Market Insight

New 27 SEPTEMBER 2023

TIPO’s new pilot programme allows certain applicants to swiftly secure protection for their design patents, facilitates rapid responses to counterfeit designs and assists award winners and start-ups to obtain patent rights.

Authors:
Monica Wang and Betty Chou

20 SEPTEMBER 2023

Taiwan’s IP office has released a report analysing the number of green trademark applications filed in the past 10 years. It also reveals that the majority of green-mark strategies are based on energy saving, pollution control and energy products.

Authors:
Yulan Kuo and Nancy Wu

02 AUGUST 2023

A court ruling has confirmed that the criteria for fictitious novelty follows the ‘expanded novelty’ model and proves the court’s ability to understand legal issues from an international perspective. Parties involved in related disputes should carefully analyse their cases to win a favourable decision on different legal grounds.

Authors:
Jane Wang and Chi-Ying Lee

20 SEPTEMBER 2023

While new SAMR measures now provide a clear framework for handling corporate name disputes and specify some punitive measures, they only address conflicts between corporate names – not increasingly prevalent disputes between these and prior trademarks.

Authors:
Zhigang Zhu and Paul Ranjard

13 SEPTEMBER 2023

The plaintiff in a trademark infringement claim was found to have weaponised the suit to disrupt its rival’s business operations. The decision shows that the courts are aiming to draw clearer distinctions between rights holders that legitimately believe that their marks are being infringed and those that use their rights in bad faith.

Authors:
Paul Ranjard, Nan Jiang and Huimin Qin

30 AUGUST 2023

The Supreme People’s Court has agreed to hear more retrial cases, which is good news for trademark owners. Until now, the vast majority of litigation in this area was initiated at the basic level; the Supreme People’s Court was out of reach for most infringement cases.

Authors:
Zhigang Zhu, Paul Ranjard and Huang Hui

06 SEPTEMBER 2023

In a first-of-its-kind judgment, the Delhi High Court has refused to grant an interim injunction against the defendants, stating that their process did not infringe the plaintiff’s patent that had constituted a ‘product-by-process’ claim. The patent community is hoping for a more detailed order after the trial, as this will provide much-needed clarity on the scope of product-by-process claims.

Authors:
Himani Pandey and Shukadev Khuraijam

23 AUGUST 2023

There is a distinct lack of global harmonisation when it comes to the regulation of posthumous personality rights, which are primarily governed by case law across different jurisdictions. Against this backdrop, it is crucial that India considers introducing clear legislation to protect not only personality but also privacy rights as the value and exploitation of celebrity continues to grow.

Authors:
Shrabani Rout

16 AUGUST 2023

With incorrect information newly exposed, PepsiCo warns against a casual approach towards procedural compliance as this can lead to revocation of registration. The plant variety protection case emphasises how crucial it is to pay close attention to all requirements when applying for IP rights.

Authors:
Shukadev Khuraijam and Himani Pandey

16 AUGUST 2023

RIS poses a financial threat to equipment vendors whose technology will become obsolete – these firms should thus assess the strength of their intellectual property as an urgent priority to position themselves for the market ramp-up. On the other hand, RIS stands to benefit many, including telecom service providers, consumers, vendors with enabling technology and SEP owners.

Authors:
Bruce Rubinger and Katerina Smiljkovikj

02 AUGUST 2023

RIS has received attention from a diverse number of players working towards creating SEP portfolios. As the technology progresses and becomes more sophisticated and with the standardisation process underway, an acceleration of patent filings in the coming years is very likely.

Authors:
Bruce Rubinger and Katerina Smiljkovikj

26 JULY 2023

RIS is a cutting-edge technology that aims to bridge the gap between 5G and 6G. As ETSI and 3GPP progress in efforts towards standardisation  there are key IP management lessons for those hoping to build an effective portfolio strategy in this large and complex area.

Authors:
Bruce Rubinger and Katerina Smiljkovikj

05 JULY 2023

The majority of filings so far have been in Germany, establishing Munich as a key destination. The number of international disputes is also expected to surge as English is introduced as a language option for proceedings.

Authors:
Daniel Skiebe

08 MARCH 2023

In what can be seen as a relief for patent holders, the new disproportionality exception for the enforcement of patent injunctions has left the German district courts' strict approach to injunctions unchanged.

Authors:
Daniel Skiebe

22 FEBRUARY 2023

Patent litigators in Germany are feeling the effects of Phoenix Contact. While it was widely anticipated that German courts might alter their jurisprudence as a result, Düsseldorf and Munich’s regional courts are taking noticeably diverging approaches now that the first decisions on the matter have been published.

Authors:
Daniel Skiebe

14 JUNE 2023

Companies selling domestically in Scandinavian countries have enjoyed a low patent infringement risk due to the relatively limited number of European patents validated in Denmark, Sweden and Norway. This looks set to change with the launch of the UPC (including Denmark and Sweden as members), which will likely result in a higher number of active patents in the region.

Authors:
Anders Fredriksson

17 MAY 2023

Sweden and Denmark continue to hold their own in terms of patent filings against countries with significantly larger populations, indicating that regardless of size, countries – and their innovators – thrive when their governments take an active stance on supporting education and innovation.

Authors:
Tomas Wässingbo

22 FEBRUARY 2023

In order to obtain the broadest possible grant, it is a smart move to select a patent office that is a member of one of the larger PPH schemes and also pursues partnerships and bilateral agreements with non-member nations.

