Intellectual Property updates

Chile

Contributed by Montt y Cia SA
INAPI designated as international searching and preliminary examining authority
  • Chile
  • May 07 2018

In 2015 the National Institute of Industrial Property (INAPI) was designated as an international searching authority (ISA) and international preliminary examining authority (IPEA) under the Patent Cooperation Treaty. From January 1 2018, the INAPI can issue international search and preliminary examination reports for Chilean applicants and applicants from Latin American and Caribbean countries that have designated the INAPI as their ISA and IPEA.

Technology and innovation support centre inaugurated
  • Chile
  • March 05 2018

The National Institute of Industrial Property (INAPI) recently inaugurated its technology and innovation support centre, which was backed by the World Intellectual Property Organisation. The INAPI also recently implemented an advanced electronic signature programme, strengthened security measures to safeguard information and initiated a pilot plan that will enable the institute to become a paperless organisation.

New law reforms IP Act and creates new ministry
  • Chile
  • December 18 2017

Law 21,045, which was recently published in the Official Gazette, created the Ministry of Culture, Arts and Patrimony and reformed the IP Act through the creation of the National Cultural Patrimony Service. Under the changes introduced, the Intellectual Rights Department is now under the auspices of the National Cultural Patrimony Service. As a result, all IP matters are now part of the new Ministry of Arts, Cultures and Patrimony.

Trademark Office rejects trademark applications for differences between applied trademark and applicant
  • Chile
  • July 31 2017

The Trademark Office recently rejected several trademark applications containing the terms 'corporation', 'corporations' or similar when the applicant was not a US-based company on the basis that they would result in error or confusion. However, the Industrial Property Appeals Court dismissed this argument and revoked the Trademark Office's decisions, stating that the law does not require a trademark to be concordant with the applicant's corporate structure or organisation.

Industrial Property Appeals Court grants favourable decision to Pablo Neruda Foundation
  • Chile
  • April 17 2017

After more than eight years of litigation, the Pablo Neruda Foundation (heir to the rights of the Nobel Prize-winning Chilean poet Pablo Neruda) obtained a favourable decision from the Industrial Property Appeals Court regarding its annulment action against the Reyes hereditary succession. This decision is not only relevant as an example of the application of IP Law and the Succession Law, but also refers to one of Chile's most famous names.


China

Contributed by Wanhuida Peksung
Winning first instance on procedural technicality not enough: final victory on merits remains necessary
  • China
  • June 25 2018

The Beijing High Court recently ascertained that a cited mark had acquired well-known trademark status before the opposed mark's application date. Thus, the court corrected the first-instance court's findings, while upholding its decision to rescind the Trademark Review and Adjudication Board's decision for its failure to address all of the cited mark owner's claims.

Keemun GI certification trademark invalidated
  • China
  • June 18 2018

The Beijing High Court recently overturned a first-instance judgment relating to a certification trademark filed by the Keemun Black Tea Association. In its decision, the court emphasised that geographical indication trademark applicants bear a higher obligation and must act in good faith when submitting filing documents, including by not producing forged application files and giving a full and accurate account of the circumstances.

How to be more strategic in your fight against bad-faith filing
  • China
  • June 11 2018

Data released by the Beijing Intellectual Property Court shows that bad-faith filings and registrations account for 30% of all trademark-related administrative suits, making them a major concern for brand owners. Recent case law of the China Trademark Office, the Trademark Review and Adjudication Board and the judiciary reveals how brand owners could be more strategic in fighting bad-faith filing under the existing trademark legislative framework.

Damages awarded in patent infringement case beyond statutory limit
  • China
  • April 30 2018

The Shenzhen Intermediate Court recently demonstrated that, when seeking financial compensation, all efforts made by a plaintiff to prove the scope of patent infringement – even if its findings are not based on official accounting records – may be appreciated and rewarded by the courts. Factors such as a defendant's behaviour or an oral admission may assist the courts when determining damages.

Proving copyright ownership in trademark disputes
  • China
  • April 23 2018

It is acknowledged doctrine that if an accused trademark exhibits substantial similarity to copyrighted works, copyright infringement can be established once the accused has demonstrated access to the copyrighted works, unless the accused can prove that the accused work is the result of its independent creation. Such doctrine applied in a recent Beijing IP Court case, in which the court found that the opposed mark infringed a prior copyright.


