AIPPI Bureau

AIPPI ASEAN First Regional Meeting in Kuala Lumpur – March 3, 2016 by Felipe Claro, President of AIPPI

On March 3, 2016 the first of many AIPPI ASEAN Regional Seminars took place in Kuala Lumpur. This is the first official activity organized by AIPPI in Malaysia, the first AIPPI Regional Seminar in ASEAN, and it is also the first time that both the President (Mr. Felipe Claro) and Vice-President (Mr. Hao Ma) visit such country in their respective …

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AIPPI Committees

EU Trademark Package by Eléonore Gaspar (Chair of the Standing Committee on Trademarks)

The EU trade mark reform package will replace the existing Trade Mark Directive (TMD) harmonizing the trade mark laws of the EU Member States and amend the EU Trade Mark Regulation (EUTMR) which sets out the rules applicable to EU trade marks. Most of the provisions of the amended EU Trade Mark Regulation will enter into force on March 23, …

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EU Trade Mark Reform - New Regulation (EU) N° 2015/2424: Changes that will enter into force on March 23, 2016 by Eléonore Gaspar (Chair of the Standing Committee on Trademarks)

http://eur-lex.europa.eu/legal-content/EN/TXT/?qid=1457092102847&uri=CELEX:32015R2424 The amending Regulation brings a number of changes in the areas of fees, examination proceedings, absolute grounds of refusal, relative grounds of refusal, designation of goods and services, opposition and cancellation proceedings and appeals, which will enter into force 90 days after publication, i.e., on March 23, 2016. Apart from the changes in terminology, the main changes are the …

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The EU Narrows the Scope of Protection for Class Heading Designations by Dennis S. Prahl (Member of the Standing Committee on Trademarks)

Effective 23 March 2016 the amended EU Trademark Regulation (EUTMR), Article 28, will formally introduce a more restrictive approach to the treatment of specifications of goods and services in Community Trademark applications and registrations (“CTMs”), by codifying the European Court of Justice’s judgment in the IP Translator case. Narrowing the Coverage: Class Headings Will Only Cover the Goods and Services …

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Certification marks under the new EU trademarks laws by Elena Molina (Secretary of the Standing Committee on Trademarks)

Certification marks are those marks that require that anyone who use them comply with certain established standards. They certify that the goods or services in connection with which are used have been manufactured in accordance with such standards. A well-known certification mark is, for example, WOOLMARK  , which certifies that the goods on which this mark is used are made of …

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Counterfeit goods in transit under the new EU trademark laws by Bartosz Krakowiak (Member of the Standing Committee on Trademarks)

The new EU Trademark Directive and the Regulation amending the EU Trademark Regulation (so far known as the CTM Regulation) were published, respectively, on 23 and 24 December 2015. While most of the provisions of the amended EU Trademark Regulation will enter into force on 23 March 2016, the new Directive requires implementation by the Member States into their national …

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United States-Brazil Patent Prosecution Highway (PPH) by Gustavo Leonardos (Co- Chair of the Standing Committee on TRIPS)

  The USPTO and the Brazilian PTO just concluded an agreement on a Patent Prosecution Highway (PPH) Pilot Program, aiming at improving the efficiency of the examination of their patent applications and the quality of the respective granted patents. The USPTO-BRPTO PPH Pilot Program will be effective for a period of two years as from January 11th, 2016. While the …

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AIPPI Standing Committee TRIPS holds a workshop at WTO Public Forum 2015 by Ivan Hjertman (Former Chair of the Standing Committee on TRIPS)

The World Trade Organization (WTO) held the Public Forum 2015 from September 30 to October 2, 2015 in Geneva, Switzerland.  The main theme for the Forum was "Trade Works".  Special for the Public Forum 2015 was that it was part of the marking of the 20th anniversary of the WTO.  Over the three days, a total of 88 seminars/workshops of …

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2016 AIPPI World Congress – Milan

