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Intellectual Property

19 April 2021
Claudia Csáky Refill products infringe trademark

Austria - Graf & Pitkowitz Rechtsanwalte GmbH

The Supreme Court recently held that selling refill products for a dispenser that is manufactured by another party without indicating that the refill product is not produced by the dispenser's manufacturer constitutes trademark infringement. The decision clarifies that parties must label refill products to prevent the relevant public (ie, the users of the refill product) thinking that the manufacturer of the refill product is also the manufacturer of the dispenser.

Authors: Claudia Csáky, Stefan Djusic
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Andrea Berenbaum Federal Court of Appeal upholds Federal Court decision finding Shire's VYVANSE patent valid

Canada - Smart & Biggar

The Federal Court of Appeal has dismissed Apotex's appeal of the Federal Court decision which held that the claims of Canadian Patent 2,527,646 were valid and prohibited the minister of health from issuing a notice of compliance to Apotex for its lisdexamfetamine product (Shire's VYVANSE) until the patent's expiry. The prohibition application was consolidated with Apotex's action seeking a declaration of invalidity and non-infringement.

Author: Andrea Berenbaum
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He Wei Supreme People's Court issues judicial interpretations on IP rights disputes which involve ISPs

China - Wanhuida Intellectual Property

The Supreme People's Court recently promulgated two judicial interpretations regarding IP rights disputes that involve internet service providers (ISPs): the Reply to Several Issues Concerning the Application of Law in Online IP Rights Infringement Disputes, which applies to all ISPs, and the Guiding Opinions on the Trial of Civil IP Rights Cases Involving E-Commerce Platforms, which target e-commerce platforms. This article summarises the key points of these two judicial interpretations.

Author: He Wei
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Irini Daroussou Rights in audiovisual works under Copyright Law

Greece - A & K Metaxopoulos & Partners Law Firm

Pursuant to the Copyright Law, authors, artists, performers and producers who are involved in the creation of an audiovisual work are entitled to various rights relating to the broadcasting and reproduction of the work. This article explores the rights to which each party is entitled and the role of collective management organisations in the administration of such acts.

Authors: Irini Daroussou, Kriton Metaxopoulos
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Jean-Jacques Canonici Role of patent data in innovation lifecycle: marketing and monetisation stages

International - GEVERS

Patent-related data is a recognised source of information about technological innovation programmes and the patenting strategies of parties in a particular field. Parties often use data reporting tools (eg, mapping or landscaping) to provide an overview of a competitive activity. This article focuses on how parties can use patent data at the marketing and monetisation stages of a product's innovation lifecycle.

Authors: Jean-Jacques Canonici, Eugénie Bard
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Oscar Mago Cancellation of trademark registrations

Peru - OMC Abogados & Consultores

It is possible to cancel the registration of a trademark where it can be proved that the owner, licensee or other authorised party has not used the trademark in Peru for three consecutive years. Parties may also request the cancellation of a trademark registration on grounds of lack of use during an opposition procedure.

Author: Oscar Mago
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Ben Yuu Strengthened provisions for keeping designs secret

South Korea - NAM & NAM

Unlike patent applications, which are published in full after a fixed period to prevent redundant research and investment, the details of design applications are disclosed via publication in the Design Gazette at the time of registration. Parties may postpone the disclosure of a design using the secret design system. A recent amendment to the secret design system aims to offer applicants stronger protection and enable the strategic management of applications for new product designs.

Author: Ben Yuu
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Beatriz Bejarano Barcelona Court of Appeal confirms legitimacy of Tommy Hilfiger's use of TH sign

Spain - Grau & Angulo

In a recent judgment, the Barcelona Court of Appeal confirmed the judgment of Barcelona Commercial Court 6 which dismissed a trademark infringement action brought against Hilfiger Stores Spain (HSS), SL. The appeal court partially upheld HSS's counterclaim against the plaintiff's trademark – which was registered for goods in Class 25 (ie, clothing, footwear and hats) – for cancellation on grounds of non-use. The trademark was revoked for clothing and footwear but remains registered for hats.

Author: Beatriz Bejarano
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Roger Chang Court issues decision in first patent linkage case

Taiwan - Lee and Li Attorneys at Law

The Judicial Yuan recently published the IP Court's judgment in Taiwan's first patent linkage case. The IP court granted an injunction to prevent the manufacture of a generic drug which was found to have infringed a new drug's patent based on the doctrine of equivalents. The IP Court's watershed decision in this case will significantly affect both the patent linkage system and patent linkage litigation for years to come.

Author: Roger Chang
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Melissa Murray Trade secret protection overview

United Arab Emirates - Bird & Bird LLP

As the United Arab Emirates is a signatory to the Agreement on Trade-Related Aspects of Intellectual Property Rights, trade secrets are protected in several ways. While there is no statutory definition of 'trade secrets', various federal laws protect confidential information. The Dubai International Financial Centre, a free zone which operates within the United Arab Emirates, recently enacted its own IP Law, which also provides protection for trade secrets.

Authors: Melissa Murray, Eddie Chiu
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Meaghan Kent Supreme Court weighs in on fair use and finds that Google's use of Java SE API is fair

USA - Venable LLP

After 10 years of litigation, the Supreme Court has put an end to the copyright case of the century, Google v Oracle, ruling that Google's use of Oracle's application programming interface Java code in the development of its Android operating system is a fair use as a matter of law. In the doctrine-expanding six-to-two opinion, the court found that all four fair use factors weighed in Google's favour.

Authors: Meaghan Kent, Celyra Workman
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Recent updates

Ben Yuu Trademark infringement theory – innocent or infringing?

South Korea - NAM & NAM

Author: Ben Yuu
Hsiu-Ru Chien Taiwan-Japan patent file wrapper exchange piloted

Taiwan - Lee and Li Attorneys at Law

Authors: Hsiu-Ru Chien, Elina Yu
Martin L Saad Mona Lisa or dog doo? Humour avoids trademark liability

USA - Venable LLP

Authors: Martin L Saad, Holly Gordon
Huimin Qin Supreme People's Court promulgates opinions on copyright

China - Wanhuida Intellectual Property

Authors: Huimin Qin, Nan Jiang
Jean-Jacques Canonici Role of patent data in innovation lifecycle: development stage

International - GEVERS

Authors: Jean-Jacques Canonici, Eugénie Bard
Philip Lapin No more chasing rainbows: advantages of black and white when filing Canadian trademark applications

Canada - Smart & Biggar

Authors: Philip Lapin, Nora Labbancz
Tom Nener Online infringement: when is a platform 'targeted' at a territory?

United Kingdom - Pinsent Masons

Authors: Tom Nener, Katy Bourne
Paula Sailas IP litigation and alternative dispute resolution options

Finland - Berggren Oy

Author: Paula Sailas

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:
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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.


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