Thomson Reuters IP & Science 2015
Thompson Reuters

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

Fraserburgh

IP finance More reports

11 Mar 2015
Super-connectors and the future of cross-functional intellectual property

Some of the most interesting intellectual property in the world underpins the search for 'super-connectors' in social networks, biochemistry, neuroscience, epidemiology, ecology, financial markets and national security. They represent nodes or crossroads of connectivity and act as processing centres where multiple inputs are aggregated and integrated. Full text

04 Mar 2015
Archimedes's law: IP leverage for growth companies

Start-up or growth companies are incredible generators of intellectual property. The role that intellectual property plays in the journey can be critical for maximising value creation. In these circumstances, intellectual property is a lever to be used judiciously to move value. Full text

18 Feb 2015
Picassos in the cemetery

Start-ups are often overlooked in terms of the IP value that they hold – in part because of the nature of the funding process for new ventures, which is heavily influenced by investor sentiment and indirectly driven by macroeconomics. However, the failure rate of start-ups makes looking for value in the wreckage of a start-up business a worthwhile endeavour for investors. Full text

EverEdgeIP

IP transactions More reports

03 Sep 2014
The Moneyball phenomenon – new metrics for R&D planning

How do most businesses decide where to focus their R&D? In many cases, R&D – especially the 'R' – has a strong aspect of 'revelation' to it. However, directing R&D (and thus IP creation) need not be revelatory or reactionary. The secret is to look at the metrics of innovation in a different way. Full text

25 Jun 2014
Hard and soft rights combine to solve the age-old question: function or form?

Following objections to its latest technology, Google Glass, Google announced that it had formed a strategic partnership with Luxottica “to design, develop and distribute a new breed of eyewear for Glass” to be released in 2015. Intellectual property can have a positive combinatorial effect for a product – particularly when blending somewhat diverse sets of rights. What does this mean for a product and what this can mean for the parties involved? Full text

04 Jun 2014
Knowing what you buy: the importance of IP audits in the transaction process

Transactional due diligence often lacks a comprehensive audit of the business’s intellectual property. Given that intangible assets now constitute 80% of the assets of most businesses and that intellectual property is itself considered a major and critical asset class, its absence should be deemed conspicuous during any major business transaction due diligence. Full text

Drakopoulos Law Firm

Albania More reports

08 Oct 2014
Competence to hear IP-related disputes

The law provides that administrative courts are competent to decide on disputes arising from individual administrative acts issued by a public body in the course of its administrative activity. However, an issue arises with respect to IP-related disputes between private entities in which the Albanian Patents and Trademarks Office is involved as a defendant or a third party. Full text

09 Jul 2014
Recent amendments to Industrial Property Law

Parliament has adopted certain amendments and procedural changes to the Industrial Property Law, with the aim of harmonising Albanian law with EU legislation and reflecting Albania's accession to the European Patent Convention. The IP rights affected by the amendments are industrial designs, patents and trademarks. Full text

07 May 2014
Non-use cancellation actions: ambiguities regarding burden of proof

Albanian IP law requires that a trademark be used in order to protect its validity. If the mark owner does not use its trademark for the goods or services for which it was registered for an uninterrupted period of five years, the trademark is subject to cancellation. Recent case law reflects the complexity of non-use cancellation actions, particularly with regard to the burden of proof. Full text

Watermark

Australia More reports

11 Mar 2015
Ongoing summer of sport affected by inventions

So far in 2015 sports fans have had plenty to watch: the Asian Football Confederation Asian Cup football tournament reached its climax, the Cricket World Cup is underway in Australia and New Zealand, and the Melbourne Formula One Grand Prix takes place shortly. The intensive sports coverage of these events around the world highlights the need for sporting inventions. Full text

04 Mar 2015
Teen sensations 5 Seconds of Summer bring unwanted notoriety to ATMO

The Australian Trademark Office's treatment of a trademark application filed by boy band 5 Seconds of Summer demonstrates that it does not matter how famous a trademark applicant is (or thinks it is) – the rules of trademark registration are the same for everybody. Full text

27 Aug 2014
Personal property securities and intellectual asset management: thinking outside the box

The Personal Property Securities Act 2009 was introduced to reduce the uncertainties in creating, registering and searching for security interests held over personal property in Australia, and to an extent it has achieved this purpose. However, the act can have surprising consequences for rights holders and IP financiers. Full text

