Latest updates

Keemun GI certification trademark invalidated
Wanhuida Peksung
  • China
  • June 18 2018

The Beijing High Court recently overturned a first-instance judgment relating to a certification trademark filed by the Keemun Black Tea Association. In its decision, the court emphasised that geographical indication trademark applicants bear a higher obligation and must act in good faith when submitting filing documents, including by not producing forged application files and giving a full and accurate account of the circumstances.

Copyright: the unregistrable, the forgotten and the mighty
KISCH IP
  • South Africa
  • June 18 2018

A saga spanning more than five years finally came to an end when all disputes between the Agricultural Research Council (ARC) and the South African and Animal Improvement Association were settled. Underpinning the conclusion of this saga is a healthy dose of respect for copyright – the unregistrable, often forgotten, yet mighty IP right. The ARC was vindicated in the settlement and its contribution to livestock improvement over many decades was finally given the recognition that it deserves.

Apotex not entitled to reopen trial on esomeprazole (Nexium) patent validity
Smart & Biggar/Fetherstonhaugh
  • Canada
  • June 18 2018

The validity of AstraZeneca's NEXIUM patent has finally been decided by the Supreme Court of Canada, with any doubt about the court's intent resolved by its dismissal of Apotex's motion to raise new grounds of patent invalidity. The court also held that AstraZeneca was entitled to a declaration of infringement and ordered the quantification of AstraZeneca's damages or Apotex's profits.

Jury awards Apple $533 million in damages
Fitzpatrick, Cella, Harper & Scinto
  • USA
  • June 18 2018

After a week-long trial and four days of deliberation, a federal jury has determined that Samsung owes Apple over $533 million in damages for infringing three design patents asserted by Apple. The jury also found Samsung liable to pay more than $5 million for infringing two utility patents.

The considerable value of Max Verstappen's likeness
AKD NV
  • Netherlands
  • June 18 2018

The Amsterdam District Court recently allowed a substantial damages claim following Dutch grocery delivery start-up Picnic's unlawful use of a lookalike of the famous Formula 1 driver Max Verstappen. This case clarifies that a person's right to control the use of their image cannot be violated easily. Although the parody defence is useful, the chance of success is limited if the parody is made in order to achieve commercial gain.

Obtaining trademark protection for distorted terms
Danubia Patent & Law Office LLC
  • Hungary
  • June 18 2018

Brand owners often distort descriptive terms or generic names in order to register them as trademarks. Whether they succeed depends on the level of difference between the two terms. A recent Metropolitan Tribunal opinion in this regard was supported by the EU General Court's judgment in Doublemint, according to which a word's descriptive character must be material in respect of the relevant goods and enable the public to immediately recognise the characteristics of such goods.

Slogans containing well-known marks not inherently distinctive
Lee and Li Attorneys at Law
  • Taiwan
  • June 18 2018

Consumers will not usually perceive a slogan as an identifier of goods or services until they encounter consistent advertising or other practices by the brand user. Generally, therefore, slogans are not inherently distinctive in existing trademark examining practice in Taiwan. In a recent administrative case, an applicant claimed that because its house mark was extremely well-known worldwide, the Taiwan Intellectual Property Office should treat the trademark to be filed as a regular slogan.

Procedural decisions relating to Herceptin under amended PMNOC Regulations
Smart & Biggar/Fetherstonhaugh
  • Canada
  • June 18 2018

Two recent decisions addressed procedure under the 2017 amendments to the Patented Medicines (Notice of Compliance) Regulations. In the first case, Prothonotary Aylen ruled that the court lacked jurisdiction to consider a motion under Section 5(3.7) of the regulations to vary confidentiality rules imposed by a party that has served a notice of allegation under Section 5(3.5). In the second case, Aylen dismissed Pfizer's motion to dismiss, adjourn or delay a motion filed by Amgen under Section 6.08.

Barcelona patent court upholds valsartan-amlodipine patent invalidity
Grau & Angulo
  • Spain
  • June 18 2018

The Barcelona Commercial Court Number 4 recently dismissed a patent infringement action brought by Novartis against the first generics in Spain of its valsartan and amlodipine medicinal product for the treatment of hypertension. The court upheld the defendants' counterclaim for invalidity of the asserted patent. Novartis has appealed this decision before the Barcelona Court of Appeal.