Authors:
Camilla Rendal Nielsen

14 JUNE 2023

A fresh case analysis sheds light on the need for European patent owners to publish the Turkish translation of the claims in order to claim compensation for damages suffered over a certain time period, without waiting for the EPO to grant or reject the application.

Authors:
Selin Sinem Erciyas and Aysu Eryaşar

29 MARCH 2023

While Turkey is not a UPC member state, the UPC’s lack of case law means that it will rely on EPO jurisprudence – a crucial element of Turkish judicial proceedings. It is thus highly likely that UPC proceedings and EPO evaluations will have a big impact on one another.

Authors:
Selin Sinem Erciyas, Aysel Korkmaz Yatkın, Aysu Eryaşar and Zeynep Çağla Üstün

25 JANUARY 2023

The heavily debated concept of plausibility is quickly gaining prominence in invalidity proceedings. While it remains to be seen how the EPO will cement the concept into case law, several key existing cases present a number of conflicting arguments on the issue.

Authors:
Aysel Korkmaz Yatkın, Selin Sinem Erciyas and Aysu Eryaşar

14 JUNE 2023

In theory, parties can seek relief for trade secret misappropriation before it even happens. When faced with possible misappropriation, trade secret owners should carefully review applicable NDAs and consider pleading both misappropriation and threatened misappropriation, and building a substantial, detailed evidence record.

Authors:
Sharon Roberg-Perez

12 APRIL 2023

The ongoing Illumina case highlights three valuable lessons for trade secret owners in the United States: monitor former employees’ patent filings, be cognisant of the applicable statute of limitations, and carefully plead any facts that are available to support its tolling.

Authors:
Sharon Roberg-Perez

31 MAY 2023

The Court of Turin has issued a decision involving the Italian cheese Grana Padano, deeming the term ‘grana’ to be generic. This ruling directly contrasts an earlier Court of Venice decision on the same issue, indicating that there is a lack of harmonisation surrounding applications of protected designation of origins.

Authors:
Giorgio Gazzola

26 APRIL 2023

Italy’s IP office has launched new proceedings for determining nullity and revocation with the aim of providing a streamlined and significantly cheaper alternative to legal proceedings.

Authors:
Giorgio Gazzola

19 APRIL 2023

After a rocky start to Italy’s relationship with the UPC, the suggestion that the London division be moved to Milan has sparked strong opposition from Italian IP experts and members of parliament due to disagreements over the division’s competence.

Authors:
Antonio Pizzoli

26 APRIL 2023

A company’s brand can be one of its most valuable intangible assets and neglecting it in pursuit of scale can be extremely damaging. In this regard, business owners can learn important lessons from Starbucks – one of the great business success stories in the world.

Authors:
Previn Sudhir

08 MARCH 2023

Value can be hidden in the many years of effort, millions of dollars of investment capital and fine-tuned market strategies, which all contribute to driving long-term business success and scaling up a company’s overall worth. It is thus crucial to find a way to reflect this on a company’s balance sheet.

Authors:
Aden Ong

15 FEBRUARY 2023

SPACs can learn much from Coach Saban’s so-called ‘seven-second process’, reshaping it into a unique method to keep investors excited about target businesses and their intangible assets during the dreaded transfer portal period.

Authors:
Kevin Mays

08 FEBRUARY 2023

In an exclusive interview with Tim Pohlmann, Mang Zhu offers some insights into how she built one of the world’s largest 5G portfolios and, in the process, married key R&D goals with critical standards development work.

Authors:
Tim Pohlmann

25 JANUARY 2023

Power in the OEM space is shifting, while 2023 promises even greater numbers of standards implemented in vehicles. IP professionals, as well as directors in standards development, should bear several key considerations in mind as we settle into the new year.

Authors:
Tim Pohlmann

18 JANUARY 2023

SEP/FRAND discussions dominated conferences, webinars and symposiums over 2022. This two-part review examines the key takeaways from these conversations, with a special focus on industries where standards subject to SEPs are implemented.

Authors:
Tim Pohlmann

13 APRIL 2022

In Belgium, no specific provisions exist regarding the admissibility of extrajudicial admissions in court proceedings relating to patents. However, case law shows that the courts will take extrajudicial admissions into account and that it can be difficult for parties to take back such statements.

Authors:
Johan Aerts

06 APRIL 2022

Belgium has a complex institutional system in which the use of official languages is sometimes at the heart of public debate. While the Laws on the Use of Languages in Administrative Matters still play an important role in the lives of Belgians, what are the legal consequences of these laws for Belgian patent applications?

Authors:
Stéphane Korvers

30 MARCH 2022

Civil proceedings can be a formidable option for patent owners to uphold their rights. A range of options, all of which have the goal of matching the damages and the compensation for a rights holder with an infringed patent, means that there is plenty to consider when developing an IP strategy for Belgium.

Authors:
Philippe Gratessolle

16 MARCH 2022

A Supreme Court judgment opens the door to employee claims for additional remuneration against entrepreneurs who exploit their inventions – irrespective of whether a patent was granted. However, it also contradicts previous case law, making the situation less clear than ever

Authors:
Marcin Ziarkowski

12 JANUARY 2022

A fresh ruling involving the systematic infringement of an EU trademark appears to have ended the debate on continuous infringement in Poland – and could also have big implications for patent holders.

Authors:
Marcin Ziarkowski

27 OCTOBER 2021

Remote hearings have become a mainstay in Polish litigation. A rundown of the current rules on IP litigation and how cases are being heard in the common courts, administrative courts, Polish Patent Office and at the Supreme Court provides an invaluable snapshot of the current system.

Authors:
Jakub Zabraniak