AFRICA

Rwanda | Upcoming Renewal Deadline For Trade Mark Registrations
Previously, under the old 1963 Act, Rwandan trade marks were registered indefinitely (i.e. there was no need to renew a trade mark registration).

South Africa
Making A Song And Dance About Copyright In Choreography
Dance as a copyright-protected work came under the international spotlight over the last year in the USA.

South Africa
The Madrid Protocol: More Of A Slow-Burning Plodder Than A Taut Thriller
Back in 2013, we wrote an article about the Madrid Protocol, the treaty that regulates the international trade mark registration system.

Porsche 911…Something A Bit Different Please!
The Porsche 911 is undoubtedly an iconic car. Instant product recognition is, of course, something that most companies strive for.

South Africa
Burundi | Reminder – Tm Renewals Deadline – 29 July 2019
Proprietors of trade marks in Burundi should take note of an upcoming trade mark renewal deadline which may be relevant to their marks in this country.

Burundi
Effective Judicial Procedures For IP Disputes In EGYPT
IPR protection and enforcement have become a constitutional principle.

Egypt
Trademarks Comparative Guide
Trademarks Comparative Guide for the jurisdiction of Zimbabwe, check out our comparative guides section to compare across multiple countries

Zimbabwe
Patents: ARIPO Or OAPI…What Is The Difference?
Filing patents in Africa is often perceived as a minefield of different regional and national laws, whilst it is in fact relatively simple.

Africa
Plain Packaging: An Issue That’s Not Quite Extinguished
An article that appeared in the South African Daily Maverick news site, “Plain packaging for cigarettes is a bad idea”

South Africa
South Africa: Time To Elect IP
South Africa recently held its general national election and the result was a win for the incumbent African National Congress (ANC) party.

European Union
Copyright In The Digital Age UNILORIN 2019
In mid-2007, I was privileged to be part of the legal team that represented the RIAA in its fight against LIMEWIRE for peer-to-peer online piracy of numerous sound recordings belonging to various artistes …

Nigeria
Is My Work Original Enough?
It is often said that there is nothing new under the sun, and that re-inventing the wheel is often a futile effort. Intellectual Property (IP) refers to creations of the mind, for example:

South Africa
The Interplay Between Company Name Reservations, Trade Mark Registrations And Defensive Company Name Registrations
More often than not, business owners do not attend to a trade mark availability search before they register their company name at the Companies and Intellectual Property Commission (CIPC).

South Africa
Burundi And Rwanda – Renewals Are Due
One of the benefits of trade marks, compared to other forms of intellectual property like patents and copyright, is that a trade mark can be protected in perpetuity. However, in order for this

Africa
What To Do When Your Product Is Copied
South Africa has seen a dramatic rise in entrepreneurial activity with many seeking to launch new products into the marketplace.

Domain Name Disputes – Are They Worth It?

ADR, UDRP and URS. SAIIPL, ICANN, WIPO, MFSD, ADNRC, and NAF. You’re probably confused, aren’t you?

South Africa
Mauritius: Trade Marks Filed “In Defiance Of Commercial Morality”
A recent decision of the Mauritian Industrial Property Tribunal (the “Tribunal”) will provide some comfort to international brand owners. The case involved an application

Mauritius
Cross-Examination Is Possible In Cancellation Proceedings In Kenya
In Biostadt India Limited v Osho Chemical Industries Limited, Biostadt applied for the expungement of the WOKOZIM trade mark registered in the name of Osho in relation to botanical organic foliar/ fertilizer.

South Africa
Why You Need To Protect Your Business Hashtags And Catchphrases
Both a hashtag and a catchphrase can be protected by intellectual property rights, usually by registering them as trademarks.

ASIA
How Do Virtual Businesses Ensure Intellectual Property Protection?
Intellectual Property as we can derive from the term, is any asset that is the creation of human intellect. It is intangible in nature and every original creator of such property has the right to protect the same.

India
Trade War And China’s Changing Trade Mark Law
A newly amended Chinese trade mark law has been approved.

China
Virtual Patent Marketing
This is when statutes that require the inventor/manufacturer to mark their products with the patent number come to save the day.

