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Laboratoire de la Mer and Omega Pharma in disguised trademark infringement claim procedure
GEVERS
  • Belgium
  • 28 September 2020

In a dispute leading to a recent Ghent Company Court decision, Laboratoire de la Mer and Omega Pharma made a claim against – in their opinion – confusingly similar packaging for nasal sprays commercialised by Febelco and Axone Pharma. It is unclear whether Laboratoire de la Mer and Omega Pharma will take stock and appeal the court's decision. Irrespective of their decision to appeal, it is advisable to continuously reflect on the most appropriate type of IP protection for any intellectual creation.

Patentee protection strengthened in series of revisions to patent law
NAM & NAM
  • South Korea
  • 28 September 2020

In South Korea, the low amount of damages awarded by the courts in patent infringement cases has long been criticised. To address this, a treble damages system (implemented in July 2019) and an improved method for calculating the amount of damages (to be implemented on 10 December 2020) have been introduced. This article looks at these changes in detail, as well as a proposed law revision to improve evidence collection.

Supreme Court denies copyrightability of Georgia code annotations
Venable LLP
  • USA
  • 28 September 2020

A recent Supreme Court decision may seem like it boiled down to an esoteric argument over the correct interpretation of a series of cases decided in the 19th century – and it did – but the ramifications of the decision will be felt in 2020 and beyond. The court, by a slim five-to-four majority, held that the annotations in Georgia's official code are not copyrightable.

Landmark judicial interpretation promulgated in patent administrative cases
Wanhuida Intellectual Property
  • China
  • 28 September 2020

The Supreme People's Court recently promulgated the Provisions on Several Issues Concerning the Application of Laws in Adjudicating Administrative Cases Involving Granting and Affirmation of Patent Rights, which is the first judicial interpretation concerning the trial of patent administrative cases. This article summarises the judicial interpretation's main points.

8 important life sciences IP issues for innovators doing business in Canada
Smart & Biggar
  • Canada
  • 28 September 2020

The US-Canada border is the longest border between any two countries and US goods and services trade with Canada totalled an estimated US$718.5 billion in 2018, possibly the largest bilateral trade volume between two individual countries. Given the extensive integration of the Canadian and US economies, US life sciences companies can expect to have Canadian business interests. This article highlights eight life sciences IP issues of importance for innovators doing business in Canada.

Not all pun and games: Federal Court not amused with cannabis company's brand parody
Smart & Biggar
  • Canada
  • 28 September 2020

A recent Federal Court decision illustrates the danger of adopting a mark or name inspired by a famous or well-known brand, even when confusion is unlikely. The decision is a cautionary tale, particularly for those in burgeoning industries, such as Canada's cannabis industry, which may wish to piggyback on an established brand's goodwill and reputation.

Parody – fair dealing versus infringement
Saikrishna & Associates
  • India
  • 28 September 2020

Various jurisdictions provide protection to parodies under the doctrines of fair use and fair dealing. However, the lack of a concrete definition of 'fair dealing' under Indian law creates various pitfalls regarding the term's legal interpretation. Copyright does not protect ideas but only the specific form of expression of the same. Arguably, a definition of parody, outlining its scope and limitations and balancing these competing rights, may be a solution to this issue.

Generic trademarks and deceptive marketing practices: Competition Commission rejects genericism defence
Vellani & Vellani
  • Pakistan
  • 21 September 2020

Pursuant to a complaint of fraudulent use of a registered trademark, logo and packaging design, the Competition Commission initiated an inquiry into, and thereafter issued show cause notices to, two respondents for engaging in deceptive marketing practices under the Competition Act. Similarly, an inquiry was initiated against New Yorker Pizza for alleged deceptive marketing practices based on a complaint filed by The New York Pizza.

Guangzhou IP Court reaffirms legality of parallel imports
Wanhuida Intellectual Property
  • China
  • 21 September 2020

The Guangzhou IP Court recently upheld a first-instance judgment which had dismissed a trademark infringement claim against parallel imported products. The decision reaffirms the judicial practice that the import of non-counterfeit goods without the express permission of the trademark owner is not illegal in China, provided that the imported products comply with China's compulsory certification requirements and the importer does not modify, in any way, the imported product.

Relaxing of Enforcement Rules of the Design Protection Act from September 2020
NAM & NAM
  • South Korea
  • 21 September 2020

Continuing the trend of relaxed requirements for design applications, the Enforcement Rules of the Design Protection Act have been further eased in several aspects. This article explains the changes which affect mixed drawing formats, font designs in the TrueType font format and further categories of design which will be eligible for partial examination from 1 December 2020.

