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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


IP analytics More reports

11 Nov 2015
Herding catfish? Time to cast a wider net over the aquaculture market

Aquaculture – the farming of fish and other aquatic species – has great potential and is now the fastest-growing sector of the world food economy. Considerable time, ingenuity and investment have been devoted to this sector; the yield includes not just fish, but also technological advances and resulting IP rights. Full text

28 Oct 2015
FinTech patents: where finance meets technology

There is substantial interest in financial technology, at a time when the financial services sector is generally experiencing considerable churn. Several start-ups and newer companies are challenging the incumbents, using digital platforms to deliver products and services more efficiently and employing better business models. Full text

14 Oct 2015
Strange brew: beer patents under the microscope

The annual Munich Oktoberfest is not just the world’s best-known beer festival; it is also a magnet for economists. Curiously, it has attracted little attention in terms of the impact of intellectual property. Thus it is plainly time to examine the beer industry through the eyes of patent analytics. Full text


IP finance More reports

18 Nov 2015
Manage your intellectual property – but account for it too

It is imperative for companies operating in IP-rich industries to pay close attention not just to how they manage their intellectual property, but also to how they account for it and communicate their approach. A business-risk judgement must be ever present whenever the accountants or tax advisers show up with a new idea. Full text

16 Sep 2015
IP investing on the road from zero to one: part two

Both the pharmaceutical and film industries have always been active in collaborative R&D, partly due to the immense investment required to get a product to market and partly as the result of the realities of innovation and inventors. Today this model of innovation is becoming widespread across almost every industry – and 'not invented here' may be a great business strategy going forward. Full text

09 Sep 2015
IP investing on the road from zero to one: part one

PayPal founder and venture capitalist Peter Thiel identifies the key driver in value creation as the opportunity to create a monopoly, essentially what Warren Buffet would call a “defensive moat”. The alternative to such a monopoly is unfettered competition – which inevitably leads to diminishing profit margins. Full text

Griffith Hack

IP valuations More reports

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

21 Oct 2015
The income approach to tech valuations

When valuing intellectual property, the income approach estimates the present value of forecast IP earnings, accounting for the asset’s development and operating risks (which are difficult to assess for early-stage technology). This article focuses on the application of the income approach to technology-related intellectual property. Full text


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

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

26 Aug 2015
Federal Court of Appeal reinterprets product specificity requirements

A recent Federal Court of Appeal ruling represents a key victory for innovators. The decision restores the principle (and prior practice) that allows the listing of patents claiming ingredients not specifically named in the patent, provided that a match exists between the claims as construed and the approved product. Full text

12 Aug 2015
Federal Court introduces new measures to streamline IP litigation

The Federal Court has issued a practice notice providing new measures that seek to improve case management of complex litigation, including IP litigation. The measures – designed to achieve increased proportionality in court proceedings – streamline certain aspects of IP litigation and should result in both time and cost savings for litigants. Full text

Wilkinson & Grist

China More reports

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

29 Jul 2015
New Advertising Law provides new tool to protect brands

The new Advertising Law has redefined the boundaries of advertising in light of changing market realities. It should give brand owners another weapon in the battle to curb infringing activities and synergise enforcement efforts. Full text

06 May 2015
Court recognises Heinz Chinese trademark as well known

Pre-emptive applications by trademark squatters in classes of goods and services in which rights holders have no prior registrations have always been a serious issue for international brand owners. Thus, it is often necessary for them to rely on well-known trademark claims in oppositions against such pre-emptive applications. This was the case in a recent decision on the HEINZ Chinese trademark. 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


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

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

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

Wilkinson & Grist

Hong Kong More reports

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

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

Jacobacci & Partners spa

Italy More reports

07 Oct 2015
Reformulating patent claims: a re-introduction to new Article 79

In early 2015 the Court of Milan issued several decisions concerning the application of Article 79 of the Industrial Property Code, which was amended in 2010. In some of these cases the court addressed whether and under what conditions a patent holder may reformulate a set of claims contained in a granted patent. Full text

22 Jul 2015
Is a trademark consisting of two complex Chinese characters inherently distinctive?

A recent Italian Patent and Trademark Office decision to register a trademark consisting of two complex Chinese characters was based on the distinctiveness of two Chinese characters. However, this distinctiveness is questionable. Full text