India
An Ideal Hub For Your IP Assets
During 41 years’ of reform and opening-up, China has been striving to inspire innovation from within and building up its IP system. Number of IPRs has been constantly

China
Time Limit To File Domain Name Disputes Over .Cn Domain Names Extended To 3 Years As Of June 18, 2019
CNNIC ccTLD Dispute Resolution Policy (CNDRP) was revised on June 18, 2019. According to the newly revised Article 2 “the Dispute Resolution Service Providers do not accept the Complaint regarding

China
Demolition – A Limitation On Architect’s Moral Rights
This writ was also dismissed. Rewal then preferred an appeal. While this appeal was pending hearing, ITPO started demolishing the Hall.

India
Asia IP & TMT: Quarterly Review – Second Quarter 2019
In the US, the majority of disputes involving pharmaceutical patents are resolved through one of two processes – post-grant proceedings at the USPTO, or litigation under the “HatchWaxman Act” in a US District Court.

Hong Kong
Intellectual Property Tax Regime In India
The relevance of intellectual property as an asset has just surged in the last few decades and has become a strong foot for the economic development of the nations.

India
Patent Term Extension In Different Countries
They are also open to patent term adjustments and corrections too.

Worldwide
Chinese government releases new regulation on human genetic resources
Anyone who collects, preserves, utilizes or provides China’s human genetic resources should comply with the regulations.

China
Evolving Principles For Award Of Punitive And Compensatory Damages In India
The principles involved in awarding of damages in IP litigation in India have seen a great evolution in the recent past

India
Reduction Of Trademark Official Fees In China
According to the relevant regulations of the State, since July 01, 2019, the China National Intellectual Property Administration (CNIPA) will reduce the official fees for certain trademark registrations as follows:

China
ASIA PACIFIC
Australia Update: Changes to translation filing requirements for patent applications
Removing the requirement to file verification certificates will ease the burden on patent applicants and professionals.

Australia
Overview Of Court Practice Related To The Settlement Of Disputes On The Protection Of Intellectual Rights
In this article we have tried to analyse the court practice in application of legislation in the realm of intellectual property, particularly in respect to trademarks, trade names and patents.

Kazakhstan
How Do Virtual Businesses Ensure Intellectual Property Protection?
Intellectual Property as we can derive from the term, is any asset that is the creation of human intellect. It is intangible in nature and every original creator of such property has the right to protect the same.

India
Trade War And China’s Changing Trade Mark Law
A newly amended Chinese trade mark law has been approved.

China
Is Trump’s Trade War Coming To Indonesia Over IP? (Part 1)
US imports from Indonesia have been growing as product sourcing diverts away from China due to recent tariffs.

Indonesia
Lost in translation: The People vs Kim K
Japanese IP lawyers objected to celebrity Kim Kardashian’s proposed trademark ‘Kimono’ for her body shape solutions line.

Australia
Everybody was Ben Fu fighting
The wine trade mark infringement was so blatant that the company had no reasonable prospects of defending the claim.

Australia
What is new in the Australian IP legal regime?
These changes will open Australia’s IP protection regimes to encourage innovation from Australian companies and others.

Australia
Trademark and Geographical Indication Law (TGIL) in Myanmar: Summary and Recommendations
This is a summary of the TGIL contents as well as recommendations for those interested in registering GIs in Myanmar.
Myanmar

Virtual Patent Marketing
This is when statutes that require the inventor/manufacturer to mark their products with the patent number come to save the day.

India
Divisional patent practice in New Zealand – protecting an endangered species
Across most jurisdictions, the ability to file a divisional application is an essential skill of any patent attorney.

Australia
The repeal of the IP exception – competition law exposure in the pharmaceutical and life sciences sector
Any IP licensing agreement that could affect competition, should be reviewed now to ensure competition compliance.

Australia
An Ideal Hub For Your IP Assets
During 41 years’ of reform and opening-up, China has been striving to inspire innovation from within and building up its IP system. Number of IPRs has been constantly

Copyright In Mongolia
A copyright is a legal device that gives the creator of a literary, artistic, musical, or other creative work the sole right to publish and sell that work

Kazakhstan
Myanmar IP Law Implementation Update
The 4 IP laws for Myanmar all passed in early 2019. However they are still not yet in effect.

