Intellectual Property updates

Argentina

Contributed by Obligado & Cia
Sweet tooth: new appellation of origin introduced
  • Argentina
  • 13 May 2019

Law 25,163/1999 and Law 25,380/2000 govern appellations of origin in Argentina for wines and wine-based spirits as well as agricultural and food products, respectively. The Ministry of Production and Labour recently acknowledged a new appellation of origin for a sweet quince paste produced in San Juan that is part of the local culinary tradition and whose characteristics derive from the manufacturing process and the quality of the quinces produced in the province.

Designations, trade names and the Civil and Commercial Code
  • Argentina
  • 25 February 2019

The terms 'corporate name', 'trade name' and 'designation' are frequently used without distinction in commerce and business. However, these expressions must be clearly distinguished. While corporate names distinguish corporations and their use and protection are based on the Companies Law, designations are protected under the Law on Trademarks.

Amendments to law on industrial models and designs
  • Argentina
  • 03 December 2018

The Argentine Executive Power recently issued Decree 27/2018, which has introduced significant and substantial amendments to the Law on Trademarks, the Law on Patents and the Industrial Model and Design Decree 6,673/63. The most important amendments include a simpler registration process, an expansion of the facts that do not destroy novelty and adjustments to renewal and grace periods.

Regulation of new trademark opposition system
  • Argentina
  • 08 October 2018

The government recently issued a decree which introduced substantial changes to the trademark opposition system, empowering the National Institute of Industrial Property to settle disputes concerning oppositions that parties cannot resolve through negotiation. The changes include the establishment of a three-month term to obtain oppositions and a 40-day evidence period.

Health Authority and use of trademarks on pharmaceuticals
  • Argentina
  • 06 August 2018

The Health Authority examines all relevant information to decide whether to authorise a product's introduction to the market, including its trademark or product name. In this regard, the Health Authority considers potential health risks that could occur in the event of confusion and error as regards trademarks or product names and how such confusion could affect physicians, pharmacists and consumers.


Austria

Flashlight decision illuminates compensation guidelines for unlawful use of IP rights
  • Austria
  • 22 April 2019

The Supreme Court recently had to decide whether the infringer of a registered Community design had to hand over the entire net profit or just a share of profit earned due to its use of an infringed design. The decision has great practical importance, as it gives IP rights holders clear guidelines regarding what to expect when claiming compensation for an unlawful use of their rights.

Dispenser for free newspapers – work of art?
  • Austria
  • 17 December 2018

The Supreme Court recently set out clear principles regarding the protection of a work of visual art under the Copyright Act where technical functions played a role. In its decision, the court explained that the assessment as to whether a (visual) piece of work is actually protected by copyright must be assessed by the court as a legal issue only. There is no room to consider the opinion of experts or any other third parties.

Exhaustion of trademark rights and burden of proof
  • Austria
  • 03 September 2018

The Supreme Court recently clarified the circumstances in which the burden of proof regarding the exhaustion of trademark rights shifts from the defendant to the trademark owner. It made clear that unless the defendant can prove a concrete risk of partitioning markets, it is up to the defendant to prove that the trademark rights relied on by the plaintiff are exhausted. This should be borne in mind when raising this defence.

Selective distribution systems and exhaustion of trademark rights
  • Austria
  • 04 June 2018

The Supreme Court recently affirmed once more that the exemptions to the principle of exhaustion of trademark rights must be construed narrowly. In its decision, the court made clear that once trademark rights are exhausted, resellers may use not only word marks, but also figurative marks without any limitations when advertising or reselling original products.

Marketability is key: if a work can be separated it is not a joint work
  • Austria
  • 08 January 2018

In a welcome development of Austrian copyright law, the Supreme Court recently ruled that a combination of works by two artists does not constitute a joint work if it can be separated, even if the works involved were created for the sole purpose of being combined as a jointly planned contribution. Strong indicators of whether parts of a work are separable are the individual marketability and possible depreciation of the separated parts.


Belgium

Contributed by ALTIUS
Desperate times call for ex parte interim measures in patent disputes
  • Belgium
  • 18 March 2019

Preliminary injunctions are rarely granted on an ex parte basis in Belgium and adversarial debates are considered a cornerstone of legal proceedings which can be deviated from only in cases of absolute necessity. However, ex parte interim measures have been granted in at least four patent disputes in Belgium in recent years, which helps to shed light on the circumstances under which patentees can consider them to be a measure of last resort to stop a threat of infringement.

