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Lundbeck v Sandoz – High Court decision

Photo of Jackie O'Brien (AU)By Jackie O'Brien (AU) on Posted in General
1. Introduction The High Court has delivered the latest instalment in Lundbeck and Sandoz’s lengthy saga concerning escitalopram. The particular circumstances giving rise to this dispute are unique, however, the High Court’s approach to interpreting a patent licence granted by Lundbeck to Sandoz should be considered when preparing patent licences. The High Court’s decision may … Continue reading

Protection for partial products as unregistered Community designs

Photo of Manuel Merling (DE)Photo of Daniel Marschollek (DE)By Manuel Merling (DE) and Daniel Marschollek (DE) on Posted in Brands, General, Trademark
The European Court of Justice (ECJ) recently ruled on the possibility of claiming protection for a part of a product or a component part of a complex product as an unregistered Community design. The ECJ ruled that protection as an unregistered Community designs is possible if the underlying product itself has been made available to … Continue reading

Federal Court of Canada Issues Default Judgment to Stop Online Infringement

Photo of Roohie SharmaBy Roohie Sharma on Posted in General
Default judgment can be an effective way to stop online infringement.  The Federal Court’s decision in Kaira District Co-operative Milk Producers’ Union Limited v. AMUL Canada, 2021 FC 636 is the most recent example of the effectiveness of default judgment.  Kaira District Co-Operative Milk Producers’ Union Limited and Gujarat Cooperative Milk Marketing Federation Ltd. (collectively, … Continue reading

NFTs and Intellectual Property Rights

Photo of Will GartonPhoto of Farah Mukaddam (UK)By Will Garton and Farah Mukaddam (UK) on Posted in Ethics, General, Intellectual Property, technology and innovation
Any creative endeavour is in theory capable of being tokenised or “NFT’d”. Record prices are being reached for the sale of non-fungible tokens (NFTs). But what are NFTs? How are they created? Why are they so valuable? What does the buyer own? What rights do they confer? And why should IP lawyers care? Click here … Continue reading

Combatting Online Copyright Infringement

Photo of Sarah PenningtonBy Sarah Pennington on Posted in Copyright, Enforcement, General
The Internet is a fantastic platform for the widespread dissemination and exchange of works and information.  It is also an increasingly popular medium for infringers to illegally source and share copyrighted materials. Losing control over you work is not only frustrating, it can damage your business or brand.  Fortunately, copyright law prohibits the unauthorized reproduction … Continue reading

Trick-or-Treat Trademarks

Photo of Sarah PenningtonBy Sarah Pennington on Posted in General
It’s that time of year again – whether you’re sneaking pieces from a child’s stash, or waiting to score some discounted leftovers off of the shelves once the big night has passed, Halloween promises a wealth of treats for candy lovers everywhere. We all have our top treats that we could spot from a mile … Continue reading

Beijing IP Court pilots mediation program for Trademark Office appeals

Photo of Justin Davidson (HK)Photo of Phoebe Poon (HK)Photo of Emma QianBy Justin Davidson (HK), Phoebe Poon (HK) and Emma Qian on Posted in Brands, General, Intellectual Property, Trademark
In response to the rapid increase in the number of trademark prosecution administrative review cases (appeals from the Trademark Office – CNIPA), the Supreme People’s Court issued a Judicial Opinion on “Promoting the Reform of Administrative Litigation Proceedings by Dividing Complicated Cases and Simple Cases ” (the “Opinion”) in May 2021. The Opinion aimed to … Continue reading

IP Report 2021

Photo of Georgina Hey (AU)Photo of Maxine RichardBy Georgina Hey (AU) and Maxine Richard on Posted in General, Intellectual Property, Trademark
We would like to acknowledge the contributions of Rex Lee and Amy O’Brien in preparing this blog. Intellectual Property (IP) Australia published their 9th annual edition of the Australian IP Report (the IP Report) on 29 April 2021.  The IP Report, available here, offers a general overview of the current Australian IP climate. It outlines … Continue reading

Consultation Open for Australia’s Medical and Biotechnology Patent Box

Photo of Jackie O'Brien (AU)By Jackie O'Brien (AU) on Posted in General, Intellectual Property, Patents
On 5 July 2021, the Government released its Discussion Paper setting out the Government’s proposal and seeking views from key stakeholders. The paper will be open for submissions until 16 August 2021.   Now is the opportunity for stakeholders to put forward their suggestions as to what a patent box in Australia should entail. Patent boxes … Continue reading

Keezio v. The Shrunks: the Cost of a Counterclaim

Photo of Christopher WilsonBy Christopher Wilson on Posted in Copyright, General, Intellectual Property
A recent decision from the BC Supreme Court serves as a reminder both of the risk of getting sued for defamation for publicly alleging copyright infringement, including on Amazon, and also that companies may be required to post security for costs in order to proceed with copyright and other intellectual property (IP) claims. The decision … Continue reading

Canada’s Federal Court of Appeal: Site-blocking Orders are Here to Stay

Photo of Karen MacDonald (CA)By Karen MacDonald (CA) on Posted in General
The Federal Court of Appeal, in Teksavvy Solutions Inc. v. Bell Media Inc., 2021 FCA 100 (“Teksavvy”), affirmed an order compelling non-party Internet service providers (ISPs) to block access to websites of the pirated television streaming service GoldTV. This decision confirms that blocking orders are available in Canada as a remedy to limit access to … Continue reading