Sponsorship Opportunity by AIPPI General Secretariat

In 2016, the AIPPI World Congress will be in Milan, Italy. Sponsors in Milan will have unique opportunities to promote their activities with improved marketing strategies. The intention is to introduce new ways to display the sponsor's brands with high visibility, including banners on AIPPI's web site and screens throughout the Congress rooms. Also, new networking mechanisms will ensure that …

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Join us for the Milan 2016 Congress by Milan 2016 Organizing Committee

Milan is preparing for the World Congress, from 16 to 20 September 2016. The all-new and impressive MiCo convention center will host the Opening ceremony and reception, as well as the Congress works. The cultural evening will be second to none, with the possibility to watch a performance at the Teatro alla Scala, home to the Opera music since the …

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2017 AIPPI World Congress – Sydney

An update on AIPPI 2017 from Sydney, Australia by AIPPI 2017 Congress Manager (Arinex Pty Ltd - Australia)

The AIPPI 2017 Congress will be taking place in Sydney, Australia at the brand new International Convention Centre (ICC) Sydney, from 13 – 17 October 2017. Save the dates and visit the Congress website (www.aippi2017.org) to express your interest and be kept up-to-date with ongoing Congress news. Sydney is known for its beaches, its fabulous scenery, its perfect weather, and …

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Forthcoming Events

AIPPI Swedish Group - AIPPI Day 2016

A full day in Stockholm of various seminars, relating to either past or present AIPPI Study Questions such as Second Medical Use Patents, Internet Censorship, IP Rights as Security and Design protection for Graphical User Interface. More information can be found on http://aippi.se/evenemang#seminar1

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AIPPI Israel - The Economy of Innovation

In November 2013, the Israeli Chapter of the International Association for the Protection of Intellectual Property (AIPPI), in collaboration with the Faculty of Law at the Tel-Aviv University, were pleased to hold the international convention "From IP to NP" (net profit) which focused on how to make IP work for businesses. Co-organizers of the conference were the Israel Patent Office, the …

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AIPPI Turkey - 4th IP Law Seminar

As AIPPI Turkey- International Association for the Protection of Intellectual Property, it is a great pleasure to announce the information that we are holding our “4th Intellectual Property Rights Seminar” on 7 and 8 of April 2016 at Istanbul Yildiz Palace – Chalet Kiosk Besiktas / lstanbul.” Programme & Online Registration

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AIPPI Finland & AIPPI Sweden - AIPPI Symposium 2016

Value in IP and IP Business — Europe Closer to a Single IP Market? The above themes will be in the focus of the AIPPI Symposium 2016 arranged by the Finnish AIPPI Group in cooperation with the Swedish AIPPI Group.The symposium structure will be as follows: • Thursday 21 April 2016, …

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GOs & NGOs

MIP Africa Roadshow by MIP

Managing IP are pleased to announce the inaugural MIP Africa Roadshow, in partnership with Adams & Adams, taking place on April 6 2016 in New York. As Africa continues to become a meaningful player in international markets, it is essential that you understand the different approaches needed to protect your IP rights and are up-to-date with key developments in the …

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OHIM - DesignEuropa Awards: Celebrating design in the EU

Applications are now open for the inaugural edition of the DesignEuropa Awards, organised by the Office for Harmonization in the Internal Market (OHIM), the EU’s largest intellectual property agency. The DesignEuropa Awards celebrate excellence in design and design management among Registered Community Design (RCD) holders, whether they are individual right holders, SMEs or large enterprises. The application period runs from …

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Articles and notes

Mediation proceedings do not suspend the one-year term to settle trademark oppositions by Ignacio Sanchez Echagüe (Marval, O'Farrell & Mairal- Argentina)

The Argentine Congress passed Law No. 27,222 (effective as from March 22, 2016), which provides that mediation proceedings do not suspend the one-year term to settle trademark oppositions. In Argentina, an opposition against a trademark application automatically blocks its prosecution. In this event, the applicant has a one-year term –counted as from notification of the opposition– to negotiate the withdrawal …