Indonesia
Is Trump’s Trade War Coming To Indonesia Over IP? (Part 2)
The last post explained the US government’s complaints about Indonesia’s IP system and the US government’s review of GSPs, that is the tariff preferences the US grants to Indonesia.

Indonesia
Time Limit To File Domain Name Disputes Over .Cn Domain Names Extended To 3 Years As Of June 18, 2019
CNNIC ccTLD Dispute Resolution Policy (CNDRP) was revised on June 18, 2019. According to the newly revised Article 2 “the Dispute Resolution Service Providers do not accept the Complaint regarding

China
Demolition – A Limitation On Architect’s Moral Rights
This writ was also dismissed. Rewal then preferred an appeal. While this appeal was pending hearing, ITPO started demolishing the Hall.

India
Asia IP & TMT: Quarterly Review – Second Quarter 2019
In the US, the majority of disputes involving pharmaceutical patents are resolved through one of two processes – post-grant proceedings at the USPTO, or litigation under the “HatchWaxman Act” in a US District Court.

Hong Kong
Key case considers important trademark issues
A key feature of trade mark registration is that a business’s interests in and rights to that trade mark are protected.

CANADA
Why The C-Suite And IP Team Should Talk
In markets being changed by disruptive technology, intellectual property can be a CEO’s best friend. But seeing IP as ‘legal’ not commercial misses the bigger picture.

Canada
Protecting Technology And IP In The Age Of AI And Collaborative Technology Development
Technology evolves at an ever faster pace. As it evolves, the underlying engineering approaches to technology development and innovation also change.

Canada
Kim Kardashian Drops Kimono Brand Name Amid Outcry
Last week I wrote an article about the uproar over Kim Kardashian’s Kimono brand. Here’s a link to that article if you didn’t read

Canada
Protecting Your Trademarks In The World Of Online Retail Platforms
In the digital age, many vendors have expanded beyond brick and mortar shops and now sell their goods and services online

Canada
Increasing Use Of IP For Blockchain Inventions
While there is no agreed upon definition of blockchain, this technology is often associated with an append-only, tamper-resistant, distributed ledger of peer-to-peer transactions maintained by a decentralized network of participants.

Canada
Federal Court Of Appeal Provides Important Guidance For Determining Jurisdiction Of The PMPRB
On June 28, 2019, in the Federal Court of Appeal’s decision in Attorney General of Canada v Galderma Canada Inc., 2019 FCA 196, the Court confirmed that the Patented Medicines Price Review Board acted unreasonably.

Canada
Detailed Overview Of Deadlines And Requirements Under The New Canadian Patent Rules Coming Into Force On October 30, 2019
In this article, we provide a detailed analysis of revised requirements under the new Rules, together with recommendations for best practices.

Canada
Trademark “Use” In The Normal Course Of Trade: Revisited
The recent Federal Court of Appeal decision in Cosmetic Warriors Limited v Riches, McKenzie & Herbert LLP [1] (“Cosmetic Warriors”)

Canada
Federal Court Of Appeal Agrees That The PMPRB Incorrectly Applied The Patent-Pertaining Analysis
The Federal Court of Appeal has provided new guidance on the proper approach to the “patent pertaining” analysis used by the Patented Medicine Prices Review Board, including on the identification of the medicine …

Canada
Kim Oh No! How A Catchy Branded Wordplay Has Kim Kardashian In Trouble
No matter how you feel about her, there is no denying that Kim Kardashian is a pop culture phenomenon and a successful businesswoman.

Canada
Hola Bienvenido! Canada Adopts The Madrid Protocol To Enhance International Brand Protection For Canadian Brand Owners
Sweeping amendments to the Canadian trademark regime came into force on June 17, 2019. As part of those amendments, Canada became a member of the Madrid Protocol, which allows Canadians to

Canada
Federal Court Upholds PMPRB’s Pricing Decision Regarding Alexion’s SOLIRIS
On June 12, 2019, Justice Gleeson dismissed Alexion’s application for judicial review of a Panel of the Patented Medicines Price Review Board (PMPRB)’s (i) decision

Canada
Doing Business In Canada 2019 – Protection Of Intellectual Property
The protection of intellectual property is primarily a federal responsibility and is the subject of four principal federal statutes: Patent Act, Trade-marks Act, Copyright Act, and Industrial Design Act.

Canada
The Good, The Bad, And The Complicated: Upcoming Changes To Filing Requirements For Canadian Patent Applications
This article provides highlights of the upcoming changes that impact patent filing or national phase entry.

Canada
Revised Canadian Intellectual Property Enforcement Guidelines: Worth A Closer Look
On March 13, 2019, the Canadian Competition Bureau issued revised Intellectual Property Enforcement Guidelines (the IPEGs).

CARIBBEAN
Trademarks Comparative Guide
Trademarks Comparative Guide for the jurisdiction of Cayman Islands, check out our comparative guides section to compare across multiple countries

Cayman Islands
Economic Substance Code
It is anticipated that the International Tax Authority (the “ITA”) of the British Virgin Islands will soon issue its Economic Substance Code (the “Code”).

EUROPEAN UNION
Ace IP – Innovations Of Wimbledon
Until Andy Murray’s Wimbledon win in 2013, Fred Perry was the last British winner of the men’s title in 1936.

UK
Adidas Loses Battle Of The 3 Stripes
The case dates back to 2014 when, the famous German producer of sports goods, in order to extend the protection scope of its well know and already registered trademark with the sign of the three inclined strips, …

European Union
Is Registration Of A Trademark Becoming More And More Tricky?
The Polish Patent Office, the European Union Intellectual Property Office (EUIPO) and the EU Court are tightening the requirements for trademark registration.

Poland
Predictions Of A No-Deal Brexit Are Rising…But For The Life Sciences Sector, Will “Science Prevail” Over The Brexit “Doom And Gloom”?
Brexit is highly fluid; accordingly the legal situation and advice within this article is subject to change.

UK
The General Court Of EU Confirms The Invalidity Of Adidas Three-Stripes Trademark
The use of sloping stripes altered the distinctive character of that mark.

European Union
Separating The Good From The Bad: UK Supreme Court Clarifies “Blue Pencil” Test In Restraint Of Trade Cases
On July 3, 2019, in a long-awaited judgment the Supreme Court of the United Kingdom clarified the correct approach to deciding whether words can be severed from a post-employment covenant to leave an employee bound by…

UK
Greenpeace’s Use Of Maya The Bee Infringes Copyright
It wanted to denounce Studio 100 for promoting products that are bad for children’s health by licensing Maya the Bee’s image for its meat products.

Belgium
New Directive On Copyright In Radio And Television Programmes
On 15 April 2019, the Council of the European Union approved a Directive on the exercise of copyright and related rights applicable to certain online transmissions by broadcasting organisations and retransmissions of television …

European Union
ECJ On Trade Mark Protection Of Quality Labels
On 11 April 2019, the ECJ issued its judgment in the ÖKO-Test Verlag case (C-690/17) on the interpretation of Regulation 207/2009 on the European Union trade mark and Directive 2008/95 on the approximation of the laws …

European Union
Warner-Lambert v Actavis: The Supreme Court’s Judgment On Second Medical Use Claims
In this article, rather than attempting to summarise each technical issue discussed by their Lordships

UK
Three Strikes For Adidas’ Three Stripes
Over 5 years ago, Adidas successfully registered its three stripes as a trade mark in the EU in relation to clothing, footwear and headgear.

UK
Pharma No Longer Under The Competition Radar
The use of competition law to regulate the pharmaceutical industry is beginning to see a new impetus.

Malta
Another Surprising AI Application: Virtual Influencers
Have you ever heard of Miquela Sousa, Sophia the Robot or Shuda?

UK
French Legal And Regulatory Update – May 2019
The Paris office of Hogan Lovells is pleased to provide this English language edition of our monthly e-newsletter, which offers a legal and regulatory update covering

European Union
Portugal Has Updated The Official Fees For Intellectual Property Services
The Portuguese Industrial Property Office has announced an update to the official fees concerning all Intellectual Property procedures.

Portugal
Distinction Between Colour And Figurative Marks Is Crucial For Registration Purposes
The central question was whether a sign represented as a colour drawing (as above) can be registered as a colour mark.

