Two Special Announcements
Articles & Case Notes:
- Case law database regarding TRIPS. Introduction to TRIPS Case Law Digest and a representative example.
- Value generation and business growth through IP protection: the new challenge for the AIPPI Italian group.
- UAE: Major Amendment to the GCC Patent Law approved by GCC Supreme Council.
- First Ever Preliminary Injunction Issued by a Chinese Court in Pharmaceutical Patent Case.
- Google reaches agreement with French press publishers over newly enacted European copyright-related right.
- Agreement between the Commerce Ministry’s Department for Promotion of Industry and Internal Trade (DPIIT) of India and the United States Patent and Trademark Office (USPTO).
- New Rules for Paying Employees Remuneration for Inventions came into force in Russia on January 1, 2021.
- Pakistan joins the Madrid Protocol.
- The Japanese IP High Court held that an invention with regard to Electronically Recorded Monetary Claims is not eligible.
- Guidance from China's Supreme Court in light of punitive damages on intentional IPR infringement.
- Conflicting composition marks ruling in India
AIPPI National and Regional News:
- New Board for AIPPI Mexico
- Sarah Matheson on the Australia Day 2021 Honours List
- The AIPPI Belgian Group held a lunch webinar on recent Trade Secrets case law on February 11, 2021
- AIPPI – French Group News
- AIPPI – News from Honduras
- Trilateral Seminar of the French, Polish and German National Groups
- AIPPI – Dominican Republic News
- AIPPI – News from Guatemala
- AIPPI Paraguayan Group Update
Invitation to present nominations for members of the Bureau and Statutory Committees
The National and Regional Groups are invited by the Bureau of AIPPI to present nominations for candidates for the Bureau and the Statutory Committees. The invitation has been sent to the Presidents and Secretaries of your National and Regional Groups on 15 March 2021.
The Nominating Committee wishes to inform all AIPPI members by way of this AIPPI e-news article about the elections 2021 for the Bureau and for our Statutory Committees.
The following Bureau positions are to be voted this year:
- Secretary General,
- First Deputy Secretary General,
- Second Deputy Secretary General and
In the Statutory Committees, the following positions are or will become vacant this year:
Membership Committee: three new members
Venue Selections Committee: one new member
Communications Committee: one new member
Nominating Committee: three new members
If you are interested in taking part in the work of one of these Statutory Committees, and your National Group does not already have a member in this Committee, please submit promptly to your National or Regional Group your application as a candidate for a specific position, together with a brief CV explaining your qualification for the proposed position. The final deadline for your National or Regional Group to submit a proposal for the nomination of candidates, as set forth in the invitation to the Presidents and Secretaries of the National and Regional Groups, is May 16, 2021.
Please make sure that your National or Regional Group receives your application well before this date.
In case your National or Regional Group supports your application, it will then be sent to the General Secretariat and the Chairperson of the Nominating Committee. The Nominating Committee will select a number of suitable candidates according to the Regulations of AIPPI. Depending on the specific Committee, the selection will be based on several different criteria, such as for example professional, geographic, gender and age diversity, as well as aptitude for financial matters, knowledge of AIPPI members, good knowledge of AIPPI as an institution, experience with international IP meetings and, especially regarding candidates for the Nominating Committee, experience in participating in AIPPI Committees.
Candidates may also be proposed jointly by at least 50 members of the Association. In such a case, the application together with the CV as well as a list of the members of the Association supporting the application should be sent directly to the Bureau.
Special Announcement 2: Japanese Group's Journal "A.I.P.P.I." Now Available to All Members of AIPPI.
Since 1965, the Japanese Group has published its bimonthly journal "A.I.P.P.I." in English for the purpose of disseminating information on the Japanese intellectual property system to foreign countries. We have started to publish it in an e-journal format from the January 2021 issue (Vol 46, No.1).
To mark this occasion, we have also decided to make it accessible to AIPPI members in other countries. AIPPI members can read the entire issue online (not available for download or print).
A link was sent to AIPPI members in the March 2021 eNewsletter mailing. Issues are also available to read in the "Members Offers" section of the Members Area of the AIPPI website once you have logged in.
We will inform you in the AIPPI Newsletter each time we publish the latest issue.
We hope that many AIPPI members around the world will find it interesting.
Masatoshi ABE, AIPPI JAPAN
By Victor Garrido and Takeshi S Komatani (Vice Chair) of the AIPPI TRIPS Standing Committee.