Amazon’s 2020 Brand Protection Report – What Brand Owners Need to Know

Photo of Sarah PenningtonBy Sarah Pennington on Posted in Advertising, Brands, Counterfeiting, General, Intellectual Property, Trademark
On May 10, 2021, Amazon released its 2020 Brand Protection Report (the Report), the first of its kind published by the e-commerce giant. The Report offers insight into Amazon’s brand protection approach and efforts over the past year, including proactive controls, brand tools, and consequences for “bad actors”. With a growing number of fraudsters cropping … Continue reading

Emerging e-commerce trends in China and the potential impact on brands in a global marketplace

Photo of Georgina Hey (AU)Photo of Julie ZhuBy Georgina Hey (AU) and Julie Zhu on Posted in General
Background E-commerce has brought many opportunities for brands to expand their footprint and tap into global markets. However, it has also given rise to a myriad of intellectual property (IP) infringement issues for companies, particularly for trade mark infringement and counterfeit activity. As the e-commerce market has matured, new trends have emerged, posing fresh challenges … Continue reading

Canadian Trademarks Office Takes Steps to Address Backlog

Photo of Sarah PenningtonBy Sarah Pennington on Posted in General
On May 3, 2021, the Canadian Intellectual Property Office (CIPO) published two new practice notices: (1) Measures to improve timeliness in examination; and (2) Requests for expedited examination.  These notices outline CIPO’s plan to help clear its backlog of trademark applications, and to facilitate expedited review in particular circumstances.  CIPO’s practice notices operate as general … Continue reading

Canada Consults on Online Copyright Reform

Photo of Colin Hyslop (CA)By Colin Hyslop (CA) on Posted in Copyright, General, Intellectual Property
On Wednesday, April 14, 2021, the Canadian government launched a consultation on “a Modern Copyright Framework for Online Intermediaries”, seeking comments from the public until May 31. The goal of this consultation is to “ensure that Canada’s copyright framework for online intermediaries reflects this evolving digital world.” Alongside the announcement of this consultation, the government … Continue reading

Revisions to PRC Medical Devices Regulations

Photo of Justin Davidson (HK)Photo of Stanley NgBy Justin Davidson (HK) and Stanley Ng on Posted in General
The PRC Regulations on the Supervision and Administration of Medical Devices (“Regulations”) have recently been amended and promulgated by the State Council. The new Regulations, which will be effective from 1st June 2021, provide some important changes of which the medical device industry should be aware. Under the current Regulations, a license to manufacture medical … Continue reading

Executive Order to breathe new life into Made-in-America rules

Photo of Andre Hanson (US)Photo of Saul Perloff (US)By Andre Hanson (US) and Saul Perloff (US) on Posted in Advertising, General
Federal acquisition law and regulations often require government agencies to give purchasing preference to domestic suppliers. These preferences—some of which have remained unchanged since the Eisenhower Administration—have not always been implemented consistently or effectively. That uncertain landscape may be about to change. On Monday, January 25, 2021, the Biden Administration issued an Executive Order setting … Continue reading

Federal Court of Appeal Reviews Meaning of “Use” of a Trademark in Canada

Photo of Caroline Henrie (CA)By Caroline Henrie (CA) on Posted in General, Trademark
In Miller Thomson LLP v Hilton Worldwide Holding LLP, 2020 FCA 134, the Canadian Federal Court of Appeal recently confirmed that a trademark associated with “hotel services” was valid despite no brick-and-mortar presence in Canada.  More specifically, the Court acknowledged that providing incidental or ancillary services to the registered service can be considered to be … Continue reading

Domain Names and Online Trademarks: When is a Consumer Confused?

Photo of Bianca Pietracupa (CA)By Bianca Pietracupa (CA) on Posted in Advertising, Domain names, General
As more businesses move online, the value and importance of domain names and online trademark enforcement grows. The Superior Court of Quebec has reaffirmed that a confusing domain can land your business in legal trouble. The dispute arose between the unregistered trademark of Cabanons Mirabel, and confusing domain names chosen by a competitor. Cabanons Mirabel … Continue reading

Comparing Apples and Oranges (and Pears?)

Photo of Patrick Chou (CA)By Patrick Chou (CA) on Posted in General
The saying goes you can’t compare apples and oranges, but technology giant Apple is arguing that you can compare, and even confuse, apples and pears. In late 2019, Super Healthy Kids applied to register a pear-shaped trademark in Canada for use in connection with Prepear, its meal prep app. Once the opportunity arose, Apple filed … Continue reading

Where the Rubber Hits the Road: Damages for Canadian E-Commerce Copyright Infringement

Photo of Colin Hyslop (CA)By Colin Hyslop (CA) on Posted in Copyright, General
In Rallysport Direct LLC v 2424508 Ontario Ltd, 2020 FC 794, the Canadian Federal Court awarded $357,500 in statutory damages and $50,000 in punitive damages for infringement of copyright in 1,430 photographs. Background Rallysport Direct LLC (RSD) is a wholesaler and direct-to-consumer supplier of aftermarket automotive components and accessories. It sells its products on its … Continue reading

COVID-19: Major risk flowing from non-exclusive IP licenses under German insolvency law

Photo of Clemens RübelPhoto of Tiffany ZillioxPhoto of Maximilian SchmitzPhoto of Regina RathBy Clemens Rübel, Tiffany Zilliox, Maximilian Schmitz and Regina Rath on Posted in General
The COVID-19 pandemic poses a major challenge for large parts of the economy, causing many companies to fail and a domino effect on other companies with which they had business relationships. Where a party to an IP license becomes insolvent and regular insolvency proceedings are commenced, an insolvency administrator will take over the management of … Continue reading
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