Intellectual Property updates

Brazil

Contributed by Montaury Pimenta, Machado & Vieira de Mello
Trade dress protection: a glimpse at the beverage market
  • Brazil
  • 25 January 2021

In Brazil, trade dress protection is supported in several regulations, all under the concept of unfair competition. Trade dress protection has also been widely acknowledged by the courts, and case law has been an important source of its doctrinal foundation. This article looks at trade dress protection in the beverage sector and examines several decisions which have granted such protection for types of beer, vodka and wine.


Canada

Contributed by Smart & Biggar
Federal Court continues trend of granting summary judgment in appropriate patent proceedings
  • Canada
  • 25 January 2021

In a recent case, the Federal Court granted summary judgment in favour of the plaintiff in respect of its patent impeachment action. This decision further demonstrates the Federal Court's recent willingness to grant summary judgment in patent cases in appropriate circumstances. Accordingly, it appears that in certain cases, summary judgment may be a viable option to resolve patent disputes more expeditiously while avoiding the costs of a full patent trial.


China

Contributed by Wanhuida Intellectual Property
Tommy Hilfiger invalidates trademark piggybacking on its iconic flag logo in actual use
  • China
  • 25 January 2021

As a rising fashion brand in China, Tommy Hilfiger has been constantly challenged by an increasing number of copycats. In a recent case, Tommy Hilfiger initiated an invalidation action against a Chinese company's disputed mark and successfully invalidated it on the grounds of prior use and the similarities between the designated goods of the disputed trademark and its cited trademark.


South Korea

Contributed by NAM & NAM
Patent Court takes issue with ex officio examination of trial request validity
  • South Korea
  • 25 January 2021

If an invention subject to confirmation is identical to a later-registered patent, a request for a scope confirmation trial will be considered improper as this could result in the later-registered patent's validity being denied without it being subject to an invalidity trial. However, the Patent Court recently ruled that if the IP Trial and Appeal Board ex officio dismisses a scope confirmation trial for this reason but fails to give the parties an opportunity to submit an opinion, such decision would be a procedural violation.


Spain

Contributed by Grau & Angulo
Superior Court of Justice confirms criminal conviction for wholesale and retail sale of fake garments
  • Spain
  • 25 January 2021

In an October 2020 judgment the Civil and Criminal Section of the Superior Court of Justice of Madrid largely dismissed the brief of appeal filed by the defendant against the convictional judgment, by which the Provincial Court of Madrid had sentenced him to a two-year prison sentence, a fine and payment of the damage compensation and legal costs of private prosecution for the commercialisation of products that infringed Adidas's Community trademarks and designs.