European Union
TMT Horizons 2019
Challengers can reach scale seemingly overnight, forcing market change at a similar speed. Established business models are upended,

Belgium
June came with four new decisions in the EUROPEAN SOFTWARE PATENTS knowledge base relating to graphical user interfaces, computer simulations and business methods…

European Union
Trust The Law Say Legal Teams, But Are They Misguided?
There’s a worrying belief among in-house counsel that intellectual property (IP) laws are keeping pace with tech disruption. The truth is the opposite.

UK
Adidas Three Stripes Trademark Revocation
The Belgian company bought Patrick in 2008, which company was founded in 1892, and thus claim that their mark has been around much longer.

LATIN AMERICA
Brazil To Join International Trademark System
The World Intellectual Property Organization (“WIPO”) announced that, effective October 2, 2019, Brazil will join the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, or the…

Brazil
Brazilian PTO: New Rules On Requests For Priority Examination Of Patent Applications
The new rules will be valid for some fast track programmes in Brazil, with the aim of simplifying and streamlining the proceedings.

Brazil
EPO And INPI Argentina Sign First Reinforced Partnership Agreement
The European Patent Office and the National Institute of Industrial Property (INPI) of Argentina are stepping up their cooperation.

Argentina
MIDDLE EAST
Tariffs For IP Undergoes Revision In Indonesia
The Regulation came into effect on 3 May 2019 and is set to replace the previous regulation that is the Government Regulation Number 45 of 2016

United Arab Emirates
Court Holds Patent For Method Of Making Pre-Cooked Bacon Is Indefinite
A federal judge in Delaware has held that a patent directed to a method of producing pre-cooked sliced bacon on an industrial scale

Israel
Iran Trademark Registrations Through National System And Madrid System
Iran has updated the process for trademark registrations.

United Arab Emirates
When Marks Are Ruined By Their Own Success
Trademarks have always been the core of the business of any company as they are considered a valuable asset.

United Arab Emirates
UK
Ace IP – Innovations Of Wimbledon
Until Andy Murray’s Wimbledon win in 2013, Fred Perry was the last British winner of the men’s title in 1936.

UK
Predictions Of A No-Deal Brexit Are Rising…But For The Life Sciences Sector, Will “Science Prevail” Over The Brexit “Doom And Gloom”?

Brexit is highly fluid; accordingly the legal situation and advice within this article is subject to change.

UK
Separating The Good From The Bad: UK Supreme Court Clarifies “Blue Pencil” Test In Restraint Of Trade Cases
On July 3, 2019, in a long-awaited judgment the Supreme Court of the United Kingdom clarified the correct approach to deciding whether words can be severed from a post-employment covenant to leave an employee bound by…

UK
Warner-Lambert v Actavis: The Supreme Court’s Judgment On Second Medical Use Claims
In this article, rather than attempting to summarise each technical issue discussed by their Lordships

UK
Three Strikes For Adidas’ Three Stripes
Over 5 years ago, Adidas successfully registered its three stripes as a trade mark in the EU in relation to clothing, footwear and headgear.

UK
Another Surprising AI Application: Virtual Influencers
Have you ever heard of Miquela Sousa, Sophia the Robot or Shuda?
Trust The Law Say Legal Teams, But Are They Misguided?
There’s a worrying belief among in-house counsel that intellectual property (IP) laws are keeping pace with tech disruption. The truth is the opposite.

UNITED STATES
Federal Circuit Holds That Post-Petition Privity And RPI Relationships Are Properly Considered For Purposes Of IPR Statutory Time Bar
This recent decision provides guidance for petitioners and patent owners at the PTAB.
Intellectual Property Alert >> Patent And Trademark Office Clarifies Rules For Cannabis Trademarks
The U.S. Patent and Trademark Office (USPTO) has traditionally refused registration of cannabis and cannabis-related offerings because “use in commerce” under the Trademark Act means “use in lawful commerce” and such offerings were prohibited under federal law.