Gowling Lafleur Henderson LLP

Canada More reports Archive

25 Mar 2015
Canadian trademark law: top cases of 2014

The year 2014 will be remembered as the year when Canada rewrote its trademark laws. However, 2014 was also an exceptionally busy year for trademark cases in Canada. While no single case stood out above the rest, there were a number of interesting cases of which both legal professionals and brand owners should take note. Full text

18 Mar 2015
Canadian patent law: 2014 year in review

The year 2014 saw a number of noteworthy Canadian patent law decisions and developments. For example, in Celebrex the Court of Appeal addressed the 'promise of the patent' doctrine; and a number of changes to the Patent Act and the Industrial Design Act were announced. Full text

11 Feb 2015
Customs recordal now available in Canada to combat counterfeit goods

In January 2015 portions of the Combating Counterfeit Products Act came into force, enabling rights holders to record their copyrights and registered trademark rights with the Canada Border Services Agency (CBSA) in an effort to stop counterfeit goods before they enter the Canadian market. The CBSA has adopted a new border regime to assist rights holders in enforcing the new statutory prohibition against the import of counterfeit goods. Full text

Wilkinson & Grist

China More reports

25 Mar 2015
Supreme People's Court seeks views on pre-action preservation orders

The Supreme People's Court has issued a new draft interpretation outlining the applicable laws and practice when applying for pre-action preservation orders in proceedings involving IP disputes. The draft interpretation deals with various issues, including who is entitled to apply for a pre-action preservation order and which court has jurisdiction to grant the order. Full text

17 Dec 2014
CKH finally wins hard-fought battle to obtain copyright recognition

Rights holders in China often have a tough time when their logos are pre-emptively registered by others in classes of goods or services where they do not have a registration, and thus must rely on copyright and bad faith on the part of the applicant as grounds for opposition. A recent Beijing Higher People’s Court decision marks a breakthrough in such cases. Full text

26 Nov 2014
China establishes first specialist IP courts

In August 2014 the Standing Committee of the National People's Congress announced the establishment of the first specialised IP courts in Beijing, Shanghai and Guangzhou. The Beijing IP Court recently commenced operations, and the IP courts in Shanghai and Guangzhou are expected to begin work shortly. Full text

Michael Kyprianou & Co LLC

Cyprus More reports

18 Mar 2015
Converting a Community trademark

A Community trademark is a trademark which has been registered with the Office for Harmonisation in the Internal Market in order to enjoy protection across the whole of the European Union. However, in some situations it may be beneficial for the mark owner to apply to convert its Community trademark into a national trademark. Full text

25 Sep 2013
Halloumi versus hellim: more than just a trademark battle?

The European Court of Justice recently dismissed a challenge to the registration of the mark HELLIM for cheese, approving it for registration. The registration was challenged by the owner of the collective Community trademark HALLOUMI based on the likelihood of confusion. Full text

19 Dec 2012
New IP tax regime takes effect

Amendments to the Income Tax Law have turned Cyprus into one of the best jurisdictions for royalty and holding structures. The new regime provides attractive opportunities for structuring the exploitation of IP assets through Cyprus, in particular through the use of Cyprus-resident IP owners. Full text

Chas Hude A/S

Denmark

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

17 Dec 2014
More than just a catchy beer slogan

With the German Trademark Register containing more than 12,000 national trademarks registered for the beer category, it is getting harder to come up with original marks. The Federal Patent Court recently ruled on whether a Bavarian brewery could register the sign ORIGIN OF BEER. The decision forms part of the conflicting case law on so-called 'slogan' marks. Full text

13 Aug 2014
EPO introduces new acceleration scheme

Following consultation with users, the European Patent Office (EPO) has published a new early certainty from search scheme. The new scheme comes in addition to the 2010 rules for dealing with requests filed under the programme for accelerated prosecution of European patent applications. The EPO seems to be aiming for the world record in processing speed – but will the new scheme work? Full text

23 Jul 2014
Aspects of preliminary injunction proceedings in Germany

Preliminary injunctions are an important remedy in the German legal system. While they have frequently been used in clear-cut unfair competition cases, the courts have also started to make this remedy readily available to patent and even utility model owners. In such cases, the main problem is usually proving the validity of the patent or utility model with sufficient certainty. Full text

Drakopoulos Law Firm

Greece

01 Oct 2014
Claiming damages for trademark infringement

In 2012 the new Trademark Law incorporated the EU Enforcement Directive into Greek law, significantly reforming the country’s trademark regime. The long-awaited implementation had been delayed, since the initial plan was to incorporate the relevant provisions into the existing legal framework. Full text

