Intellectual Property updates

China

Contributed by Wanhuida Peksung IP Group
Beijing High Court guidelines on administrative trademark cases come with surprises
  • China
  • 26 August 2019

The Beijing High Court recently published an extensive set of guidelines on administrative trademark cases, which are divided into two parts: procedural issues and substantive matters. Although the guidelines clarify a number of matters (eg, the possibility of bringing an action against a ruling of the National Intellectual Property Administration when such ruling was remade in accordance with an effective court judgment), they contain a number of unpleasant surprises.

Dilemma and solution – enforcement of GUI patents
  • China
  • 12 August 2019

China has followed the global trend of protecting graphical user interfaces (GUIs) by acknowledging them as patentable designs in its amended Patent Examination Guidelines. However, under the Patent Law, designs are patentable only when filed together with a product which embodies the design. Since GUIs and software per se are not recognised as products, GUI patentees are faced with a dilemma if they attempt to challenge software developers for merely offering software which exploits their patented GUI design.

Offering to sell constitutes patent infringement
  • China
  • 29 July 2019

Offering to sell is an independent act of patent exploitation. However, it is not necessarily established on the premise that the product is physically manufactured or actually sold. In this context, the Beijing Intellectual Property Office recently had to consider how to determine whether an accused drug falls within the protected scope of a patent, without appraising a physical product, and the criteria needed to determine whether a product is being offered for sale.

Matters to be addressed in future revision of Trademark Law
  • China
  • 22 July 2019

In 2019 the Trademark Law was rapidly revised without public consultation. This revision, which was relatively limited, aimed to address the problem caused by trademark applications made in bad faith and without the intention to use and to increase the powers of the courts in judicial enforcement. This article analyses what remains to be done and what a fifth revision of the Trademark Law should cover.

CNIPA releases draft amendment to patent examination guidelines
  • China
  • 24 June 2019

The China National Intellectual Property Administration has released the Draft Amendment to the Patent Examination Guidelines. The draft proposes revisions to both substantive and procedural aspects in preliminary examination, substantive examination and invalidation proceedings regarding patents. This article analyses the major proposed changes to patent examinations.


Denmark

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


European Union

EU Trademark Court rules on use of well-known trademarks to sell smell-alike perfumes
Grau & Angulo
  • European Union
  • 06 May 2019

Section 8 of the Alicante Provincial Court (acting as the EU Trademark Court) recently dismissed Equivalenza Retail, SL's appeal against the Alicante Commercial Court Number 2 judgment in which it had been sentenced for infringing various perfume trademarks owned by Hugo Boss, Gucci and Lacoste in the context of its smell-alike business. Equivalenza had used the trademarks both in comparison lists and orally in commercial speech.

Battle of the bottles: EU Trademark Court of Appeal finds infringement of well-known Malibu bottle
Grau & Angulo
  • European Union
  • 22 April 2019

In December 2018 the EU Trademark Court of Appeal declared that the Ibiza Beach drink marketed by Productos Ibicencos, SL and Aromáticas de Ibiza, SL – whose bottle was highly similar to the well-known Malibu bottle – infringed The Absolut Company AB's (TAC's) 3D and graphic trademarks which protect the shape of such bottle. Among other things, the court held that the defendants had taken unfair advantage of TAC's trademarks, as their product was very similar in appearance.

Federated European Patent Register – an overview
Deriş Patents and Trademarks Agency
  • European Union
  • 04 March 2019

The Federated European Patent Register provides information regarding the legal status of EU patents. Among other things, the register provides a direct link to national patent registers, which makes it easier to obtain up-to-date information on the status of patents. Although there is room for further improvement, the register provides quick and easy access to the basic post-grant legal status of EU patents.

Preliminary injunctions granted against Blablatel Mobile for parallel imports
Grau & Angulo
  • European Union
  • 24 December 2018

In October 2018 the EU Trademark Court Number 1 of Alicante granted the interim injunction application filed by Xiaomi Inc against Blablatel Mobile SL for trademark infringement due to the parallel import of technological products from outside the European Economic Area. This decision is notable, as it confirms that importing goods that were originally intended to be marketed outside the European Economic Area without the trademark owner's consent constitutes trademark infringement.

Claims, infringement and the doctrine of equivalents – a case law perspective
IP Law Galli
  • European Union
  • 08 October 2018

The doctrine of equivalents, which forms the basis of the patent system and is codified in the original version of the Protocol on the Interpretation of Article 69 of the European Patent Convention, is fundamental for achieving a balance between the rights of patent owners and those of the market. In order to strike a balance between these different interests, equivalence must be determined based on what a patent owner has chosen to protect.


