Intellectual Property updates

Argentina

Contributed by Obligado & Cia
New legislation on unfair competition and designations of origin
  • Argentina
  • 02 March 2020

Until the approval of Emergency Decree 274/2019 in April 2019, the regulation of unfair competition in Argentina was characterised by a lack of organisation, narrow scope and lack of a general rule for standardising acts of unfair competition. The new decree sets out numerous provisions that are relevant to the IP field, including provisions addressing the regulation of comparative advertising, designations of origin, secrecy, data exclusivity and trademarks.

Unfair competition and trademark protection
  • Argentina
  • 02 December 2019

The protection provided under industrial property law to commercial signs registered with the National Institute of Industrial Property is more effective than that offered by unfair competition law. It is therefore worth questioning whether unfair competition law exercises any function with regard to the protection of registered signs. There may be sectors in which the protection of a rights holder's interest requires the combined use of IP and competition law.

Trademark rights and comparative advertising
  • Argentina
  • 23 September 2019

Since the Trademark Law reserves the right to use a trademark for the mark's owner, legal scholars in Argentina have long debated whether the use of trademarks in comparative advertising is permitted. With the recent approval of Emergency Decree 274/2019, legislation has, for the first time, addressed comparative advertising in Argentina in a detailed and systematic manner and established when it is allowed.

Implications of new unfair competition legislation for IP practitioners
  • Argentina
  • 22 July 2019

Emergency Decree 274/2019 has established a comprehensive system for regulating unfair competition. Many practices punished by the new unfair competition rules affect IP rights. Further, the new legislation establishes a series of provisions that are highly valued in the IP field, including the detailed regulation of comparative advertising and provisions referring to names of origin and trade secrets.

Sweet tooth: new appellation of origin introduced
  • Argentina
  • 13 May 2019

Law 25,163/1999 and Law 25,380/2000 govern appellations of origin in Argentina for wines and wine-based spirits as well as agricultural and food products, respectively. The Ministry of Production and Labour recently acknowledged a new appellation of origin for a sweet quince paste produced in San Juan that is part of the local culinary tradition and whose characteristics derive from the manufacturing process and the quality of the quinces produced in the province.


Austria

Flashlight decision illuminates compensation guidelines for unlawful use of IP rights
  • Austria
  • 22 April 2019

The Supreme Court recently had to decide whether the infringer of a registered Community design had to hand over the entire net profit or just a share of profit earned due to its use of an infringed design. The decision has great practical importance, as it gives IP rights holders clear guidelines regarding what to expect when claiming compensation for an unlawful use of their rights.

Dispenser for free newspapers – work of art?
  • Austria
  • 17 December 2018

The Supreme Court recently set out clear principles regarding the protection of a work of visual art under the Copyright Act where technical functions played a role. In its decision, the court explained that the assessment as to whether a (visual) piece of work is actually protected by copyright must be assessed by the court as a legal issue only. There is no room to consider the opinion of experts or any other third parties.

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.


Belgium

Desperate times call for ex parte interim measures in patent disputes
ALTIUS
  • Belgium
  • 18 March 2019

Preliminary injunctions are rarely granted on an ex parte basis in Belgium and adversarial debates are considered a cornerstone of legal proceedings which can be deviated from only in cases of absolute necessity. However, ex parte interim measures have been granted in at least four patent disputes in Belgium in recent years, which helps to shed light on the circumstances under which patentees can consider them to be a measure of last resort to stop a threat of infringement.

Express recognition and clarification of trade secret protection in Belgium
ALTIUS
  • Belgium
  • 11 February 2019

On 30 July 2018 the Belgian legislature transposed the EU Trade Secrets Directive into domestic law via the Trade Secret Law. The Trade Secret Law is welcomed, as no general regulatory framework regarding trade secrets previously existed in Belgium. It remains to be seen how the law will be used and applied in practice, but it is an essential means in effectively appropriating, protecting and exploiting innovation by providing trade secret holders with the tools to protect valid trade secrets.

Trademarks versus artistic freedom of expression: milestone referral for preliminary ruling
ALTIUS
  • 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.


