyrå Ab

Author: Annalena Nordin
Kim Pietersen IP success for shoe brand Bathu

South Africa - Spoor & Fisher

Author: Kim Pietersen
Yuri Fancher Machado Operating virtually in pursuit of greater effectiveness

Brazil - Montaury Pimenta, Machado & Vieira de Mello

Authors: Yuri Fancher Machado, Maria Eduarda de O Borrelli Junqueira

Upcoming events

IPBC Global 2021

14-16 November 2021

IPBC Global will bring the world’s IP business leaders back together again in 2021 when it reconvenes in Seattle, the fastest growing tech hub in the United States and home to some of the most innovative businesses on the planet. From 14 to 16 November 2021, attendees at the world’s leading IP event will enjoy unsurpassed networking and deal-making opportunities, as well as the chance to join high-level discussions around the key challenges facing those responsible for developing IP business strategies now and into the future.

For more details please visit:

Patent Transactions 2021

28-29 April 2021 | Zoom

IAM is delighted to present the inaugural Patent Transactions, an online event designed to deliver a global overview of IP dealmaking, with a separate deep-dive focus on the Asia-Pacific market. On 28 and 29 April, many of the world’s leading IP dealmakers will share best practices around buying, selling and licensing patents in the ever-changing global landscape. Engage with key licensing decision makers, buyers and sellers from across the patent market and learn first-hand from their experience and insight.

For more details please visit: