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Intellectual Property

03 May 2021
Jérôme Coulonvaux Thin line between legitimate copies and unfair trade practices

Belgium - GEVERS

In Belgium, any party is generally free to copy or imitate another party's creation. However, the freedom to copy principle has two exceptions – namely, that copying is not permitted if it constitutes infringement of IP rights or is considered to be contrary to honest and fair trade practices. This article addresses how to tackle a parasitic copy of a creation in Belgium.

Author: Jérôme Coulonvaux
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Xingnan Ming SPC invalidates copycat N trademarks

China - Wanhuida Intellectual Property

In an exemplary trademark case concerning major sport footwear manufacturer New Balance, the Supreme People's Court ruled that a single-letter mark can become distinctive and famous in the market through long-term use and promotion and that the bad faith of registrants of disputed marks must be considered in determinations of similarity.

Author: Xingnan Ming
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Tommy Grosskreutz Opposition Division revokes plastic bottle patent

European Union - Grünecker

A European patent which related to bottles made of plastic was recently revoked in its entirety for not complying with Article 76(1) of the European Patent Convention. This case evidences the importance of ensuring that the claims of a divisional application are formulated such that they cannot be interpreted in a way that extends beyond what is originally disclosed in the parent application.

Author: Tommy Grosskreutz
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Dmitry Ekenin EAPO announces launch date of Eurasian industrial design patent applications

International - Sojuzpatent

In 2019 the Protocol on the Protection of Industrial Designs to the Eurasian Patent Convention was signed in Nur-Sultan, Kazakhstan. According to the protocol, rights holders will be able to obtain legal protection for their industrial designs in all member states through a single Eurasian patent. The Eurasian Patent Office recently announced that it will accept Eurasian design patent applications from 1 June 2021.

Author: Dmitry Ekenin
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Fisayo Tifase Protection of shapes and colours of goods

Nigeria - Abdulai Taiwo & Co

The understanding of trademarks in Nigeria appears limited to word marks and logo designs or devices as these are the conventional trademarks in the jurisdiction. While recognition of unconventional marks may be inferred from the Trademarks Act 1990, not many such applications are filed. However, a recent decision which creates a precedent for the courts to protect unconventional trademark rights may give applicants confidence to file and register their distinctive colours and shapes.

Author: Fisayo Tifase
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Mikkel Lassen Ellingsen Patent prosecution: FAQs

Norway - Bryn Aarflot AS

The Patent Act constitutes the basic legislative framework regarding patents and their extent under Norwegian law. The Patent Act and its accompanying rules regulate the filing, formalities and substantive examination of patent applications and the registration, administrative opposition, cancellation and invalidation of granted patents. This article answers FAQs about patent prosecution in Norway.

Author: Mikkel Lassen Ellingsen
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Oscar Mago Trademark registration FAQs

Peru - OMC Abogados & Consultores

In Peru, the trademark application process takes between five and six months. Signs must comply with various requirements to be registered, including being distinctive and not misleading the public. Once a trademark has been registered, it is effective for 10 years. This article answers FAQs about the trademark registration process in Peru.

Author: Oscar Mago
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Audrey Liao Customs Administration proposes to relax regulations regarding trademark owner requests for photos

Taiwan - Lee and Li Attorneys at Law

The Regulations Governing Customs Measures in Protecting the Rights and Interests of Trademarks state that trademark owners must identify whether seized goods constitute infringement within 24 hours of the seizure, an obligation which often proves burdensome. In light of this, the Customs Administration of the Ministry of Finance recently proposed a draft amendment which offers an alternative to on-site determination of infringement: the use of accurate and reliable photo-taking technology.

Author: Audrey Liao
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Christopher Loh Supreme Court hears oral argument on whether to abolish or modify assignor estoppel doctrine

USA - Venable LLP

'Assignor estoppel' is a common law doctrine that prevents, in district court patent litigation, an assignor of a patent from challenging the validity of the assigned patent as a defence to infringement allegations. The Supreme Court recently heard oral argument in a case that could limit or eliminate the doctrine of assignor estoppel and reduce the disparity between the ability of assignors to challenge the validity of patents in district courts and at the United States Patent and Trademark Office.

Authors: Christopher Loh, Jenna Florio
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Recent updates

David Gilat Request for comments on proposed amendments to Patent Law

Israel - Reinhold Cohn Group

Author: David Gilat
Dmitry Ekenin Civil Code amendments: invention and utility model patents

Russia - Sojuzpatent

Author: Dmitry Ekenin
Margarita Castellanos Filing trademarks which claim colours – can you use adjectives?

Colombia - Castellanos & Co

Author: Margarita Castellanos
Bai Huasheng SPC reiterates separate comparison principle in novelty assessment

China - Wanhuida Intellectual Property

Authors: Bai Huasheng, Nan Jiang
Johan Aerts Extrajudicial admissions: can everything you say be used against you?

Belgium - GEVERS

Author: Johan Aerts
Cathy Ting Overview of draft amendments to Trademark Act

Taiwan - Lee and Li Attorneys at Law

Authors: Cathy Ting, Sophia Chen
Sarah S Brooks USPTO fraudulent specimen pilot reporting programme discontinued and replaced

USA - Venable LLP

Authors: Sarah S Brooks, Marjorie Norman, Alicia Sharon
David Fernando Rodrigues Logistical and operational challenges in fighting piracy

International - Montaury Pimenta, Machado & Vieira de Mello

Author: David Fernando Rodrigues

Upcoming event

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: