No. 36
June 2014
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International Association for the Protection of Intellectual Property
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 AIPPI Bureau
 AIPPI Committees
 AIPPI 2014 Toronto Congress
 Forthcoming Events
 Articles and notes

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AIPPI Bureau
The annual visit of the Bureau of AIPPI to WIPO
(Laurent Thibon, Deputy Secretary General)
The traditional annual visit by the Bureau of AIPPI to WIPO was held on May 27, 2014 and hosted by Francis Gurry, Director General of WIPO. The AIPPI delegation was composed of John Bochnovic, President, Stephan Freischem, Secretary General, Thierry Calame, Reporter General, Laurent Thibon, Deputy Secretary General, Anne Marie Verschuur, Assistant to the Reporter General and Steve Garland, Member of the Programme Committee.
AIPPI Committees
AIPPI report on the availability of injunctive relief for FRAND-committed standard essential patents
(Michael Fröhlich, Chairman AIPPI SC Q222)
The report provides a comparative legal analysis of the availability of injunctive relief for FRAND-committed standard essential patents. It includes a review of over 40 different cases from courts and antitrust agencies around the world and offers a unique insight into the IPR policy discussions in various standard-setting organisations.
AIPPI 2014 Toronto Congress
Two additional lunch-time IP panels at AIPPI's World Congress 2014
(AIPPI General Secretariat)
Extension of the Hague international design protection system — Monday, September 15, 12:30-14:00
The panel will focus on the expansion of the international design protection system. In particular, the expected accession of the USPTO, which has an examining design protection system, and the announcement of accession by other major jurisdictions will significantly extend the scope and attractiveness of international design protection. Opening the Hague system to examining design offices will change the Hague registration system as we know it. The President of OHIM, António Campinos, and Commissioner Hideo Hato from the JPO plan to participate in this panel. We have invited heads of other leading IP offices to explain current developments and plans in their jurisdictions.

Patent law harmonization — Tuesday, September 16, 12:30-14:00
Giant leaps are being made in the field of procedural patent law harmonization. Leading IP offices have created collaborative tools for harmonizing search and examination. At the same time, substantive patent law harmonization seems to be treading water. After thorough discussions of grace period and other key harmonization issues in the Tegernsee studies, the words have to turn into deeds. The panel will inform you of the achievements and continuing efforts in patent law harmonization. The President of the EPO, Benoit Battistelli, and Commissioner Hideo Hato from the JPO plan to participate in this panel, and AIPPI has invited leaders of other major IP offices to participate.

Don't miss to register also for these two lunches. Registration is open at
Toronto the “Cool”
(Philip C. Mendes da Costa, Chair Organizing Committee)
Toronto has recently been acknowledged to be one of the “cool” cities. When this is combined with the top notch program that has been planned, this Congress is not to be missed.
AIPPI 2014 Toronto World Intellectual Property Congress, 14-17 September 2104
(The Toronto 2014 Organizing Committee)
The 2014 World IP Congress in Toronto is only three months away, but there is still time to become a sponsor or exhibitor. Check out the great opportunities that are still available in the Sponsorship and Exhibition Brochure at
AIPPI Congress News
(AIPPI General Secretariat and Managing IP)
AIPPI is pleased, once again, to be working with Managing IP to publish The AIPPI Congress News - the dedicated daily newspaper for the 44th World IP Congress being held in Toronto, 14-17 September 2014.
Forthcoming Events
June 2014:  ECTA 33rd Annual Conference, 18-21 June 2014
The 33rd ECTA Annual Conference will take place this year in Alicante (Spain), 18-21 June, 2014. This conference on Trade Marks and Designs will celebrate the 20th Anniversary of the European Community Trade Mark. More information is available at
July 2014: JPO: Tegernsee Symposium — focused on Grace Period, Tokyo, July 10, 2014
(JPO cooperation with AIPPI and FICPI)
The results of extensive studies of Tegernsee member IP offices (JPO, USPTO, EPO, UKIPO, DPMA, INPI, DKPTO) on substantive patent law harmonization have been published in May 2014 as the “ Consolidated Report on the Tegernsee User Consultation ”. Based on these studies, the JPO will hold a symposium in cooperation with AIPPI and FICPI. Lectures by experts from IP offices and user groups, as well as a panel discussion, will identify and advance the most pressing harmonization issues. Please click here for registration information.
November 2014:  FICPI 15th Open Forum, Barcelona, 5-8 November 2014
The FICPI 15th Open Forum in Barcelona will take place on 5-8 November 2014. More information is available at
Articles and notes
Australia: Pain relief for innovators — Australia cements its reputation as being a favourable jurisdiction for pharmaceutical patent owners
(Matthew Swinn & Caroline Ryan, Corrs Chambers Westgarth, Melbourne, Australia)
Australia's Full Federal Court has broadened the scope of an existing interlocutory injunction restraining the supply of pregabalin products in Australia, signalling that there is now very little scope for a generic company to successfully defeat an interlocutory injunction, even in relation to products that are "skinny-labelled" for a non-patented indication.
Ecuador: Proposed new, comprehensive IP law in Ecuador with further restrictions on patent prosecution
(Maria Cecilia Romoleroux, Corral Rosales Carmigniani Pérez, Quito, Ecuador)
SENESCYT, an Ecuadorian Government entity, has advertised a draft of a comprehensive new Intellectual Property Law, which introduces restrictions for the patentability of products in the pharmaceutical and biotechnology fields.
France: Tobacco trademarks and ban on tobacco advertising
(Tougane Loumeau, avocat á la Cour, Gide, Loyrette, Nouel, Paris, France)
Every year, on 31 May, the World Health Organization marks World No Tobacco Day. This is an opportunity to report on French law and recent case law pertaining to certain legal aspects of trademark law applied to tobacco products.
UK: Threats and regrets in the UK
(Susan Snedden, Maclay Murray & Spens LLP, Edinburgh,UK)
UK legislation prohibits the making of groundless threats of patent, design and trade mark infringement, except in limited circumstances. This causes difficulties for IP rights-holders and their advisors. The Law Commission has proposed legislation changes to redress the balance.
UK: Court of Appeal reverses Trunki Community Registered Design decision
(Charlotte Scott, Hogarth Chambers, London, UK)
The Court of Appeal of England and Wales handed down its decision in Magmatic Ltd v PMS International Limited, finding that the Kiddee Case did not infringe the Claimant's Community Registered Design (“CRD”) for the iconic Trunki children's suitcase. balance.
U.S.A.: Raging Bull Copyright Infringement Claim is Not Knocked-Out by Laches Defense, U.S. Supreme Court Holds
(Seth I. Appel, Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, Chicago, Illinois, U.S.A.)
The battle over Raging Bull, the critically-acclaimed motion picture starring Robert DeNiro as boxing champion Jake LaMotta, will continue in the U.S. courts. The U.S. Supreme Court recently held that the equitable defense of laches (unreasonable, prejudicial delay in bringing a lawsuit) cannot bar a copyright infringement claim brought within the three-year statute of limitations provided by the Copyright Act. Petrella v. Metro-Goldwyn-Mayer, Inc., ___ S.Ct. ___, (2014). Therefore, the Court held that Paula Petrella, whose father wrote the screenplay on which the movie was based, could proceed with her action for damages going back three years, despite waiting 18 years to file suit.
U.S.A.: Cancellation petitioner prevails upon misrepresentation claim despite lack of U.S. trademark use or registration: Bayer v Belmora
(Phillip Barengolts, Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, Chicago, Illinois, U.S.A.)
The U.S. Trademark Trial and Appeal Board canceled a registration of the mark FLANAX on the ground that the owner of the U.S. registration misrepresented the source of the goods sold under the mark.
U.S.A.: The U.S. Supreme Court Makes it Easier for District Courts to Award Attorney's Fees in Patent Litigation
(Joshua B. Goldberg, Nath, Goldberg & Meyer, Alexandria, Virginia, U.S.A.)
The U.S. Supreme Court recently decided to grant more discretion to the U.S. district courts in determining whether a specific patent litigation is so “exceptional” as to permit an award of attorney's fees to the prevailing party. Octane Fitness, LLC v. Icon Health & Fitness, Inc., ___ S.Ct. ___, (2014). Therefore, the Court remanded the case for a determination of the proper attorney's fees to be rewarded to Octane Fitness, the prevailing party.
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AIPPI General Secretariat |Toedistrasse 16 |P.O.BOX | CH-8027 Zurich | Tel. 44 280 58 80 | Fax 44 280 58 85 | |

This issue was prepared by Ching-Ying Chen, AIPPI General Secretariat
in co-operation with Stephan Freischem, Secretary General of AIPPI and the Communications Committee:
Chair: Charters Macdonald-Brown
Members: Johnny Fiandeiro
  Kristian Fredrikson
  Klaus Haft
  Bernardo Herrerias
  Jehyun Kim
  Emmanuel Larere
  Bianca Manuela Gutierrez
  Bill Mayo
  Petri Rinkinen
  Robert Sacoff
  Ana de Sampaio
  Matthew Swinn

While AIPPI makes every effort to be accurate in the information it transmits, such information is not to be considered as substitute for specific and qualified professional advice. AIPPI accepts no responsibility for opinions expressed in interviews or for the information provided through external web links.
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