Intellectual Property updates

Argentina

Contributed by Obligado & Cia
Amendments to law on industrial models and designs
  • Argentina
  • 03 December 2018

The Argentine Executive Power recently issued Decree 27/2018, which has introduced significant and substantial amendments to the Law on Trademarks, the Law on Patents and the Industrial Model and Design Decree 6,673/63. The most important amendments include a simpler registration process, an expansion of the facts that do not destroy novelty and adjustments to renewal and grace periods.

Regulation of new trademark opposition system
  • Argentina
  • 08 October 2018

The government recently issued a decree which introduced substantial changes to the trademark opposition system, empowering the National Institute of Industrial Property to settle disputes concerning oppositions that parties cannot resolve through negotiation. The changes include the establishment of a three-month term to obtain oppositions and a 40-day evidence period.

Health Authority and use of trademarks on pharmaceuticals
  • Argentina
  • 06 August 2018

The Health Authority examines all relevant information to decide whether to authorise a product's introduction to the market, including its trademark or product name. In this regard, the Health Authority considers potential health risks that could occur in the event of confusion and error as regards trademarks or product names and how such confusion could affect physicians, pharmacists and consumers.

New trademark opposition system
  • Argentina
  • 14 May 2018

Decree 27/2018 was recently issued with the aim of further reducing and simplifying the regulations of different regimes in order to improve commerce and industry. In the IP sphere, the decree introduced important and substantial changes to the trademark opposition system. As a result, the administrative authority will be empowered to settle disputes concerning oppositions that cannot be resolved between the parties by means of negotiation.

Effect of new decree on industrial property and trademark law
  • Argentina
  • 12 March 2018

A recently issued decree aims to further reduce and simplify the regulations of relevant regimes in order to provide an efficient response to requests for the exercise of commerce and the development of industry. Among other things, the decree simplifies the trademark opposition procedure; implements the administrative resolution of oppositions, nullity and cancellation for non-use actions; and requires proof of use for registered trademarks.


Austria

Contributed by Graf & Pitkowitz Rechtsanwälte GmbH
Exhaustion of trademark rights and burden of proof
  • Austria
  • 03 September 2018

The Supreme Court recently clarified the circumstances in which the burden of proof regarding the exhaustion of trademark rights shifts from the defendant to the trademark owner. It made clear that unless the defendant can prove a concrete risk of partitioning markets, it is up to the defendant to prove that the trademark rights relied on by the plaintiff are exhausted. This should be borne in mind when raising this defence.

Selective distribution systems and exhaustion of trademark rights
  • Austria
  • 04 June 2018

The Supreme Court recently affirmed once more that the exemptions to the principle of exhaustion of trademark rights must be construed narrowly. In its decision, the court made clear that once trademark rights are exhausted, resellers may use not only word marks, but also figurative marks without any limitations when advertising or reselling original products.

Marketability is key: if a work can be separated it is not a joint work
  • Austria
  • 08 January 2018

In a welcome development of Austrian copyright law, the Supreme Court recently ruled that a combination of works by two artists does not constitute a joint work if it can be separated, even if the works involved were created for the sole purpose of being combined as a jointly planned contribution. Strong indicators of whether parts of a work are separable are the individual marketability and possible depreciation of the separated parts.

Introduction of certification marks and other amendments to Trademark Law
  • Austria
  • 20 November 2017

Parliament recently transposed parts of EU Directive 2015/2436 into national law. Most important is the introduction of certification marks, which did not previously exist under Austrian law. Other provisions of the bill concern the division of trademark applications, the shortening of the validity period of a registration and the reduction of the registration fee.

Age of technology – metadata is sufficient to retain author's right of attribution
  • Austria
  • 17 July 2017

The Supreme Court recently ruled that the producer of a photograph who marks his or her name in the photograph's metadata must be credited as the producer on copies of the photograph made by other persons and intended for distribution. This judgment is good news for producers of digital photographs who wish to safeguard their copyright. Persons reproducing and distributing digital photographs should routinely check the metadata to ensure that the producer's name is listed on any reproduction.


Belgium

Contributed by ALTIUS
Trademarks versus artistic freedom of expression: milestone referral for preliminary ruling
  • Belgium
  • 09 July 2018

In a high-profile trademark infringement case involving Moët Hennessey Champagne Services and a Belgian painter, the courts were asked to strike a balance between the right to property, including intellectual property, and artistic freedom of expression. The decision is expected to set an important precedent on how to strike a fair balance between freedom of speech and the protection of trademarks when these two concepts conflict.

