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Intellectual Property

22 February 2021
Luiz Edgard Montaury Pimenta Legislative overview – Brazil

Brazil - Montaury Pimenta, Machado & Vieira de Mello

This article provides an overview of the regulation and enforcement of IP rights in Brazil. It also examines recent developments, such as the project to reduce the patent backlog and the ongoing case before the Supreme Court concerning the constitutionality of Article 40 of the IP Law.

Author: Luiz Edgard Montaury Pimenta
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David Schwartz Options to consider when requesting an extension to respond to the Patent Office

Canada - Smart & Biggar

The recent extensive amendments to the Patent Act and Patent Rules have complicated the process of responding to an office action (ie, examiner's report) issued by the Patent Office. This article addresses the legal and practical issues surrounding extensions for responding to examiner's reports and alternative approaches that may be taken.

Author: David Schwartz
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Yuming Wang Publishing house awarded Rmb1.5 million in damages for trade dress copycat

China - Wanhuida Intellectual Property

The Commercial Press has published the Dictionary of Frequently Used Ancient Chinese Characters since 1979. It has been reprinted more than 160 times and sold over 22 million copies. The Commercial Press was recently awarded Rmb1.5 million in damages in the first court ruling in which a book planning firm and a publisher were held liable for joint infringement in a dispute concerning book decoration.

Authors: Yuming Wang, Mingfeng Yang, Hongfeng Li
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Brent De Jonghe Protecting product appearance through trademark and design registrations

International - GEVERS

Consumers recognise products not only by the words and logos on their packaging, but also by their look and feel, including their shape and colour. Both copyright law and fair trade practice law provide legal protection to the look and feel of products. Where possible, IP owners should also seek protection for their products' appearance by obtaining a registration certificate under trademark and design law, which can be a strong asset if a dispute arises.

Author: Brent De Jonghe
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Ian Mirandah Geographical indication protection capabilities strengthened by accession to Geneva act

Laos - Mirandah Asia

The government recently deposited with the director general of the World Intellectual Property Organisation its instrument of accession to the Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications. This should lead to more geographical indications of foreign origin being officially registered in Laos, as well as Laotian products obtaining registration overseas.

Author: Ian Mirandah
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Bunmi Binitie Trademark procedure and practice FAQs: office actions

Nigeria - Abdulai Taiwo & Co

In Nigeria, trademark applications can be refused on absolute grounds, such as if the mark is deceptive or confusing, or on relative grounds, such as if the application was made in bad faith. These grounds can be used to initiate opposition proceedings, in which the applicant and the opponent take part in an exchange of pleadings before the registrar makes a decision on the application. This article answers FAQs with respect to office actions in Nigeria.

Author: Bunmi Binitie
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Oscar Mago Legislative overview – Peru

Peru - OMC Abogados & Consultores

This article provides an overview of the regulation and enforcement of IP rights in Peru. It also examines recent developments, such as the cancellation of the official fees for the filing of collective trademarks, and outlines practitioners' hopes for the IP landscape in the coming years.

Author: Oscar Mago
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Cathy Ting Use of geographic name as trademark may constitute passing off

Taiwan - Lee and Li Attorneys at Law

A brand owner filed an invalidation action against the trademark 約克夏茶YORK SHIRETEA and a device mark in respect of services in Class 42 for a violation of the Trademark Act. After examination, the defendant (ie, the IP Office) cancelled the trademark's registration. Dissatisfied, the plaintiff filed an administrative appeal with the Ministry of Economic Affairs, which was dismissed. The plaintiff then filed an administrative suit with the IP Court.

Authors: Cathy Ting, Sophia Chen
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Martin L Saad Third circuit panel revises half-baked trade dress functionality decision

USA - Venable LLP

"That's the way the cookie crumbles", a panel of judges from the US Court of Appeals for the Third Circuit again concluded in rejecting trade dress protection for the well-known Pocky cookie design. However, in a revised decision following a rehearing request, the panel clarified its initial analysis on trade dress functionality, providing a fuller explanation of its reasoning which may soothe trade dress advocates.

Authors: Martin L Saad, Nicholas W Jordan
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Recent updates

Hugh Melamdowitz Intellectual property: the lesser-known actor in film making

South Africa - Spoor & Fisher

Author: Hugh Melamdowitz
Ian Mirandah Fee waivers and modifications available to IP owners

Malaysia - Mirandah Asia

Author: Ian Mirandah
Brandon Heard Federal Court finds silodosin formulation patent valid but not infringed

Canada - Smart & Biggar

Author: Brandon Heard
Antoine Herbaut There's no such thing as an international patent

International - GEVERS

Authors: Antoine Herbaut, Ingrid Luyten
Bunmi Binitie Trademark procedure and practice FAQs: filing specifics

Nigeria - Abdulai Taiwo & Co

Author: Bunmi Binitie
Alexander Vida Deception and bad faith in trademark applications

Hungary - Danubia Patent and Law Office LLC

Author: Alexander Vida
Marianna Furtado de Mendonça Growing e-commerce market entails increased brand protection measures

Brazil - Montaury Pimenta, Machado & Vieira de Mello

Author: Marianna Furtado de Mendonça
Xiaoling Duan National People's Congress passes fourth amendment to Patent Law

China - Wanhuida Intellectual Property

Author: Xiaoling Duan

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:

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:

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:

IPBC India 2021

7-8 April 2021

IPBC India 2021 will take place as a dedicated virtual programme comprising six sessions held over two half days - on 7 and 8 April - offering delegates a packed programme of high-level discussion and business opportunities. Designed specifically for the corporate, research and governmental IP communities, IPBC India will take the core themes of IP value creation and strategic corporate IP management and discuss these within the Indian context. This year’s programme will have a particular emphasis on developing innovation-based growth and key international trends.

For more details please visit: