IP in the Auto Industry
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International reports

Sent to over 18,000 subscribers, the IAM Weekly email features reports from an international team of correspondents who report on recent developments in IP law and practice in their home jurisdictions, as well as strategic issues and those relating to finance, deal-making and valuation.

Most recent

Aistemos

IP analytics More reports

27 Jan 2016
White goods in the grey area: is there (still) a connected appliance ecosystem war?

The connected appliances space is crowded and new players are continuing to enter, with some appearing to prevail as winners. An examination of the IP situation appears to show a certain decline in new innovation, which may indicate that the imminent pipeline of product is strong and we are on the verge of dramatic change. Full text

13 Jan 2016
Are Apple and Google just a bump in the road for the automotive industry?

Controlling standards in a converging marketplace are usually of high strategic importance, with intellectual property at the core. Automotive companies are increasingly becoming technology companies – which means competing with new competitors in new areas, where they likely do not have as strong an IP position as they hold in their traditional domains. Full text

16 Dec 2015
Drones: up in the air, but grounded in patent protection

It has been predicted that more than one million drones will be given as presents during the 2015 festive season, to the consternation of the US Federal Aviation Authority. While the majority of drone-related patent activity has been in the defence sector, this patent analysis focuses on civilian drones which are put to a variety of commercial uses. Full text

Griffith Hack

IP valuations More reports

25 Nov 2015
IP value and the venn of effective patent claims

Like miners in the Wild West, patent attorneys today generally attempt to peg out the largest area around an invention. The invention is defined by patent claims. As with land claims, not all patent claims are created equal. Patent claims can be viewed through three distinct lenses and high-quality claims are constructed with all three lenses in mind. Full text

11 Nov 2015
IP valuation and capital raising

Raising funds is a common issue for early-stage and high-growth companies with few tangible assets. A recent transaction illustrates how a robust valuation, supported by patent attorney input and patent analytics, can help get equity funding over the line. Full text

04 Nov 2015
Volkswagen: quantifying the reputational damage

Since the emissions scandal reached the mainstream media, Volkswagen’s reputation and brand value have unquestionably suffered a big hit. Can the economic impact of reputational damage be quantified? And could a robust reputational risk framework have helped Volkswagen to avoid or mitigate the damage? Full text

Watermark

Australia More reports

14 Oct 2015
High Court: Myriad's BRCA genes not patentable subject matter

Just over one year after the Full Federal Court of Australia unanimously upheld an earlier Federal Court decision that naturally occurring nucleic acid molecules are patentable in Australia, the High Court has handed down a unanimous judgment overturning that decision. This highly anticipated decision sets Australian law at odds with that of many other jurisdictions where isolated nucleic acid molecules remain patentable. Full text

02 Sep 2015
'Je suis Cecil': trademark law and distasteful capitalism

It is a sad but undeniable truth that people seek to capitalise on tragic events, including by attempting to register related trademarks. A number of countries have trademark laws which prohibit the registration of marks considered to be scandalous or offensive. However, whether a mark is considered scandalous or merely distasteful depends on context. Full text

05 Aug 2015
Ixnay on the TAR JAY – Target defends its urban nickname

Never one to let a good parody go astray, Target Australia Pty Ltd (aka 'Targét' or 'Tarjay') has successfully prevented Catchoftheday.com.au Pty Ltd from registering trademarks including the term 'Tar Jay'. This decision was issued despite the fact that Target had not used 'Tarjay' or any phonetically similar term as a trademark. Full text

Gowling Lafleur Henderson LLP

Canada More reports Archive

16 Dec 2015
TPP treaty: potential changes to Canadian copyright and trade secret laws

If ratified by Parliament, the IP Chapter of the Trans-Pacific Partnership Agreement will bring noteworthy changes. In regard to copyright laws, there will be changes to the term of copyright protection and the way in which internet intermediaries can deal with allegations of online copyright infringement; while in regard to trade secret laws, criminal procedures and penalties related to theft of trade secrets will be introduced. Full text

09 Dec 2015
TPP: new rights for pharmaceutical patent holders

The Canadian government has released the official consolidated text of the Trans-Pacific Partnership (TPP). Patent holders can look forward to some additional patent rights, notably patent term extensions in certain situations. Moreover, the TPP includes specific provisions for the pharmaceutical industry, including explicit data protection for a broad range of pharmaceuticals. Full text

23 Sep 2015
Court rejects the concept of initial interest confusion

The British Columbia Supreme Court has issued one of the first Canadian decisions addressing at length the issue of keyword advertising in the context of an action for passing off. The court found that the use of a competitor’s trademark in keyword advertising did not constitute passing off, and in doing so rejected the idea of initial interest confusion as a basis for a finding of a likelihood of confusion. Full text

Wilkinson & Grist

China More reports

03 Feb 2016
Rise in copyright infringement actions brought by traditional media against online media

The Beijing Youth Daily recently triumphed in an action before the Beijing Haidian District People’s Court against Beijing Sina Internet Information Service Co Ltd. The court found that Sina had changed the title of a Beijing Youth Daily article and republished the article on its website without the newspaper's permission and without paying remuneration. Full text

27 Jan 2016
Growing importance of copyright registration

The National Copyright Administration recently announced that the total number of copyright registrations issued between January and October 2015 reached a record high of 689,700, marking a significant achievement in China’s 12th five-year plan. Full text

21 Oct 2015
New efforts to fight IP infringement and counterfeiting activities

According to a recent report, in the first six months of 2015 more than 23,000 cases relating to IP infringements or the manufacture and sale of counterfeit and inferior products were opened. While these interim results appear promising, the new efforts will benefit rights holders only if they continue in the long term. Full text

Chas Hude A/S

Denmark

09 Sep 2015
Generic versus branded: court rules on drug substitution legislation

A recent Maritime and Commercial High Court decision has exposed a potential incompatibility between Danish patent legislation and a medicinal substitution act which was implemented to minimise the costs of medicine for consumers and the government. Full text

01 Jul 2015
Royal decree changes rules on patenting

In the past, various special rules have applied to patenting in the Faroe Islands. However, the Danish and Faroese authorities have worked together to update the relevant legislation and, following a recent royal decree, the patent rules for Denmark, Greenland and the Faroe Islands are now uniform. Full text

25 Feb 2015
Natural resources development offers new patent opportunities

Greenland has a bright future in the mineral resources sector and undoubtedly this will require new and innovative solutions that can form the basis for patents. In order to obtain a patent in Greenland, a company must apply for a patent in Denmark at the Danish Patent and Trademark Office. Full text

Kuhnen & Wacker

Germany More reports

16 Dec 2015
Supreme Court rules on illegal music downloads and website blocking

Illegal downloads of songs cause billions of dollars of loss every year, depriving the music industry of revenue that it must pay songwriters, artists and talent scouts. Through a recent decision the Supreme Court has opened the door to allowing internet service providers to block copyright-infringing sites. Full text

26 Aug 2015
Good things come to those who wait: modernising the EU trademark system

In April 2015 the European Commission, the European Parliament and the European Council finally agreed on a new package of trademark law reforms. The reforms are intended to promote innovation and economic growth and ensure coexistence and consistency between different trademark offices. Full text

20 May 2015
ECJ paves the way for proposed unitary patent regime

The European Court of Justice (ECJ) has rejected two actions brought by the Spanish government against the legality of the regulations establishing the unitary patent. If the Spanish actions had been successful, it would have been the end of the proposed unitary patent regime. As steps are already being taken across member states to establish the Unified Patent Court, the ECJ's decisions have been welcomed. Full text

Wilkinson & Grist

Hong Kong More reports

16 Dec 2015
Patents bill making its way through the legislature

The Hong Kong government recently introduced the Patents (Amendment) Bill 2015 into the Legislative Council for first and second readings. The bill is intended to meet present-day standards for patent systems and to promote Hong Kong as a regional hub for innovation and technology. Full text

02 Dec 2015
Impact of Contracts (Rights of Third Parties) Ordinance on trademark licensing

The Contracts (Rights of Third Parties) Ordinance will introduce a variation of the common law doctrine of privity of contract which provides that a party cannot acquire and enforce rights under a contract to which it is not a party. When entering into a licence agreement on or after January 1 2016, rights holders should carefully consider whether and to what extent to contract out the application of the ordinance. Full text

