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Intellectual Property

25 January 2021
Ana Paula Affonso Brito Trade dress protection: a glimpse at the beverage market

Brazil - Montaury Pimenta, Machado & Vieira de Mello

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.

Author: Ana Paula Affonso Brito
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Daniel Davies Federal Court continues trend of granting summary judgment in appropriate patent proceedings

Canada - Smart & Biggar

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.

Authors: Daniel Davies, Matthew Norton
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Ye Cai Tommy Hilfiger invalidates trademark piggybacking on its iconic flag logo in actual use

China - Wanhuida Intellectual Property

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.

Author: Ye Cai
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Young-min Kim Patent Court takes issue with ex officio examination of trial request validity

South Korea - NAM & NAM

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.

Author: Young-min Kim
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David Daura Superior Court of Justice confirms criminal conviction for wholesale and retail sale of fake garments

Spain - Grau & Angulo

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.

Author: David Daura
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Hsiu-Ru Chien TIPO issues Q&A on examination practices of new Patent Act

Taiwan - Lee and Li Attorneys at Law

In 2019 the new Patent Act took effect, setting stricter time limits for parties to propose attack and defence methods in invalidation procedures to avoid delays in and improve the effectiveness of invalidation examinations. Following public confusion, the Taiwan Intellectual Property Office recently issued a Q&A on the examination practices of the Patent Act, to provide more detailed guidance on the interpretation and application of relevant provisions in specific cases. This article summarises the guidance.

Authors: Hsiu-Ru Chien, Jason Chuang
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Andrew D Price Maximising value of brands and creative works in challenging times

USA - Venable LLP

Since the COVID-19 pandemic started, some new trends have emerged among non-profits looking to maximise their brand value. This article outlines strategies that non-profits should consider when working to maximise brand value, conduct a successful rebrand or monitor the use of copyrighted materials.

Authors: Andrew D Price, Meaghan Kent
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Recent updates

Hsiu-Ru Chien Patent examination pilot programme for start-ups takes effect

Taiwan - Lee and Li Attorneys at Law

Authors: Hsiu-Ru Chien, Elina Yu
Feng Zheng Legislative overview 2020: patent law, trade secrets and judicial interpretations

China - Wanhuida Intellectual Property

Author: Feng Zheng
Jae-sang Lim KIPO measures to prevent online counterfeits

South Korea - NAM & NAM

Author: Jae-sang Lim
José Calvo Second preliminary injunction request based on amended form of patent dismissed

Spain - Grau & Angulo

Author: José Calvo
Rodrigo Moraes Costa BRPTO anticipates Phase II of Patent Prosecution Highway Programme

Brazil - Montaury Pimenta, Machado & Vieira de Mello

Authors: Rodrigo Moraes Costa, Rodrigo Klein
Meaghan Kent Mixed reactions as copyright owners ring in 2021 with CASE Act

USA - Venable LLP

Authors: Meaghan Kent, Danae Tinelli
Patrick Roszell Cloud computing: overview of IP issues

Canada - Smart & Biggar

Authors: Patrick Roszell, Robert Baker
Alexander Vida Non-registrability of descriptive names

Hungary - Danubia Patent and Law Office LLC

Author: Alexander Vida

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

WTR Connect Spring 2021

March 15-19, 2021

WTR Connect returns to Zoom for a week of purpose-built trademark and brand protection discussions with the world’s leading experts. From 15-19 March, WTR will be hosting more than 20 individual interactive digital sessions live on Zoom, each designed to facilitate discussion, benchmarking and the sharing of best practice around key topic areas and challenges facing trademark and brand leaders. Each day will start with a keynote address from a major industry figure followed by live breakout discussions lasting for a maximum of 60 minutes. These will be in a variety of different formats, including masterclasses, open discussions forums, solution rooms and closed-door, invite-only boardrooms. You can register for as many sessions as you like across the week, building your own schedule.


For more details please visit:
https://cvent.me/0l7VlR?RefId=LEX

Patent Transactions 2021

28-29 April 2021 | Zoom

IAM is delighted to present the inaugural Patent Transactions, an online event designed to deliver a global overview of IP dealmaking, with a separate deep-dive focus on the Asia-Pacific market. On 28 and 29 April, many of the world’s leading IP dealmakers will share best practices around buying, selling and licensing patents in the ever-changing global landscape. Engage with key licensing decision makers, buyers and sellers from across the patent market and learn first-hand from their experience and insight.


For more details please visit:
https://events.iam-media.com/7yygwW?RefId=LexILO

IP Risk Management 2021

27-28 January 2021

Intellectual property is one of the most important assets that businesses can own and is increasingly prominent on the corporate agenda. While budgets get tighter and resources scarcer, threats continue to grow. All the while, IP leaders must ensure that they are protecting their assets and proactively mitigating the risks surrounding them. IAM’s IP Risk Management event, live on Zoom on 27 and 28 January 2021, will focus on key strategies, best practices and lessons learned for identifying, measuring and mitigating IP risk.


For more details please visit:
https://cvent.me/BNXWEm?RefId=LEX

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