Parallel import of medicinal products
  • Belgium
  • 06 November 2017

Merck Sharp & Dohme (MSD) recently sued PI Pharma before the Brussels Commercial Court for the parallel import and repackaging of one of MSD's medicinal products. MSD based its claim on the alleged violation of the first, third and fourth Bristol-Myers Squibb conditions. Although this is not the first time that the Brussels Commercial Court has been involved in a dispute over the parallel importation of medicinal products, the judgment further refines the scope of certain Bristol-Myers Squibb conditions.

Court issues decision on parallel importation of debranded Mitsubishi forklift trucks
  • Belgium
  • 10 April 2017

In a recent judgment, the Brussels Court of Appeal ordered two parallel traders to pay provisional compensation of €3 million to the Mitsubishi Corporation for illegally importing hundreds of Mitsubishi forklift trucks which had been on the Asian market into the European Economic Area via parallel trade routes. The court held that the parallel traders had failed to provide conclusive evidence that Mitsubishi, the proprietor of the Benelux and EU trademarks, had consented to the parallel trade.

Court rules on use of competitor's trademark as AdWord
  • Belgium
  • 02 May 2016

The Mons Court of Appeal recently issued a judgment in a dispute between Verabel, holder of a complex trademark, and Verandas Confort, which used the word VERABEL as a Google AdWord. The court found that the AdWord VERABEL created likelihood of confusion between the goods concerned and infringed the trademark's function of origin. As a result, Veranda Confort was ordered to cease using the AdWord.

Supreme Court defines online patent-infringing offer
  • Belgium
  • 04 April 2016

The Supreme Court recently issued a judgment in a dispute between a European patent holder and Swiss-based medical and dental equipment manufacturer Nouvag. The court confirmed that Nouvag had failed to comply with an order not to offer an infringing product in Belgium, as the product was presented on its website as being available throughout Europe. The judgment provides clarity on 'offering' as an act of patent infringement in Belgium.


Canada

Contributed by Smart & Biggar/Fetherstonhaugh
The date is set – new trademark law will be in force June 2019
  • Canada
  • 03 December 2018

After years of uncertainty, a date has been set for the implementation of Canada's new trademark law, which will come into force on 17 June 2019. The law will bring about significant changes, including the simplification of trademark applications, the elimination of the government registration fee for new applications and the introduction of fees per class.

Anti-dilution remedy not limited to registered trademarks
  • Canada
  • 03 December 2018

Section 22 of the Trademarks Act, depreciation of a registered trademark's goodwill, is a potentially powerful yet generally underused weapon for dealing with damaging comparative advertising campaigns. Dilution-type claims to prevent comparative ads displaying a registered trademark are particularly complex as they require that the advertising actually 'use' the registered mark within the meaning of the Trademarks Act.

We have lift off: Canada's new industrial design regime launched
  • Canada
  • 26 November 2018

Numerous and substantial amendments were recently made to the Industrial Design Act and the Industrial Design Rules. The amendments will modernise Canada's industrial design law and harmonise it with other jurisdictions. Among other changes, applicants may now file a divisional application for any design that is originally disclosed – not merely claimed – in a parent application as filed and choose whether to provide a description of the design or statement of limitation.

New Bill C-86 introduces many more changes to IP laws
  • Canada
  • 19 November 2018

The government recently introduced Bill C-86. The changes introduced by the bill are in addition to the many amendments to the Trademarks Act and Patent Act yet to be brought into force. These changes represent continuing efforts by the government to update and modernise Canada's IP legislation and ensure that it is compliant with Canada's international obligations.

Apotex not permitted to plead promise-based invalidity grounds in Section 8 lansoprazole action
  • Canada
  • 19 November 2018

The Ontario Superior Court of Justice recently dismissed Apotex's motion to plead promise-based invalidity grounds in a Section 8 lansoprazole action. Apotex claimed damages for delay in the issuance of its notice of compliance for its generic lansoprazole product due to prohibition applications commenced by Abbott and Takeda. Abbott and Takeda had pleaded patent infringement as a defence and brought a counterclaim for patent infringement. Apotex in turn challenged the validity of Takeda's patents.


Cayman Islands

New Cayman Islands IP regime
  • Cayman Islands
  • 11 September 2017

The Trademarks Law 2016, the Patents and Trademarks (Amendment) Law 2016 and the Design Rights Registration Law 2016 recently came into force, introducing a new IP regime in the Cayman Islands. The legislation establishes a standalone trademark registration system, prohibits the assertion of patent infringement in bad faith and allows existing UK and EU-registered design rights to be extended to the Cayman Islands, among other things.