08 Apr 2015
Registry updates Work Manual on Absolute Grounds for Refusal

The Hong Kong Trademarks Registry has updated the Work Manual on Absolute Grounds in relation to objections based on bad faith. The changes provide that where the circumstances of the application give rise to a reasonable suspicion of the applicant’s entitlement to the mark or the honesty of its intention, examiners now have a duty to raise an objection based on bad faith. Full text

Jacobacci & Partners spa

Italy More reports

13 Jan 2016
Appeal board confirms similarity of hairdressing products and services

In a recently published decision the Italian Board of Appeal confirmed that even if products and services are, by their nature, different, “hygienic and beauty care treatments to human beings and animals” in Class 44 with respect of “hair care products” in Class 3 can be found to be similar, taking into account all the relevant factors. Full text

02 Dec 2015
Wine and oil do not mix – except in trademark rulings

The Court of Cassation recently upheld a Milan Court of Appeal decision holding that, with respect to trademarks, wine and oil are similar goods. The decision is in line with past Italian jurisprudence, yet is inconsistent with both Office for Harmonisation in the Internal Market case law and the position of the Italian Trademark Office, which considers goods in Classes 29 and 33 to be dissimilar. Full text

11 Nov 2015
Sunstar redux: agent’s mistake no excuse for non-observance of renewal deadline

After 10 years of litigation the Court of Cassation recently ruled that an agent’s mistake does not excuse non-observance of a mandatory deadline for paying patent renewal fees. The court held that, in the absence of extraordinary circumstances, a patent owner is not free from the consequences of its agent's failure if it has not demonstrated that it monitored the execution of the tasks entrusted to the agent. Full text

NLO

Netherlands More reports Archive

03 Feb 2016
Is MEMORY a trademark for games?

In a recent decision the Court of Amsterdam held that word combinations used by online games provider Jaludo did not infringe Ravensburger’s MEMORY trademark, which has been used for a memory game since 1961. The court rejected Ravensburger’s case because Jaludo used the word 'memory' as a description of its games. Full text

27 Jan 2016
GOUDKUIPJE versus GOEDCUPJE: comparing coffee to cheese

In recent proceedings Koninklijke Eru Kaasfabriek lost an opposition which it had filed against Goedcupje BV's application to register a trademark for the logo GOEDCUPJE. The Benelux Office for Intellectual Property held that the fact that both trademarks related to food was not enough because the foods in question were very different. Full text

14 Oct 2015
Nested claims before the EPO: pragmatic cosmetics or clarity-obstructing nuisance?

It has been said that the logo of the European Patent Office resembles the ideal method for drafting a set of patent claims: the broadest, most well-rounded claim should be in the centre, surrounded by additional layers of protection in the form of dependent claims. This can result in nested subject matter within the scope of the broadest claim. The result could be a set of nested claims – or could it? Full text

Federis & Associates

Philippines

02 Sep 2015
IPOPHIL takes steps towards IP financing framework

The Intellectual Property Office of the Philippines (IPOPHIL) has taken initial steps towards enabling the monetisation of IP assets in the Philippines by holding the High-Level Forum on IP Financing. It is hoped that the forum and future IPOPHIL directives will help local rights holders to attract foreign investors into the country. Full text

22 Apr 2015
Philippines launches first online IP marketplace

The Intellectual Property Office of the Philippines has launched the country's first online IP marketplace. IP Depot is a digital platform which promotes IP assets for potential commercialisation opportunities. It was established to give owners of patented inventions, registered trademarks, copyright and industrial designs a forum to showcase their IP assets to the world. Full text

Gorodissky & Partners

Russia More reports

27 Jan 2016
Anti-monopoly Service tackles health concerns

The best-known involvement of the Anti-monopoly Service in IP rights is its ardent though unsuccessful support of the liberalisation of parallel imports. However, it is now targeting another issue: the requirement that imported drugs registered in Europe and the United States undergo clinical trials before they can be registered in Russia. Full text

16 Dec 2015
The perils of secrecy

Trade secrets are a very specific form of IP right, as in order to assert a trade secret the rights holder can rely only on his or her word and the contract. Cases over know-how are rare. However, one recent case involved two entrepreneurs in St Petersburg. Full text