Canada

Contributed by Smart & Biggar
First decision under amended PMNOC Regulations: Federal Court finds Amgen's filgrastim patent obvious
  • Canada
  • 25 May 2020

The Federal Court recently issued the first decision under the amended Patented Medicines (Notice of Compliance) Regulations. In the decision, Pfizer was successful in establishing obviousness of the asserted claims of Canadian Patent 1,341,537 relating to filgrastim (Amgen's NEUPOGEN and Pfizer's biosimilar product NIVESTYM).

COVID-19: CIPO deadlines extended until 1 June 2020
  • Canada
  • 18 May 2020

In view of the ongoing COVID-19 pandemic, the Canadian Intellectual Property Office (CIPO) has further extended patent, trademark and industrial design deadlines fixed under the relevant legislation. Deadlines up to 29 May 2020 have now been extended until 1 June 2020. The CIPO may decide to extend deadlines further, depending on how circumstances evolve.

CIPO deadlines further extended
  • Canada
  • 04 May 2020

​In view of the ongoing COVID-19 pandemic, the Canadian Intellectual Property Office (CIPO) has further extended patent, trademark and industrial design deadlines fixed under the relevant legislation. Deadlines up to 15 May 2020 are now extended until 19 May 2020 (18 May 2020 being Victoria Day, when the CIPO is closed to the public).

CIPO deadlines extended
  • Canada
  • 13 April 2020

Due to the ongoing COVID-19 pandemic, the Canadian Intellectual Property Office has further extended patent, trademark and industrial design deadlines fixed under the relevant legislation. Deadlines up to 30 April 2020 have now been extended until 1 May 2020.

Parliament passes legislation implementing USMCA
  • Canada
  • 06 April 2020

Bill C-4, which implements the US-Mexico-Canada Agreement (USMCA), has received royal assent from the governor general. The USMCA will replace the North American Free Trade Agreement and require numerous changes to Canada's IP laws. The provisions of Bill C-4 that are relevant to intellectual property will come into force on a day to be determined by order of the governor in council.


China

Contributed by Wanhuida Intellectual Property
Beijing IP Court concludes first patent infringement case on microorganism protection
  • China
  • 25 May 2020

The Beijing IP Court recently held that two Tianjin-based companies had infringed Chinese Patent 201310030601.2, which is owned by the largest specialty mushroom grower in China, Shanghai Finc Food Co Ltd. This is the first case concluded in the Beijing IP Court to involve an infringement dispute concerning a patented microorganism per se.

Daimler fails to defend Smart design patent in validity challenge
  • China
  • 18 May 2020

The China National Intellectual Property Administration (CNIPA) recently invalidated Daimler's Design Patent 201430032306.6 regarding the new Mercedes-Benz Smart generation following a validity challenge by Shandong Lichi, a Chinese new energy vehicle company. The CNIPA held that the two designs in the patent at issue had no obvious difference to the prior designs, which had been published in news media.

Trademark use on signboards by unauthorised retailers
  • China
  • 04 May 2020

In China, foreign brand owners are becoming increasingly concerned about unauthorised retailers using their trademarks on signboards. The legal issue is complicated by the fact that these unauthorised retailers are selling genuine goods which originate from parallel imports.

Factoring in design space when determining similarity of designs
  • China
  • 13 April 2020

The Patent Law provides that a design for which a patent is granted must significantly differ from prior designs. Further, the similarity between a patent design and a prior design must be determined from the perspective of ordinary consumers in the relevant market. To this end, the Supreme People's Court uses certain parameters, including so-called 'design space'. This article analyses the application of these parameters in a recent design patent administrative suit.

Article 4 of new Trademark Law: an efficient weapon against bad-faith trademark filings
  • China
  • 30 March 2020

The fourth amendment of the Trademark Law came into force on 1 November 2019. The revised Article 4 of the law now states that a "trademark filed in bad faith without intention to use shall be rejected". This modified version is also mentioned in Article 44.1 of the law, which provides that any trademark registered in violation of Article 4 and any trademark registered by fraudulent or unfair means will be declared invalid.