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Intellectual Property

10 May 2021
François Willems More than a wine label when prestige is at stake

Belgium - GEVERS

When a trademark achieves a reputation, its owner can claim a broader protection which extends to goods and services not designated by their trademark registrations. However, such trademarks are more likely to be the target of parasitism and unauthorised use by unscrupulous infringers. A recent judgment regarding infringement of the well-known trademark PETRUS reaffirmed that trademark counterfeiting damages the prestige and reputation of the affected trademark.

Author: François Willems
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Mei Huang Cognac fends off genericide attack in opposition proceeding

China - Wanhuida Intellectual Property

In 2020 the China Intellectual Property Administration dismissed an opposition proceeding against the geographical indication (GI) collective trademarks COGNAC and 干邑 ('Cognac' in Chinese), which were filed by the National Interprofessional Cognac Bureau. Both trademarks have since proceeded to registration. Because GI trademarks are not immune to genericide attacks, owners must monitor how they are used.

Authors: Mei Huang, Xiaoning Pu
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Johanna Säteri PUMA trademark dispute over RUMA turns 'ugly': Supreme Administrative Court weighs in

Finland - Berggren Oy

In a recent case, the Supreme Administrative Court held that there was a likelihood of confusion between an earlier figurative mark, PUMA, and the contested trademark RUMA. The Finnish Patent and Registration Office and the Market Court had previously reached a contrary conclusion. Although the owner of the PUMA trademarks had presented no evidence for the reputation of the marks in Finland, the court considered them to have a strong distinctive character and scope of protection.

Authors: Johanna Säteri, Jenni Ihalainen
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Evelyn Dueñas Morales White, luxury and premium brands: trademark considerations

International - OMC Abogados & Consultores

The use of logos and denominations has changed over time since more competitors now exist. Therefore, greater creativity is required to avoid the use of denominations or logos which are similar to previously registered or requested trademarks. Further, parties should take into account that consumer preference has also changed due to the influence of various factors. This article considers three types of brand – namely, white brands, luxury brands and premium brands.

Author: Evelyn Dueñas Morales
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Chisako Yagi Court dismisses Starbucks's trademark invalidation request despite survey results

Japan - Nishimura & Asahi

The IP High Court recently confirmed the Japan Patent Office (JPO) Trial and Appeal Board's decision to dismiss Starbucks Corporation's request to invalidate a trademark which had a similar composition to that of its own. To prove that the composition of its trademark was well known and characteristic, Starbucks conducted a survey through a research company using an image that had undergone mosaic processing. However, the JPO and the IP High Court found that the survey was inappropriate.

Author: Chisako Yagi
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Ian Mirandah Military coup halts trademark traction

Myanmar - Mirandah Asia

It was previously hoped that the 'grand opening' of Myanmar's first dedicated mark registration system under the Trademark Law 2019 would take place in April 2021. However, since the military coup in February 2021, both the commencement of the Trademark Law and the grand opening of the new registration scheme have been suspended. While uncertainty remains, parties should take extra care with their applications.

Author: Ian Mirandah
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Celine Varmann Jørgensen Implementation of new Customs Act

Norway - Bryn Aarflot AS

By 1 July 2021 a new Customs Act will be implemented in Norway, with simplified procedures relating to the destruction of consignments which contain counterfeit goods. The amendments aim to align Norwegian customs control with EU regulations and practice. For IP owners, the new procedures are long overdue and will be welcomed. Under the new rules, counterfeit goods are more likely to be detained and destroyed, which in turn may result in fewer attempts to import counterfeit products overall.

Author: Celine Varmann Jørgensen
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Patrick O'Brien Supreme Court of Appeal makes rare patent judgment

South Africa - Spoor & Fisher

The Supreme Court of Appeal recently handed down a rare patent judgment in a case in which a patent infringement claim had been met by an attack on the validity of the patent. The issue in this case was whether a patent relating to the mounting of a radar system on a motorised automobile vehicle was valid, given that the same radar system had previously been mounted on a trailer hitched to a vehicle. The court held that the patent did not "disclose any advance in radar technology".

Author: Patrick O'Brien
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Paula Gutiérrez Catalonia High Court of Justice confirms grant of DYNAMIC SANTIVERI trademark

Spain - Grau & Angulo

The Catalonia High Court of Justice recently dismissed a contentious-administrative appeal which had been filed on the grounds of incompatibility between the trademark DYNAMIC SANTIVERI and the earlier trademark DYNAMIN. The court found that sufficient denominative and applicative differences existed between the two trademarks to avoid any likelihood of confusion in the mind of a general consumer and thus confirmed the grant of the DYNAMIC SANTIVERI trademark.

Author: Paula Gutiérrez
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Shih-I Wu Payment of patent application and annual fees irrelevant for service invention judgments

Taiwan - Lee and Li Attorneys at Law

Disputes over patent ownership often arise between companies and research and development personnel. Such disputes can involve disagreement over whether an invention is a service invention and whether any specific agreements exist which govern patent ownership between the two parties. Opposing views have been presented regarding whether the fact that a company has paid for a patent application and annual patent fees can evidence that an invention is a service invention.

Author: Shih-I Wu
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Aumair Qayum Court of Appeal sheds further light on copyright law in relation to hyperlinking

United Kingdom - Pinsent Masons

A recent Court of Appeal judgment addressed the targeting of a web-based radio service and copyright infringement by an act of communication to the public under Section 20 of the Copyright, Designs and Patents Act 1988. The Court of Appeal decided not to depart from EU case law, stressing the need for consistency of interpretation between the act and the EU and wider international copyright framework.

Authors: Aumair Qayum, Gill Dennis
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Recent updates

Dmitry Ekenin EAPO announces launch date of Eurasian industrial design patent applications

International - Sojuzpatent

Author: Dmitry Ekenin
Mikkel Lassen Ellingsen Patent prosecution: FAQs

Norway - Bryn Aarflot AS

Author: Mikkel Lassen Ellingsen
Tommy Grosskreutz Opposition Division revokes plastic bottle patent

European Union - Grünecker

Author: Tommy Grosskreutz
Fisayo Tifase Protection of shapes and colours of goods

Nigeria - Abdulai Taiwo & Co

Author: Fisayo Tifase
Xingnan Ming SPC invalidates copycat N trademarks

China - Wanhuida Intellectual Property

Author: Xingnan Ming
Audrey Liao Customs Administration proposes to relax regulations regarding trademark owner requests for photos

Taiwan - Lee and Li Attorneys at Law

Author: Audrey Liao
Oscar Mago Trademark registration FAQs

Peru - OMC Abogados & Consultores

Author: Oscar Mago
Jérôme Coulonvaux Thin line between legitimate copies and unfair trade practices

Belgium - GEVERS

Author: Jérôme Coulonvaux

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:
https://cvent.me/ebeeOG?RefId=LexILO

IPBC Europe 2021

4-5 October 2021

IPBC Europe – Europe’s foremost conference about IP value creation – will take place in Dublin from 4 to 5 October. Being held at the prestigious Shelbourne Hotel, the event will once again be Europe’s leading gathering of senior corporate IP professionals from companies of all sizes.


For more details please visit:
https://ipbc.iam-media.com/QrxnzQ?RefId=LEX

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