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Intellectual Property

17 May 2021
Daniel R Zuccherino Trademark opposition process under Law 27,444

Argentina - Obligado & Cia

Law 27,444, which was enacted in May 2018, reformed the trademark opposition process by introducing a new system in which trademark oppositions are no longer initially settled in federal courts, but are instead settled administratively by the National Institute of Industrial Property (INPI). This reform aims to accelerate proceedings and reduce costs. Since the law became effective and with the new system in operation, the INPI has issued a series of resolutions in administrative opposition processes.

Author: Daniel R Zuccherino
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Claudia Csáky Use of clandestine recordings as evidence

Austria - Graf & Pitkowitz Rechtsanwalte GmbH

The Supreme Court recently confirmed that both the production and disclosure of clandestine recordings violate copyright. However, clandestine recordings are admissible as evidence if the infringer cannot prove their claim in any other way and the infringer's interests outweigh those of the affected person. The Supreme Court further pointed out that a court cannot decide on the admissibility of evidence obtained under a copyright breach which is to be submitted in other court proceedings.

Authors: Claudia Csáky, Stefan Djusic
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Jamie-Lynn Kraft Trademarks Office publishes new practice notices to reduce examination delays

Canada - Smart & Biggar

The Trademarks Office recently published two new practice notices which aim to improve delays in the processing of trademark applications. With the time between filing and examination currently surpassing 30 months, applicants will largely welcome the news of the initiatives, particularly the new ability to request expedited examination. This article summarises the new initiatives and provides guidance on how these changes could affect applicants' filing and prosecution strategies.

Authors: Jamie-Lynn Kraft, Ekaterina Tsimberis
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Nan Jiang Fourth IP Court unveiled in Hainan

China - Wanhuida Intellectual Property

In 2020 the Standing Committee of the National People's Congress passed the Decision on the Establishment of the IP Court at the Hainan Free Trade Port. The decision took effect in January 2021. The Hainan IP Court, which is the fourth IP court in China, has jurisdiction over various IP matters in Hainan Province. The Hainan High Court has jurisdiction over any appeals filed against the Hainan IP Court's first-instance decisions

Authors: Nan Jiang, Huimin Qin
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Anne-Laure Bedaux Champagne protection remains strong

France - GEVERS

Champagne was one of the first wine-growing areas to seek a protected geographical status. A recent case exemplifies the hard work of the National Institute of Origin and Quality and the Champagne Committee to protect the reputation of the Champagne appellation. This case reflects the quasi-absolute protection granted to protected designations of origin (PDOs) by the EU Intellectual Property Office, particularly where such PDOs enjoy an intrinsic reputation, as is the case with the PDO Champagne.

Author: Anne-Laure Bedaux
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Jantje Agena Court considers environmental problems and traffic in trademark infringement case

Germany - Grünecker

The Federal Court of Justice recently addressed the question of similarity between bicycles and motor vehicles in a legal dispute over whether the use of a sign for motor vehicles constituted infringement of a trademark which was registered for bicycles. The court expressly considered changes in mobility and the climate in its assessment of the similarity of the goods. The decision shows that the understanding of transport in similarity assessments is not fixed and must adapt to current circumstances.

Author: Jantje Agena
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Mikkel Lassen Ellingsen Patent litigation: 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 litigation in Norway.

Author: Mikkel Lassen Ellingsen
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Oscar Mago Trademark enforcement and transfer: FAQs

Peru - OMC Abogados & Consultores

In Peru, trademarks can be removed from the register if a party files a nullity action against its registration based on confusion or bad faith or a cancellation action based on non-use. Trademarks in Peru can be assigned or licensed to another party, provided that the relevant applications are correctly filed. This article answers FAQs about trademark enforcement and transfer in Peru.

Author: Oscar Mago
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Andreea Bende Trademarks overview

Romania - Simion & Baciu

Various amendments to the Trademarks Law recently took effect, transposing the provisions of the EU Trademarks Directive. It is hoped that such changes will facilitate a better harmonisation of Romania's legal provisions and the procedures applied by the IP office in connection with the registration and protection of trademarks. This article provides an overview of the regulation and enforcement of trademarks in Romania.

Authors: Andreea Bende, Zsófia Judit Halmágyi
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Dina Biagio Should TRIPS waivers be used to resolve vaccine inequality?

South Africa - Spoor & Fisher

Amid growing calls for vaccine equity, South Africa and India have proposed the suspension of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) for the duration of the COVID-19 pandemic. The rationale behind the proposal is that if patent rights were waived, this would result in increased supply and expedited roll-out of vaccines. However, the counterargument is that South Africa can use the mechanisms that already exist in the TRIPS agreement.

Author: Dina Biagio
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Ludvig Holm Compulsory patent licence as defence against claim for preliminary injunction

Sweden - Westerberg & Partners Advokatbyrå Ab

In a recent decision, the Patent and Market Court of Appeal issued a preliminary injunction to prohibit a company from selling, importing and using certain products in the life sciences field. In reaching this finding, the court provided that an argument that the requirements for a compulsory licence are fulfilled when no such action has been filed is not itself sufficient to prevent a preliminary injunction. This decision is one of few Swedish decisions to touch on compulsory licences.

Authors: Ludvig Holm, Måns Ullman
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Hsiu-Ru Chien How to determine whether patent infringement is intentional or results from negligence

Taiwan - Lee and Li Attorneys at Law

The Intellectual Property Court (IPC) recently rendered a civil judgment which clearly indicates how to determine whether patent infringement is intentional or whether it results from negligence. In the case discussed, the defendant had participated in an exhibition together with the plaintiff and had thus become aware of the patented products. The IPC found that this was sufficient to adopt the plaintiff's allegation that the defendant's infringement of the patent in dispute had been intentional.

Authors: Hsiu-Ru Chien, Elina Yu
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Recent updates

Paula Gutiérrez Catalonia High Court of Justice confirms grant of DYNAMIC SANTIVERI trademark

Spain - Grau & Angulo

Author: Paula Gutiérrez
Ian Mirandah Military coup halts trademark traction

Myanmar - Mirandah Asia

Author: Ian Mirandah
Chisako Yagi Court dismisses Starbucks's trademark invalidation request despite survey results

Japan - Nishimura & Asahi

Author: Chisako Yagi
Aumair Qayum Court of Appeal sheds further light on copyright law in relation to hyperlinking

United Kingdom - Pinsent Masons

Authors: Aumair Qayum, Gill Dennis
Mei Huang Cognac fends off genericide attack in opposition proceeding

China - Wanhuida Intellectual Property

Authors: Mei Huang, Xiaoning Pu
Shih-I Wu Payment of patent application and annual fees irrelevant for service invention judgments

Taiwan - Lee and Li Attorneys at Law

Author: Shih-I Wu
Celine Varmann Jørgensen Implementation of new Customs Act

Norway - Bryn Aarflot AS

Author: Celine Varmann Jørgensen
François Willems More than a wine label when prestige is at stake

Belgium - GEVERS

Author: François Willems

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

IPBC Europe 2021

4-5 October 2021

IPBC Europe – Europe’s foremost conference about IP value creation – will take place in Dublin from 4 to 5 October. Being held at the prestigious Shelbourne Hotel, the event will once again be Europe’s leading gathering of senior corporate IP professionals from companies of all sizes.


For more details please visit:
https://ipbc.iam-media.com/QrxnzQ?RefId=LEX

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