Denmark

Influence of reputed trademark on marketing practices
  • Denmark
  • November 20 2017

The Maritime and Commercial High Court recently granted Danish company Dyrup A/S a preliminary injunction without security against Nowocoat International A/S for design and layout infringement of Dyrup's wood protection products. This decision is notable, as the majority of judges found that it was possible for end-consumers to disregard a well-known trademark and recognise a product only by its design, while also confusing it with another product.

When does copyright protection exist in Denmark?
  • Denmark
  • July 24 2017

The bar for copyright infringement of industrial works in Denmark is rather high. A copy must be very similar to an original work and an original work cannot be of a simple or technical nature. In a recent Commercial and Maritime Court case, the Danish ceramics company Kähler's Omaggio series of vases and candleholders was granted copyright protection and Bovictus A/S's KJ collection was found to infringe Kähler's copyright.

Designer banned from using own name as trademark
  • Denmark
  • March 06 2017

A recent Supreme Court case explored the right of individuals to use their own names, an issue on which the general public has strong opinions. The court stated that where a person has used his or her own name as a trademark and assigned the trademark to a third party, the principle of good marketing practice entails that he or she is then prevented from using the name as a trademark for goods or services similar to those for which the trademark was registered.


European Union

Is figurative mark containing word 'Mafia' contrary to public policy?
  • European Union
  • April 30 2018

The European Union Intellectual Property Office General Court recently dismissed an appeal against the revocation of the EU figurative trademark LA MAFIA SE SIENTA A LA MESA ('the Mafia takes a seat at the table'), in which 'La Mafia' was the dominant element. The trademark was deemed to be "contrary to public policy and to accepted principles of morality, since the word element 'Mafia' referred to a criminal organisation".

EU Trademark Court of Appeal rules on smell-alike perfumes
  • European Union
  • July 31 2017

The 8th Section of the Alicante Court of Appeal, acting as the EU Trademark Court of Appeal, recently confirmed that the use of third-party trademarks of reputed perfumes to advertise, offer and market so-called 'smell-alike' perfumes amounts to trademark infringement and unfair competition. Notably, the defendant's argument was based on the need to use the trademarks of other perfumes to inform consumers about the fragrance of its smell-alike perfumes.

Harley-Davidson wins battle against bar restaurant over well-known bar and shield sign
  • European Union
  • July 24 2017

The EU Trademark Court recently revoked in full the Commercial Court of Alicante Number 1 first-instance judgment, which had dismissed all of the claims filed by H-D USA, LLC (Harley-Davidson) against a third party for its unauthorised use of the Harley-Davidson bar and shield sign to identify and promote its bar restaurant. The court sentenced the defendant to pay Harley-Davidson damages and bear the costs incurred in the first instance.

New ruling in case involving use of well-known trademarks in sale of smell-alike perfumes
  • European Union
  • April 24 2017

EU Trademark Court Number 2 of Alicante recently upheld the lawsuit filed against Equivalenza for its use of trademarks belonging to Hugo Boss, Gucci and Lacoste in its sale of alleged smell-alike perfumes. Despite an earlier conviction for third-party trademark use, Equivalenza did not change its business model. Consequently, the court ordered it to cease and desist offering, marketing and promoting its perfumes using the plaintiffs' trademarks, among other things.

Different yet the same? Intermediary liability in physical and online markets
  • European Union
  • March 13 2017

The issue of intermediary liability is a hot topic, particularly in the online environment, with decisions in Tommy Hilfiger and McFadden only intensifying the debate. European Court of Justice case law in this regard clarifies that any intermediary whose services are used by a third party to infringe an IP right can be ordered to take measures to end the infringement and prevent further infringements.


Finland

Reputation parasitism: functioning concept or failed attempt?
  • Finland
  • August 29 2016

'Reputation parasitism' refers to the exploitation of a competitor's goodwill in marketing, where consumers are not misled regarding a product's commercial origin. Reputation parasitism is often used as secondary grounds for action in Market Court litigation. However, it remains difficult to convince the court that goodwill has been exploited when consumers have not been misled about a product's commercial origin.

Reform of Finnish domain name regime
  • Finland
  • July 04 2016

Legislation concerning '.fi' country code top-level domain names will soon undergo significant amendments, as the Domain Name Act is set to be repealed. Changes include the abolishment of local presence requirements and the adoption of the registry-registrar model. Overall, the reform represents a welcome change; however, it may lead to an increased risk of cybersquatting and domain name parking.