25 Jun 2014
Swimming among counterfeits: anti-counterfeiting solutions in the Greek islands

Counterfeiting in the Greek islands increases noticeably in summer – partly in terms of volume and sales points, but primarily in terms of visibility. Brand owners, managers and their staff witness the problem for themselves when they are trying to relax on holiday, given the numerous shops selling counterfeit goods on the islands. Full text

Wilkinson & Grist

Hong Kong More reports

03 Sep 2014
Bill proposes to update copyright regime

The Hong Kong government recently introduced the Copyright (Amendment) Bill 2014 into the Legislative Council for its first and second readings. The bill combines new proposals formulated following earlier public consultation on the treatment of parody and legislative proposals under the former Copyright Bill 2011. Full text

30 Apr 2014
Application for 'Cool Fresh' in Class 3 refused on absolute grounds

The trademarks registrar has refused an application by Unilever NV to register 'Cool Fresh' as a trademark in respect of goods in Class 3 including “soaps; perfumery; shaving foam; preparations for the bath and shower etc". The applied-for mark failed to distinguish the trade origin of the goods. Full text

05 Feb 2014
Registrability requirements of movement marks and holograms clarified

A movement mark or hologram is registrable as a trademark in Hong Kong provided that it is a sign that is capable of distinguishing the goods or services of one undertaking from those of others, and can be represented graphically. The Hong Kong Trademarks Registry recently issued a note presenting its examination practice and clarifying the filing requirements for this special category of mark. Full text

Lakshmikumaran & Sridharan

India More reports Archive

17 Dec 2014
Court resolves Pudin Hara advertising dispute

Consumers may have noticed several Indian advertisements relating to antacids and other medicines that cure heartburn and gastric problems. Recently the Delhi High Court decided a dispute between multinational Reckitt Benckiser and Dabur India Ltd. The dispute involved the use of similar themes in ads for over-the-counter medicines Gaviscon and Pudin Hara. Full text

24 Sep 2014
Novartis continues its successful injunction spree

Following a suit for permanent injunction instituted by Novartis AG against Ranbaxy Laboratories Ltd for infringement of the vildagliptin patent, the Delhi High Court has restrained Ranbaxy from manufacturing, selling or offering for sale by any means, directly or indirectly, compounds or formulations containing vildagliptin either alone or in combination with other compounds. Full text

27 Aug 2014
Delhi High Court rules on Vringo-ZTE patent infringement litigation

A single judge of the Delhi High Court recently vacated an earlier ex parte interim injunction restraining Chinese telecoms major ZTE Corporation and its Indian subsidiaries from infringing Indian Patent 200572, owned by Vringo Infrastructure Inc. The patent in question was granted for an invention titled “A method and a device for making a handover decision in a mobile communication system”. Full text

Jacobacci & Partners spa

Italy More reports

11 Mar 2015
EU law concerning SPCs and interpretation of the SPC Regulation

The European Court of Justice has clarified whether certain active ingredients in medicinal products are eligible for supplementary protection certificate (SPC) protection. The court ruled that the relevant EU legislation contains no prohibition against obtaining an SPC for an active ingredient which is covered by a basic patent and which is covalently bound to another active ingredient in a medicinal product. Full text

04 Feb 2015
Interpretation of reciprocity of IP rights protection in Italy and San Marino

A recent official interpretation of the Convention of Friendship and Good Neighbourhood 1939 between Italy and San Marino concerning IP protection in the two states has concluded, among other things, that European patents should be validated separately in each country. Full text

17 Dec 2014
Patent opposition procedure in Italy – coming soon?

In a recent communication the Italian Patent and Trademark Office agreed to accept and consider third-party observations during the pendency of a patent application or during the process for obtaining supplementary protection certificates for medicinal products. The decision may augur the introduction of a true opposition procedure for patents in Italy. Full text

NLO

Netherlands More reports Archive

28 Jan 2015
Managing directors, beware personal liability for IP rights infringement

If a managing director is found liable for damage, the compensation that he or she is required to pay from private funds can mount up. However, under Dutch law it is rare for a managing director to be held personally responsible for an IP rights infringement. For this to happen, a case of personal liability must be made against him or her. Full text

21 Jan 2015
Defending your stripes

Benelux companies using stripes on their vehicles must consider the right of the Netherlands, which safeguards its copyright and trademark rights in its territory in the stripes used on government vehicles. However, the state has not always succeeded in defending its stripes, as demonstrated by its case against Darkness Reigns Holding. Full text