Supreme Court eases path to profits recovery in Lanham Act cases
Venable LLP
  • USA
  • 21 September 2020

In April 2020 the Supreme Court ruled that a plaintiff in a Lanham Act trademark infringement case may recover a defendant's profits without having to prove that the defendant acted wilfully. This precedential decision makes it easier for plaintiffs to obtain monetary recovery for trademark violations and false advertising under the Lanham Act.

Joint handling of patent infringement claims and contractual claims in Swedish IP courts
Westerberg & Partners Advokatbyrå Ab
  • Sweden
  • 21 September 2020

In the Swedish legal system, the specialist IP courts handle patent infringement claims, while the general courts handle contractual claims. But such different claims can be combined and handled jointly by the specialist courts under certain circumstances. In a recent case, the Supreme Court clarified under which circumstances patent claims and such civil claims can be combined and handled jointly.

Objective necessity to rebox in parallel trade and implementation of EU Falsified Medicines Regulation
Westerberg & Partners Advokatbyrå Ab
  • Sweden
  • 14 September 2020

In a recent case, the Patent and Market Court (PMC) elaborated on the concept of objective necessity to rebox medicinal products subject to parallel distribution in light of the implementation of the EU Falsified Medicines Regulation. The PMC's decision is a significant victory for originators, as it confirms that relabelling is still the main rule in Sweden and that reboxing remains the exception and requires evidentiary support of objective necessity by the parallel trader.

Pigment of our imagination? Colour trademarks could be inherently distinctive
Venable LLP
  • USA
  • 14 September 2020

Previously, in order for a brand owner to protect colour as a feature of its product packaging, it had to show that the colour scheme had acquired distinctiveness through extensive use in the marketplace. However, the Court of Appeals for the Federal Circuit recently ruled otherwise, creating new possibilities for brand owners to protect the overall look and feel of their packaging and strengthen their IP toolkit.

Groundbreaking judgment will result in quicker refusal of Benelux trademark applications for descriptiveness
AKD
  • International
  • 14 September 2020

The Benelux Court of Justice recently assessed whether the Benelux Office for Intellectual Property (BOIP) rightly refused the Benelux trademark PET'S BUDGET for being descriptive. The central question in this case was the criterion to assess whether a sign is descriptive. The implications of the case are groundbreaking since it will likely lead to quicker findings of signs or trademarks being descriptive and more refusals at the BOIP.

Monster unleashed the beast, but was shot down by the court
Advokatfirmaet Hjort
  • Norway
  • 14 September 2020

International energy drink giant Monster Energy Company recently lost a trademark infringement claim against energy drinks start-up Manimal Energy before the Borgarting Court of Appeals. The appeal court also rejected Monster's claim that Manimal had copied Monster's products in violation of Norwegian marketing law. Despite this setback, Monster may still consider such action successful due to the chilling effect that it could have on competing brands and products.

USPTO prioritises certain COVID-19-related trademark and service mark applications
Venable LLP
  • USA
  • 07 September 2020

In response to the COVID-19 pandemic, the United States Patent and Trademark Office recently announced an accelerated examination procedure for certain trademark and service mark applications covering qualifying COVID-19 medical products and services. This expedited process will benefit those that wish to protect their marks for products developed to fight the pandemic.

Delhi High Court evaluates anti-suit injunction in trademark suit
Saikrishna & Associates
  • India
  • 07 September 2020

Although there are no specific rules governing anti-suit injunctions in India, the Indian courts usually grant injunctions on the grounds of equity and preventing miscarriages of justice. While jurisprudence on this matter has been slow to develop, a recent domain name dispute before the Delhi High Court is a significant contribution in this regard.

Modification of exceptional measures adopted due to COVID-19
Grau & Angulo
  • Spain
  • 31 August 2020

During the national state of alarm caused by the COVID-19 outbreak and its related health crisis management, measures were adopted affecting IP matters, including the suspension and official interruption of certain deadlines and judicial and administrative actions. Having overcome the exceptional state of alarm, the Spanish courts and administrative bodies have now resumed full activity and the courts have been reinforced to ease the situation.

Gaming emote litigation: plaintiffs test different causes of action as battle ensues over Fortnite emotes
Venable LLP
  • USA
  • 31 August 2020

Fortnite: Battle Royale's high level of success and popularity has inevitably also made the game an inviting target for litigation. In the past 18 months, several cases have been brought against Epic Games regarding some of the game's most popular emotes, particularly with regard to copyright infringement and right of publicity claims. These cases provide insight for gamers and game developers into potential claims that they may face and how to appropriately clear rights and avoid claims.

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