How to be more strategic in your fight against bad-faith filing
Wanhuida Peksung
  • China
  • June 11 2018

Data released by the Beijing Intellectual Property Court shows that bad-faith filings and registrations account for 30% of all trademark-related administrative suits, making them a major concern for brand owners. Recent case law of the China Trademark Office, the Trademark Review and Adjudication Board and the judiciary reveals how brand owners could be more strategic in fighting bad-faith filing under the existing trademark legislative framework.

Appeal court confirms revocation of ex parte preliminary injunctions against oxycodone/naloxone generics
Grau & Angulo
  • Spain
  • June 11 2018

The Barcelona Court of Appeal recently issued two decisions confirming the Barcelona Commercial Court Numbers 1 and 4 rulings revoking the preliminary injunctions that they had granted ex parte at Mundipharma's request against the first generics in Spain of its oxycodone/naloxone medicinal product for the treatment of pain. In its decisions, the Barcelona Court of Appeal concluded that Mundipharma's patent was prima facie invalid due to added subject matter, as argued by the defendants.

How can I copyright my idea?
KISCH IP
  • South Africa
  • June 11 2018

IP attorneys frequently hear from clients that want to copyright their ideas. However, copyright protection extends only to the material expression of an idea and not the idea, concept, procedure or method itself. This distinction between ideas and expressions has been the cause of much debate and even confusion; some authors argue that an idea cannot exist independently of its material expression, while others insist that the two are distinct.

Teva seeks leave in levofloxacin damages assessment
Smart & Biggar/Fetherstonhaugh
  • Canada
  • June 04 2018

The Federal Court of Appeal recently dismissed Teva's appeal regarding the quantification of damages for its infringement of Janssen's patent for levofloxacin (Levaquin). The Federal Court of Appeal rejected Teva's arguments, finding that the Federal Court had not erred in constructing the hypothetical world and that its factual findings were supported by evidence. On 26 March 2018 Teva applied to the Supreme Court for leave to appeal.

First CSPs issued and application fee increased
Smart & Biggar/Fetherstonhaugh
  • Canada
  • June 04 2018

Health Canada recently issued the first certificates of supplementary protection (CSPs) against three approvals. In addition, on 1 April 2018 the CSP application fee was increased to C$9,192.

Selective distribution systems and exhaustion of trademark rights
Graf & Pitkowitz Rechtsanwälte GmbH
  • Austria
  • June 04 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.

Beware – fake news! Increase in sale of counterfeit goods on social media
KISCH IP
  • South Africa
  • June 04 2018

The increase of internet usage on mobile smartphones has resulted in more than two-thirds of South Africa's population having access to social media. While social media can be regarded as a vital tool for marketing goods and services, many brand owners fail to identify its use as an area of concern for the sale of counterfeit goods online. With much more anonymity and far less red tape, counterfeiters are exploiting social media platforms as a tool for reaching unsuspecting consumers.

Trade dress protection for service providers and new provision on theft of ideas
Kim & Chang
  • South Korea
  • June 04 2018

An important amendment to the Unfair Competition Prevention and Trade Secret Protection Act will come into effect in July 2018. This amendment specifies the protection to be given to trade dress belonging to service providers in South Korea and introduces a new type of prohibited unfair competitive activity.

When USPTO institutes inter partes review, it must decide patentability of all challenged claims
Fitzpatrick, Cella, Harper & Scinto
  • USA
  • June 04 2018

In a recent case, the Supreme Court held that when the US Patent and Trademark Office (USPTO) institutes an inter partes review, it must decide the patentability of all of the claims challenged by the petitioner, based on the plain text of 35 USC Section 318(a). The court found no basis in the statutory text or framework for the USPTO's partial institution practice.

Apotex fails to establish that it would have obtained non-infringing product from foreign suppliers
Smart & Biggar/Fetherstonhaugh
  • Canada
  • May 28 2018

Servier and its related company ADIR were recently successful in another chapter of the patent litigation concerning perindopril when the Federal Court again dismissed the non-infringing alternative defence of Apotex Inc and Apotex Pharmachem Inc (collectively, Apotex). The court found that Apotex would not have called on foreign third parties to manufacture perindopril to supply its affiliates in the United Kingdom and Australia and thus reaffirmed the quantum of profits from its original judgment.

Protecting unregistered trademark rights from passing off
Vellani & Vellani
  • Pakistan
  • May 28 2018

In a recent case, the appellant challenged the Additional District Court's decision to dismiss a permanent injunction issued against the respondent for its adoption of a mark that was confusingly similar to that of the appellant. The decision reflects that unregistered trademark rights can be protected through a passing-off claim where it can be established that the trademark has gained distinctiveness as a result of its continuous use over time.

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