Hungary

Contributed by Danubia Patent and Law Office LLC
Significance of third-party prior use in annulment proceedings
  • Hungary
  • 05 August 2019

The Hungarian Intellectual Property Office recently granted the cancellation of the mark MINIME on the basis that the term 'mini me' had been widely used with regard to 3D printing services before the mark's filing date. Although the owner of the mark argued that the term had been used by others for only a short time before the mark's filing date, in special circumstances, even a relatively short period of use of a term by third parties can be sufficient for the term to become known by the relevant public.

What happens when an EU mark is not well known in Hungary?
  • Hungary
  • 15 July 2019

The Hungarian Intellectual Property Office (HIPO) recently refused to register a mark on the basis that the opponent had proved its prior mark's reputation in a substantial part of the European Union. The applicant requested a review by the Metropolitan Tribunal, contesting the significance of the HIPO's decision for Hungary if reputation could be proved only in other EU member states. As the tribunal had doubts in this regard, it referred the case to the European Court of Justice for the first time.

No victory for sports giant Decathlon: limits of enforcement based on reputed mark
  • Hungary
  • 01 July 2019

Decathlon – one of the biggest sportswear companies in Europe – has a defensive trademark policy under which its reputed EU trademark is protected for all goods and services in Classes 1 to 42, including sporting activities, as well as services in Classes 41 and 42. However, the applicant in a recent case was clever enough to limit the scope of its application to register the coloured mark DUNATHLON VEDD BE A KANYART to special services, thereby limiting the authorities' examination of a potential conflict.

Red Bull doesn't always give you wings: trademark applicant defeated by energy drink giant
  • Hungary
  • 27 May 2019

An applicant filed to register the combination word mark R.E.D. RÓNA ENERGY DRINK, which was opposed by the owner of the RED BULL mark. The applicant argued that there was no likelihood of confusion, as the term 'Róna' (ie, plain) was the distinctive element of the applied-for mark. However, the Metropolitan Tribunal disagreed, finding that the central element of the applied-for mark was the acronym 'R.E.D.'.

Fifty shades of violet: court finds likelihood of similarity between two colour marks
  • Hungary
  • 06 May 2019

Colour combinations could be protected as trademarks under the previous Trademark Act 1969. However, single colours have only been protectable as trademarks since Hungary joined the European Union and harmonised its trademark law therewith. A recent Metropolitan Court of Appeal case concerning a colour mark for a shade of violet, which was used on chocolate packaging, is a notable example of the application of the rules on colour marks during the enforcement phase.


India

Contributed by Saikrishna & Associates
District court grants significant damages in IP case, paving the way for future decisions
  • India
  • 09 September 2019

The Indian district courts rarely grant significant damages in IP cases. However, this recently changed as a district court in Ahmedabad passed a significant judgment restraining the defendants from using the plaintiffs' software and ordering the defendants to pay $81,1795 in damages. This judgment is the first of its kind and will pave the way for other district courts to award damages in infringement suits in accordance with the irreparable loss and damage suffered by plaintiffs.

Newly recognised tool for effective and expedient resolution of technical matters
  • India
  • 05 August 2019

The Delhi High Court recently recognised, for the first time, the merit of applying Section 20 of the Evidence Act 1872 in technical IP matters. This decision may have far-reaching consequences in the IP world, as it could eliminate the controversy surrounding infringement suits which involve complex technical questions and help the courts to reach a finding by relying on the opinion of an expert agreed on by both parties.

Moral rights: can authors waive their special rights?
  • India
  • 18 March 2019

The Copyright Act specifically addresses authors' special rights, which comprise the right to claim authorship of a work and the right to prevent any distortion, modification or mutilation of a work which would be prejudicial to the author's reputation. While jurisprudence on moral rights is still relatively limited, a few foundational cases are emblematic of India's approach and the associated legal issues.

Is extraterritorial application of Copyright Act possible?
  • India
  • 23 May 2016

In Banyan Tree Holding v A Murali Krishna Reddy the Delhi High Court clarified the importance and scope of the special jurisdiction provision (ie, Section 62 of the Copyright Act 1957). However, there seems to be a school of thought that Section 62 vests Indian courts with untrammelled long-arm jurisdiction even in strictly extraterritorial situations.

Special jurisdiction provisions: how special are they?
  • India
  • 23 November 2015

The Supreme Court recently issued its much-anticipated decision in IPRS v Sanjay Dalia. The case considered the interpretation of the special jurisdiction provisions in Section 62 of the Copyright Act and Section 134 of the Trademarks Act. The court held that if a cause of action arises at the place where the plaintiff's principal office is located, it cannot rely on Section 62 or Section 134 to institute a suit where its branch office is located.