09 Sep 2015
Intellectual property acquires a general manager

The recent appointment of Grigory Ivliev as the new head of the Federal Service of Intellectual Property marks a new era for the office. Under forthcoming legislation. Its remit will be widened to cover not only the issues that it regulates at present (including inventions, designs and trademarks), but also large-scale copyright (eg, music, films and literature). Full text

Formosa Transnational

Taiwan More reports

16 Dec 2015
Supreme Administrative Court deals with impermissible hindsight

The Taiwan Supreme Administrative Court (TSAC) has seldom discussed the meaning of hindsight. However, the TSAC recently revoked two IP Court judgments which concluded that the subject patents were invalid because they were made with impermissible hindsight. Full text

02 Dec 2015
Use evidence requirements in revocation of trademark applications

The IP Court recently issued a judgment holding that in a revocation application, a registrant must submit use evidence for each identified good. However, it stated that if other goods are of the same nature and use evidence is submitted for these goods, it can be held that the target mark has been used on all of the goods with a similar or identical nature. Full text

28 Oct 2015
Using divisional applications to save a patent

In Taiwan, the invention patent divisional application system provides a remedy to settle the scope of patent protection during an application and gives applicants the flexibility and freedom to plan and organise a favourable patent application strategy. Full text

Gün + Partners

Turkey More reports

16 Dec 2015
New AMTC raises patent-related questions

The Technological Research Council of Turkey and Rolls Royce have signed a cooperation agreement to build the first advanced manufacturing technology centre (AMTC) in Turkey. Although ownership of the IP rights resulting from the AMTC's work depends on the agreement between the parties, certain general rules on patent ownership must be taken into account. Full text

09 Dec 2015
Intepreting the application of the European Patent Convention in Turkey

The European Patent Convention (EPC) is part of Turkish domestic law and, as an international agreement, it cannot be declared unconstitutional. However, in some cases the IP courts interpret the EPC in a way that renders it ineffective. Full text

04 Nov 2015
Court of Appeals evaluates likelihood of confusion for descriptive trademarks

The Assembly of Civil Chambers of the Court of Appeals recently ruled that trademarks containing identical descriptive phrases give rise to a likelihood of confusion. This approach grants exclusive rights over descriptive and generic phrases found in trademarks which could legitimise unfair competition. Full text

Carpmaels & Ransford LLP

UK More reports

22 Jul 2015
English courts scrutinise claimed numerical ranges

The Court of Appeal has ruled in favour of ConvaTec in the latest chapter in a dispute over silverised wound dressings, holding that Smith & Nephew's process fell within the claimed numerical range, despite an attempted work around to avoid the explicit numerical limits. Full text

22 Apr 2015
SPCs for biologics – guidance on product definitions, scope and validity from EFTA Court

The Court of Justice of the European Free Trade Association States has provided some much-needed guidance regarding the scope and validity of SPCs for biologics, but the language used may concern innovators. It remains to be seen whether the European Court of Justice will agree with this approach. Full text

15 Apr 2015
An introduction to clarity in EPO oppositions

The European Patent Office Enlarged Board of Appeal recently handed down a decision on the extent to which amendments made during opposition proceedings can be examined for clarity, following a referral from a lower board. Full text

Baker Donelson

USA More reports

03 Feb 2016
The trademarking of politics

The US primary season leading up to the 2016 presidential election is well underway. Political candidates and their supporters have been quietly filing trademark applications with an eye on commercial opportunities. However, as several applicants have been reminded, US trademarks that invoke the name of a living individual cannot be registered without that individual’s written consent. Full text

27 Jan 2016
Copyright Office requests public comments on safe harbour

The Digital Millennium Copyright Act 1998 provides a system for copyright owners and online entities to address online copyright infringements. However, recent research indicates a doubling of infringing material accessed via the Internet from 2010 to 2012. As a result, the US Copyright Office is now seeking information on, among other things, the impact and effectiveness of the Digital Millennium Copyright Act's safe harbour provisions. Full text

20 Jan 2016
Copyright royalties for streaming music to increase

The Copyright Royalty Board has ordered changes in the rates that digital streaming services must pay in royalties in 2016. Future rate changes will be based on changes in the consumer price index. As a result, subscribers to music streaming services can expect to see a slight increase in subscription costs, and non-subscribers will see an increase in streamed advertising. Full text

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Issue 76