29 Oct 2014
The value of a sound trademark

The world’s most valuable trademarks are APPLE ($98 billion), GOOGLE ($93 billion) and COCA-COLA ($79 billion). Not only does the standard word mark or logo of these brands represent great value to the balance sheet of the business, but certain sound trademarks may achieve even greater recognition and represent even greater value than the associated word mark or logo. Full text

Hechanova & Co

Philippines

16 Jul 2014
Non-compete clauses in licensing agreements

Most licensing agreements – particularly those involving the sharing of trade secrets, know-how, confidential information and other IP rights – contain post-termination non-compete clauses to prevent injury to the licensor. The Documentation Information and Technology Transfer Bureau of the IP Office of the Philippines has held that such clauses can apply for only one year. Full text

15 Jan 2014
Court of Appeals says no to field trials of genetically modified aubergines

In a September 2013 decision which has alarmed the joint foreign chambers of commerce, universities and scientists in the Philippines, the Court of Appeals issued a permanent injunction against the conduct of field trials for genetically engineered aubergines on biosafety grounds. Full text

Drakopoulos Law Firm

Romania More reports

12 Nov 2014
Use it or lose it: trademark revocation for non-use

Revocation of a trademark on grounds of non-use is possible where the trademark has ceased to function as an indication of origin for a product or service. The right attached to a trademark and granted to the mark owner thus subsists and survives only to the extent that the trademark is actually used within a reasonable period following registration. Full text

04 Jun 2014
Combating counterfeiting in Romania

In recent years, the global trade in counterfeit goods has boomed, particularly in transit countries where such goods enter the EU market, such as Romania. Identifying the real origin of counterfeit goods is a complex issue for Romanian Customs, since it requires a high level of vigilance and constant safeguarding of the entire Romanian territory from potential counterfeit products. Full text

09 Apr 2014
Impact of code changes on IP disputes

During the past three years Romanian legislation has undergone significant changes, which has had a major effect on IP rights. Considering that entirely new codes are being enacted and are entering into force, the changes are of paramount importance since they govern a wide array of legal issues governing IP rights. Full text

Gorodissky & Partners

Russia More reports

18 Feb 2015
Tackling parallel imports

A Russian court recently awarded the highest-ever compensation for infringement caused by parallel imports. It is hoped that the size of the compensation award will serve as a powerful deterrent to would-be parallel importers. Meanwhile, a working committee set up by the Eurasian Economic Union to examine the issue of parallel imports has so far failed to reach any conclusions. Full text

04 Feb 2015
What's in a name? The courts decide

The IP Court has ordered the cancellation of a figurative trademark registration which used the name of Yury Gagarin, the first cosmonaut. However, the court reached the opposite conclusion in a similar case involving the name of a well-known pilot from the 1930s. Full text

10 Dec 2014
Changes herald a happy and prosperous new year for rights holders

This has been a memorable year in the IP field as it witnessed significant reform of the Russian IP legislation. Changes of this calibre do not happen often. The 2014 revision amended hundreds of provisions in order to make the law more business friendly, including streamlining IP deals and simplifying design law. Full text

Mannheimer Swartling

Sweden More reports

08 Oct 2014
Registering geographical terms as trademarks

The EU Council's common position on trademark law reform envisions closer cooperation between the Office for Harmonisation in the Internal Market and national offices, which should achieve closer harmonisation in the application of trademark law. The registrability of geographical terms as trademarks is one area in which Sweden's position differs from that of the European Union. Full text

05 Mar 2014
District court applies two-decade-old EPO decision

Nearly two decades have passed since the European Patent Office Enlarged Board of Appeal handed down Decision G3/92, dealing with a European patent application made by an unlawful applicant. The decision was recently applied by a Swedish district court, which declared the plaintiff to be entitled to an invention covered by a Patent Cooperation Treaty application that had irrevocably lapsed several years earlier. Full text

04 Dec 2013
Court addresses copyright assignment in online advertising

Contractual clauses on copyright assignment have been construed narrowly by the Swedish courts using the principle of specification, according to which the assignor of the copyright is presumed to retain any rights not clearly specified in the assignment clause. A Svea Court of Appeal decision addressed a clause on copyright assignment in the general terms and conditions applicable when advertising on a Swedish online marketplace. Full text