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Bond for costs is no longer required for Foreign Nationals by Ignacio Sanchez Echagüe (Marval, O’Farrell & Mairal – Argentina)

A new Argentine Civil and Commercial Code came into effect on August 1, 2015. Among the many changes introduced by this Code, we would like to highlight the introduction of new regulations in the private international law field, including the principle of equal treatment of foreign nationals. In this respect, foreign citizens and residents are granted free access to the …

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New Regulation on Biotechnological Patent Applications by Ignacio Sanchez Echagüe (Marval, O'Farrell & Mairal - Argentina)

The Argentine Patent Office issued Regulation No. 283/2015 amending the Patentability Guidelines on biotechnological inventions. In general terms, the regulation incorporates the current practice of the Argentine Patent Office regarding patentability of biotechnological inventions into the Patentability Guidelines. The main amendments are as follows: Homology/Identity percentage: The regulation does not allow the definition of molecules based on homology/identity percentages, and …

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Australian Innovation Patents by Andrew Massie (Phillips Ormonde Fitzpatrick - Australia)

The Australian Advisory Council on Intellectual Property (ACIP) issued a Consultation Paper in August 2015 in which it made a recommendation to the Australian Government to consider abolition of the current Australian Innovation Patent System. AIPPI Australia responded to the Consultation Paper in support of maintaining the Innovation Patent System but in a modified form. Innovation patents in Australia have …

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Draft Fourth Amendment to the Chinese Patent Law for the State Council’s Review by Stephen Yang (Peksung Intellectual Property Ltd. - China)

A new draft fourth amendment to the Chinese patent law was sent to the State Council to review and published on December 2, 2015. The period for soliciting comments ended on January 1, 2016. The proposed changes are mainly directed to design patent, patent enforcement and licensing. Design Patent The definition of “design” is proposed to change to allow partial …

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Bad faith appropriation of a competitor's name range by Tougane Loumeau (GIDE LOYRETTE NOUEL - France)

VFP France v. Nicopure Labs LLC, Paris Court of Appeal, 18 December 2015, No.2015/09682 This case is an interesting illustrative example of a situation where a newcomer undertakes to ride on the coattails of an established operator, by appropriating names that are already used by that operator without being covered by trademark protection. The case shows a difference in the …

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The Florence IP Court protects Tuscany’s PDO wine Vino Nobile di Montepulciano by Luigi Manna (Martini Manna Avvocati - Italy)

With ruling no. 3575/2015 of 21 October 2015, the IP Court of Florence awarded a major victory to Consorzio del Vino Nobile di Montepulciano, a Tuscan trading association representing the interests of grape growers and winemakers engaged in the production of the wine Vino Nobile di Montepulciano. The Consorzio had sued two companies of the Chianti area, “Azienda Agricola Nobile …

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Italian judges strike a new blow against Rojadirecta by Barbara Sartori, Riccardo Marin (CBA Studio Legale e Tributario - Italy)

The Court of Milan, Business Section, tightens its grip on piratical online streaming. The decision was issued within the interim proceeding commenced by Mediaset, one of the major Italian broadcasting groups, seeking to obtain protection of its IPR rights over Series A and Champions League matches, systematically infringed by the “rojdirecta” portal. In its landmark decision of 18 November 2015, …

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The court of Milan on IP assets’ devaluation due to tarnishment: the forensic accountant’s point of view on a damages’ assessment internationally-viable method by Simona Cazzaniga (Studio Legale Sutti - Italy)

The assessment of direct damages for the “tarnishment” of IP assets is one of the most controversial issues in the enforcement of IP. The problem is especially difficult when IP assets' devaluation is concerned. Irrespective of the country or the judicial system concerned, determining the appropriate pecuniary compensation for the injured party is an awkward task. Punitive or exemplary damages, …

