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.

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.


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
Federal Court of Appeal remands Remicade new use patent decision on anticipation and obviousness
  • Canada
  • 30 March 2020

In 2018 the Federal Court found that Kennedy's new use patent for infliximab (Janssen's Remicade) was valid and had been infringed by Hospira's biosimilar Inflectra. However, in January 2020 the Federal Court of Appeal released a decision remitting for reconsideration by the trial judge certain issues relating to the validity of Canadian Patent 2,261,630.

Government introduces Bill C-4 to implement USMCA's required changes
  • Canada
  • 23 March 2020

Bill C-4 – which addresses some of the changes required under the US-Mexico-Canada Agreement (USMCA) – was recently introduced in the House of Commons. Amendments to the Patent Act were not introduced by Bill C-4 but are expected in the coming years, as Canada must implement the USMCA's required patent term adjustment to compensate for Patent Office delays within four-and-a-half years of the agreement coming into force.

True or false: testing limits of comparative advertising
  • Canada
  • 16 March 2020

Comparative advertising can be a useful tool for marketers. However, there are legal limits to comparative advertising which are set out in federal statutes such as the Competition Act and the Trademark Act. The Federal Court recently explored these limits in a case involving the registered trademark PETSECURE.

Federal Court is back on track: IP holders will continue to benefit from protective orders in IP litigation
  • Canada
  • 09 March 2020

The Federal Court of Appeal recently reaffirmed the long-established practice of granting protective orders to parties involved in IP litigation before the Federal Court. In doing so, it set aside recent decisions in which the Federal Court refused to issue such an order, including instances where the order was sought with the consent of the parties.

Consultation on draft Patented Medicines Regulations ends and selected presentations published
  • Canada
  • 02 March 2020

The consultation period for the Patented Medicine Prices Review Board's (PMPRB's) draft guidelines operationalising the amended Patented Medicines Regulations recently ended, after two extensions. Further, the PMPRB has released the presentations from its January 2020 patentee webinar, December 2019 industry forum and December 2019 civil society forum.


Chile

INAPI designated as international searching and preliminary examining authority
  • Chile
  • 07 May 2018

In 2015 the National Institute of Industrial Property (INAPI) was designated as an international searching authority (ISA) and international preliminary examining authority (IPEA) under the Patent Cooperation Treaty. From January 1 2018, the INAPI can issue international search and preliminary examination reports for Chilean applicants and applicants from Latin American and Caribbean countries that have designated the INAPI as their ISA and IPEA.