Express recognition and clarification of trade secret protection in Belgium
  • Belgium
  • 11 February 2019

On 30 July 2018 the Belgian legislature transposed the EU Trade Secrets Directive into domestic law via the Trade Secret Law. The Trade Secret Law is welcomed, as no general regulatory framework regarding trade secrets previously existed in Belgium. It remains to be seen how the law will be used and applied in practice, but it is an essential means in effectively appropriating, protecting and exploiting innovation by providing trade secret holders with the tools to protect valid trade secrets.

Trademarks versus artistic freedom of expression: milestone referral for preliminary ruling
  • Belgium
  • 09 July 2018

In a high-profile trademark infringement case involving Moët Hennessey Champagne Services and a Belgian painter, the courts were asked to strike a balance between the right to property, including intellectual property, and artistic freedom of expression. The decision is expected to set an important precedent on how to strike a fair balance between freedom of speech and the protection of trademarks when these two concepts conflict.

Parallel import of medicinal products
  • Belgium
  • 06 November 2017

Merck Sharp & Dohme (MSD) recently sued PI Pharma before the Brussels Commercial Court for the parallel import and repackaging of one of MSD's medicinal products. MSD based its claim on the alleged violation of the first, third and fourth Bristol-Myers Squibb conditions. Although this is not the first time that the Brussels Commercial Court has been involved in a dispute over the parallel importation of medicinal products, the judgment further refines the scope of certain Bristol-Myers Squibb conditions.

Court issues decision on parallel importation of debranded Mitsubishi forklift trucks
  • Belgium
  • 10 April 2017

In a recent judgment, the Brussels Court of Appeal ordered two parallel traders to pay provisional compensation of €3 million to the Mitsubishi Corporation for illegally importing hundreds of Mitsubishi forklift trucks which had been on the Asian market into the European Economic Area via parallel trade routes. The court held that the parallel traders had failed to provide conclusive evidence that Mitsubishi, the proprietor of the Benelux and EU trademarks, had consented to the parallel trade.


Canada

Contributed by Smart & Biggar/Fetherstonhaugh
Top 10 changes to Canada's trademark law
  • Canada
  • 17 June 2019

After five years of anticipation, sweeping changes to Canada's trademark law have finally come into force. Among other things, Canadian applicants can now file applications in more than 80 countries around the world through a single international application and declarations of use are no longer required to secure registrations.

Prior user rights under recently amended Patent Act
  • Canada
  • 17 June 2019

The Budget Implementation Act 2 has brought about several changes to the Patent Act that affect the scope of protection available under Canadian patents, including a revision of Section 56, which concerns the rights of prior users of patented technologies. However, as many of the Section 56 amendments will require judicial interpretation, the true scope of prior user rights under the revised provision may be unknown for some time.

Procedural decisions under PMNOC Regulations: common validity issues and naming of defendants
  • Canada
  • 10 June 2019

In two recent cases, the Federal Court considered procedural decisions in actions under the Patented Medicines (Notice of Compliance) Regulations. In one case, the court ordered that common validity issues in actions relating to Bayer's Xarelto against Apotex and Teva will be heard concurrently. In another case, the court refused to allow the plaintiffs to name additional Teva parties as further defendants in three actions relating to Celltrion's Herzuma, a trastuzumab biosimilar of Roche's Herceptin.

Nice Classification with a trap – Canada introduces class top-up fees with no back door
  • Canada
  • 10 June 2019

With the long-awaited changes to the Trademarks Act and Regulations imminent, brand owners should be excited about Canada's alignment with international trademark standards and the new opportunities that these changes will bring. However, brand owners should be aware that Canada has adopted a unique policy concerning the required filing fees which differs significantly from the general practice of other member countries.

Filing fee for certificates of supplementary protection now increased
  • Canada
  • 27 May 2019

In accordance with Section 9(1) of the Certificate of Supplementary Protection (CSP) Regulations, the fee for filing a CSP recently increased. This article sets out a number of important reminders relating to CSPs and annual maintenance fees.


Cayman Islands

New Cayman Islands IP regime
  • Cayman Islands
  • 11 September 2017

The Trademarks Law 2016, the Patents and Trademarks (Amendment) Law 2016 and the Design Rights Registration Law 2016 recently came into force, introducing a new IP regime in the Cayman Islands. The legislation establishes a standalone trademark registration system, prohibits the assertion of patent infringement in bad faith and allows existing UK and EU-registered design rights to be extended to the Cayman Islands, among other things.