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Partial amendment to the Japanese patent law in 2016 by Hirohito Katsunuma (Kyowa Patent and law office - Japan)

The amendments include: (1) activation of the employee’s invention, (2) revision of Patent Fees, etc. and (3) amendments to the Patent Act and the Trademark Act to conform to the Patent Law Treaty (PLT) and the Singapore Treaty on the Law of Trademarks (STLT). I. Activation of the Employee’s Invention 1. The current employee’s invention system is as below: a. …

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Invalidation of trademark GYMROLLSROYCE in Class 25 for confusion with trademark ROLLS-ROYCE in Class 12 by Maria del Carmen Arana Courrejolles (ESTUDIO COLMENARES & ASOCIADOS S.A.C. - Peru)

Case ROLLS-ROYCE PLC vs. Edgar Wilder Depaz Leyva – Resolution 4827-2015/TPI-INDECOPI 11-12-2015 (in Spanish) - www.indecopi.gob.pe A recent case involved ROLLS-ROYCE P.L.C., from United Kingdom, owner of several trademarks for ROLLS-ROYCE in Peru, mainly in class 12 (vehicles), that entered a nullity action against the “GYMROLLSROYCE” trademark, Certificate Nº 191307 covering garments in class 25 of the International Classification, granted …

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Important changes to Trademark Examination and Opposition system in Poland by Sławomir Mazur (POLSERVICE Patent and Trademark Attorneys Office- Poland)

Recent changes in Polish IP law regarded mostly patent and design field. However, they opened way for changes also in trademark field. The trademark regulations have been significantly modified and a completely new examination and opposition procedure enters into force on April 15, 2016. Poland has remained one of few countries in which the Patent Office examines on both absolute …

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The increasing importance of Article 39.3 TRIPs by Adarsh Ramanujan, R. Parthasarathy, Malathi Lakshmikumaran (Lakshmikumaran & Sridharan - Switzerland, India)

There is an increasing global momentum towards having access to clinical data of pharmaceutical substances and this raises the significance of Article 39.3 of the TRIPs Agreement. For instance, the European Medical Agency (EMA) has been sharing information with anyone who makes a request under its 2010 Policy No. 00030. Under its new 2014 Policy No. 00070, the EMA will …

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Thailand’s New Alcohol Labeling and Message Requirements by Alan Adcock and Aaron Le Marquer (Tilleke & Gibbins - Thailand)

On January 22, 2015, the Notification of the Alcoholic Beverages Control, Re: Rules, Procedures, and Conditions for Labels of Alcoholic Beverages was published in the Royal Thai Government Gazette. It sets out Thailand’s Ministry of Public Health’s (MoPH) controversial labeling and message restrictions for alcoholic beverages that could result in major losses for the alcohol industry. The Notification has been …

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Survey on the Use of Post-Filing Data in Patent Prosecution and Invalidation Proceedings by John Todaro (Merck - U.S.A.)

The AIPPI Standing Committee on Pharma and Biotech (“Pharma Committee”) was formed in 2015 to address matters of concern to pharmaceutical practitioners, and has over 50 members.   The Committee includes the former Biotech Committee, which has been reorganized as a subcommittee within the Pharma Committee. One project the Pharma Committee has undertaken this year is a survey of national laws …

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First Amendment Protects Registration of Disparaging Trademarks, Federal Appellate Court Holds by Seth I. Appel (Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP - U.S.A.)

In re Simon Shiao Tam, 808 F.3d 1321 (Fed. Cir. 2015) http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/14-1203.Opinion.12-18-2015.1.PDF Since its enactment in 1946, the federal Trademark Act has barred registration of marks that "may disparage." 15 U.S.C. § 1052(a). In view of this prohibition in Section 2(a), the U.S. Patent and Trademark Office refused registration of THE SLANTS because it found this mark disparaging to people …

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