Formosa Transnational

Taiwan More reports

11 Feb 2015
Check before shaking hands on IP transactions: new antitrust rules

The Legislative Yuan has passed an amendment to the Fair Competition Law, which will take effect once it has been published by the president. As antitrust issues should always be considered in IP transactions, both foreign and domestic players in the Taiwanese market should monitor the progress of the amendment. Full text

21 Jan 2015
From BANANE HERMES to 'Crying CHANEL': is trademark parody allowed?

Creative ideas often involve parody – an act of imitation which criticises or pays homage to an original work – in order to express the creator’s opinions, comments or humour. In Taiwan, the issue of parody mostly arises in copyright cases, in which fair use rules. However, the recently concluded 'Crying CHANEL' trademark dispute is a good example of parody under trademark law. Full text

14 Jan 2015
Protection for well-known marks expanded

Traditionally, the Taiwan Intellectual Property Office and the IP Court have held that there are different degrees of reputation and fame among so-called 'well-known' trademarks and that owners of such marks which seek protection against trademark dilution must show that their marks enjoy a particularly strong reputation and a high degree of fame. However, the Supreme Administrative Court has rejected this view. Full text

Gün + Partners

Turkey More reports

25 Feb 2015
IP court interprets scope of Bolar exemption

A recent IP court decision marks the first interpretation of the Bolar exemption with such a narrow scope and the first time that an application for inclusion on the Social Security Institution reimbursement list has been considered an attempt to actually sell a drug. However, it remains to be seen whether the appeal court will agree with the IP court's reasoning. Full text

28 Jan 2015
Constitutional Court: IP rights to be regulated by law

The draft Patent Law is still pending on Parliament’s agenda, but the Constitutional Court recently handed down a strategic decision which revealed a much more serious issue in relation to the existing Patent Decree-Law. In its decision the Constitutional Court annulled Article 158/II of the Patent Decree-Law on the grounds that the right of property should not be governed by decree-laws. Full text

21 Jan 2015
Changing approach of courts to Bolar exemption

Under the Bolar exemption, regulatory acts such as obtaining marketing authorisation and conducting experiments and tests necessary to obtain marketing authorisations are exempt from the scope of patent rights. Although the IP courts used to limit the scope of the Bolar exemption with the grant of the marketing authorisation, this approach has been altered to extend the scope of the acts to be interpreted under the exemption. Full text

Carpmaels & Ransford LLP

UK More reports

04 Feb 2015
English courts tackle Swiss-type claims and off-label use

The English Patents Court has handed down a judgment providing guidance on the scope and enforceability of 'Swiss-type' second medical use claims. In particular, the judge considered a question pivotal to the perceived value of Swiss-type claims: to what extent can such claims be used to restrict off-label use where other uses of a drug are no longer protected by a patent? Full text

17 Dec 2014
Will the public suffer? Let’s stay!

The recent UK Court of Appeal decision in Adaptive Spectrum and Signal Alignment Inc v British Telecommunications Plc shows that the UK courts are prepared to impose injunctions on big telecoms operators, but that in doing so consideration may well be given to the effect that an injunction will have on the public. Full text

03 Dec 2014
It all depends on the facts

The UK Court of Appeal recently issued a judgment in an application by Lantana Ltd which provides a useful summary of the tests for excluded subject matter in the United Kingdom, as set out in previous cases. However, the judgment does little to clarify what continues to be a rather opaque and fact-specific area of the law. Full text

Kenyon & Kenyon LLP

USA More reports

11 Mar 2015
Suprema, Inc v ITC: Federal Circuit holds en banc hearing

The en banc Federal Circuit has heard oral argument in a case with significant implications for the scope of the authority of the International Trade Commission (ITC) authority over claims of induced patent infringement. The argument suggested that the court could continue to allow the ITC to remedy infringement of method claims based on a theory of induced infringement. Full text

04 Mar 2015
Supreme Court: trademark tacking for determining priority is a question for the jury

The Supreme Court has unanimously sided with the Ninth Circuit in holding that whether an original and a revised trademark are similar enough for tacking in determining priority is a fact-intensive question for juries to answer. The court found that application of the tacking rule relies on an ordinary consumer's understanding of the impression that a mark conveys and falls comfortably within the "ken of the jury". Full text

25 Feb 2015
Federal Circuit issues first-ever ruling in inter partes review appeal

The Federal Circuit recently issued its first-ever ruling in an appeal from an inter partes review. The court emphasised that it lacks jurisdiction to review decisions of the Patent Trial and Appeal Board to institute inter partes reviews even in connection with the appeal of a final decision. Full text

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