United States
Two Wrongs Don’t Make A Right – Trade Secrets Saga Concludes With No Damages Awarded
On Wednesday, a federal jury in the Eastern District of Texas declined to award any damages to Huawei Technologies Co., the world’s largest telecommunications company,

United States
Collaboration And Development Of Technology In Automotive
In the not-so-distant past, the automotive industry sought to be mostly self-sufficient. That is to say, that when an automobile manufacturer

United States
Recedential No. 17: Specimens Fail To Show Use Of Mark For Retail Store Services, Says TTAB
The Board affirmed a refusal to register the mark THE CARDIO GROUP & Design for “retail store services featuring medical devices
New Amendment To Chinese Trademark Law Seeks To Combat “Bad Faith” Filers
On April 23, 2019, the 10th Session of the Standing Committee of the 13th National People’s Congress in China (NPC) amended the Chinese Trademark Law.

United States
TTABlog Test: How Did These Three Mere Descriptiveness Appeals Come Out?
The TTAB recently ruled on the appeals from the three Section 2(e)(1) mere descriptiveness refusals summarized below.

United States
Kim Kardashian vs. Missguided Trade Mark Use
Kim Kardashian will no doubt be pleased to have been awarded $2.7 million in damages, in a court case against the fashion brand Missguided.

United States
SCOTUS To Decide Whether The Lanham Act Requires Proof Of Willfulness For Disgorgement Of Profits
In Romag, the plaintiff, a manufacturer of magnetic snap fasteners, sued Fossil and various retailers for, among other things, infringement of an unregistered trademark in violation of section 1125(a) of the Lanham Act based on their sale of merchandise that featured snaps bearing the Romag mark.

United States
Transfer Of Trademark Ownership Was Not Undone By A Subsequent Agreement Concerning Patents And Know-How
The Third Circuit found language of a first agreement was unambiguous in transferring ownership of a trademark, and that a subsequent agreement relating to patents and know-how provided no basis for revoking or affecting…

United States
Federal Circuit Elucidates Berkheimer And Aatrix; Patents Presumed Eligible Under Section 101
In a precedential opinion in Cellspin Soft, Inc. v. Fitbit, Inc., et al., the U.S. Court of Appeals for the Federal Circuit vacated both the U.S. District Court for the Northern District

United States
Package Configuration Mark For Canned Fish Deemed Non-Functional But Lacks Acquired Distinctiveness, Says TTAB
The Board reversed a Section 2(e)(5) refusal to register the package configuration mark shown below, for “canned fish; tinned fish.”

United States
IPR And CBM Statistics For Final Written Decisions Issued In May 2019
May was a relatively good month for patent owners at the PTAB. The Patent Trial and Appeal Board issued 49 IPR and CBM Final Written Decisions,

United States
Supreme Court Rules On FOIA And The Protection Of Sensitive Company Information
A recent Supreme Court case determined that private commercial and financial information that is transmitted to the federal government under an assurance of privacy is considered “confidential” and not subject to disclosure…

United States
Inaccurate Copyright Application, Without A Plausible Excuse From The Copyright Owner, Leads To Invalidation Of Registration
In defending against Sanctuary Clothing’s claim that Fiesta Fabrics knowingly included inaccurate information in its copyright application, Fiesta pled ignorance of the law

United States
The Federal Circuit Clamps Down On Broadening Reissues – Or Does It?
Last week, the Federal Circuit, in Forum US v. Flow Valve[i], affirmed the lower court’s ruling invalidating a reissue patent because the broadened

United States
Licensors Attempt To Leverage NDAs To Avert PTAB Review
As discussed a few weeks back, licensors have begun to seek cover from the PTAB via forum selection clauses in their licensing agreements.

United States
Written Description Must Clearly And Unequivocally Disclose Broadened Claims In Reissue Patents
In Forum U.S. Inc., v. Flow Valve, LLC, No. 2018-1765 (Fed. Cir. Jun. 17, 2019), the Federal Circuit affirmed the U.S. District Court for the Western District of Oklahoma, holding Flow Valve’s reissue

United States
PTAB Precedential Decisions On Discretion To Institute Inter Partes Review
In May 2019, the PTAB designated precedential two IPR decisions related to its discretion to institute inter partes review.

United States
Why Cannabis Patent Enforcement Is In The Weeds
The article “Why Cannabis Patent Enforcement is in the Weeds,” written by Daniel Pereira and contributed to by summer associate Alec Royka, is featured by Managing Intellectual Property.

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