01 Jul 2015
Misappropriation of trade secrets consisting of technical information

In a recent decision the Court of Turin held that when technical information meets all of the requirements for trade secret protection and reverse engineering is difficult, the burden of proof rests with the defendant to show that the technical information was acquired independently. Full text


Netherlands More reports Archive

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

02 Sep 2015
Impartial to partial priorities: questions referred to EPO Enlarged Board of Appeal

The European Patent Convention hides a notorious concept known as ‘the inescapable trap’: if a granted claim involves added matter, there is no way to restore it except by shifting the scope of the patent – which in turn invalidates the patent. Recent European Patent Office practice suggests that there might be another way for patentees to shoot themselves in the foot: through ‘poisonous priority’. Full text

17 Jun 2015
SKY trumps SKYPE – but not out of the blue

The General Court of the European Union recently confirmed that the trademarks SKY and SKYPE were confusingly similar. The decision is a setback for the popular Skype service, which allows users to call and chat over the Internet for free. Full text

Federis & Associates


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

DLA Piper Wiater spk


05 Aug 2015
Triple remuneration for infringement of economic copyright declared unconstitutional

Previously, an author whose economic rights had been infringed could claim not only compensation, but also damages in excess of the amount of the actual damage. However, the Constitutional Tribunal recently found the provision of the Copyright Act to this effect to be unconstitutional. Full text

08 Apr 2015
Copyright reform: government adopts draft amendment

The government has adopted an amendment to the Copyright Act prepared by the Ministry of Culture and National Heritage. The major changes relate to the use of orphan works and remuneration for authors from library loans. Full text

Gorodissky & Partners

Russia More reports

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

08 Jul 2015
GASTARBEITER mark expands its presence in Russia

The German word 'Gastarbeiter' ('guestworker') has been part of the Russian language for more than a decade, as guestworkers have come to the country in large numbers to take up job vacancies requiring moderate skills. The Patent Office recently dealt with an application to register the GASTARBEITER trademark in Classes 9 and 25, raising the issue of whether such application was in the public interest. Full text

27 May 2015
Obtaining information on patent applications

The ability to retrieve accurate, precise and comprehensive information on patent applications is crucial. The Russian Patent and Trademark Office (Rospatent) both publishes original patent documents and maintains electronic databases with a search option. However, while it has made good progress in providing official patent publications, Rospatent has not yet optimised the information that is provided for search purposes. Full text

Mannheimer Swartling

Sweden More reports

24 Jun 2015
Market Court and Patent Appeals Court to cease operations in 2016

On September 1 2016 a new Swedish judicial system will enter into force for cases involving IP law. As a consequence of the changes, the Market Court and the Patent Appeals Court will cease to exist. The reform also means that the adjudication of disputes, which at present takes place across the country, will in future be concentrated in Stockholm. Full text

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

Formosa Transnational

Taiwan More reports

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

14 Oct 2015
TIPO guidelines on examining trademark contrary to public order or good morals

The Taiwan Intellectual Property Office (TIPO) has recently rejected several trademark registration applications on the grounds that the trademarks were contrary to public order or good morals. In order to clarify the definition and provide a standard for applicants to follow, TIPO has now published the Guidelines for Examining Trademarks Contrary to Public Order or Good Morals. Full text

26 Aug 2015
Recent changes in Taiwanese patent practice

In order to reflect industry needs and to resolve problems with the existing patent system, the Taiwan Intellectual Property Office is planning a series of changes for patent regulation and the examination guidelines. Recent changes include the new regulation on delayed substantive examination. Full text

Gün + Partners

Turkey More reports

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

21 Oct 2015
Supreme Court overturns IP court decision declaring second medical use patent null and void

The Supreme Court recently issued its first decision on the patentability of second medical use claims in Turkey, marking a milestone for patent holders. The decision has removed the ambiguity surrounding the legitimacy of second medical use patents following a 2014 first-instance decision and upheld the legitimacy of such patents under Turkish patent law. Full text

15 Jul 2015
Square pegs in round holes: invalidation actions against unexamined patents

The Turkish patent regime has a pre-grant opposition system and recognises two types of patent: unexamined patents and examined patents. Unexamined patents can also be converted into examined patents if a request for examination is made during the unexamined patent's seven-year protection period. 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


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Issue 74