Our TRIPS Standing Committee has collaborative projects with a number of entities and committees including external entities such as WTO. At this time, we are introducing one of these collaboration activities: TRIPS Case Law Digest. This project is to create a database including prospective case law collection, intended to be freely available, and can enable a more comprehensive analysis of existing jurisprudence, including the identification of conflicts, convergences, or other notable trends. We aim to create and maintain a collection of national jurisprudence which refers to or relies on TRIPS provisions when interpreting and applying domestic intellectual property law, in collaboration with partner institutions around the world, with strong assistance by the WTO. Once the collection has reached a critical mass, the WTO Secretariat will develop the appropriate means to make it available to users while recognizing the valuable contribution of participating partner institutions, notably AIPPI.
The collaboration started back in 2018. Our committee has discussed this project within our regular monthly telemeetings, sometimes inviting members from WTO including Antony Taubman, Director, Intellectual Property Division of the World Trade Organization and Wolf Meier-Ewert, Counsellor, Intellectual Property Division of World Trade Organization.
At the WTO, with the proposals and opinions from our committee, the WTO Secretariat has developed a prototype database and provided an opportunity to preview the development of the TRIPS Case Law Digest to our members during the 2019 AIPPI World Congress in London.
Currently, we are in the test phase, and internally, collecting representative case law from the members of the TRIPS SC.
In this article, we introduce one such representative case law.
A sample of case law being uploaded to the TRIPS Case Law Digest
The following is a summary of a decision rendered by a Mexican Federal Circuit Court on a trademark case by which Mexico recognizes expanded rights to a well-known mark considered as such in another Paris Convention party by referring, among other provisions, to Article 16 of the TRIPS Agreement. As explained at the end of the article, AIPPI is working with the WTO Secretariat on an initiative to collect national case law applying or interpreting the TRIPS Agreement from a plurality of jurisdictions.
As in many other jurisdictions, a trademark registered in Mexico generally is required to be used in the country in order to avoid cancellation by a third party seeking to register an equal or similar mark for equal or similar good or services. However, according to a decision from a Federal Circuit Court, this general rule does not necessarily apply when the trademark is recognized as well-known in another Paris Convention party.
In 1999, Colombian company “Compañía Global de Pinturas, S.A.” (CGP) obtained a registration for the trademark “PINTUCO” in Mexico to protect products pertaining to class 2 of the Nice classification, such as paints, varnishes, lacquers, colorants, dyes, and the like. In 2015, a domestic company, “Pintucom S.A. de C.V.” filed an application to register the mark “PINTUCOM” and design for equal products and initiated a cancellation action against “PINTUCO” arguing that it had not been used in Mexico during three years prior to the cancellation action as mandated by the Mexican Law.
CGP submitted, among others, documents accrediting that the trademark “PINTUCO” was recognized as well-known by the Superintendency of Industry and Commerce of Colombia, and that products covered by the trademark were exported to a Mexican company. The Mexican Institute of Industrial Property (MIIP) declared the trademark cancelled by considering that evidence was not enough to prove the use of the trademark, including the exportation of products to a Mexican company, as it did not mean that said products were available to consumers, and even though the trademark was well-known in Colombia it did not change the fact that no use in Mexico had been proven.
CGP appealed and the MIIP’s decision was reversed in 2018 by the IP Specialized Federal Tribunal (IP SFT), which considered that by linking a plurality of the evidencing documents submitted by CGP it was possible to conclude that the trademark was indeed used.
Pintucom asked a Federal Circuit Court (FCC) to review the case. As a consequence, a final decision was rendered in 2019. Regarding the evidencing documents, the FCC partially agreed with the IP SFT by asserting that some of the documents it considered to reverse the IMPI’s decision would demonstrate use of the trademark but clarified that the principle of territoriality should not be strictly applied in the case of well-known trademarks recognized by another Paris Convention party.
In its interesting ruling, the FCC explained that some trademarks achieve a level of notoriety in trade that goes beyond the borders of the country where trademark registration exists. The FCC referred to articles 6bis and 10bis of the Paris Convention and 16 of the TRIPS Agreement to emphasise that member states shall prohibit the use of a trademark that is likely to create confusion with a well-known trademark considered as such in another member country. In the FCC’s opinion, this evidences the special protection that must be granted to trademarks holding the characteristic of being well-known, making clear that the strict application of the principles of territoriality and specialty might lead to abusive, illegal use and even bad faith registration of trademarks by third parties. According to the FCC, the purpose of the international provisions is to avoid both the registration and use of a trademark that may create confusion with a well-known trademark and acts of unfair competition that harm the consumer interests who might be misled with respect to the origin or quality of the relevant products.
As a consequence of the above considerations, the FCC established that disregarding that the domestic law requires use of a trademark within the Mexican territory, in the case of “PINTUCO”, and independently that the same was recognized as well-known in Colombia and not in Mexico, use of the trademark could be accredited by evidencing acts of commerce, offers and publicity taken place in part in either Colombia or Mexico, as the relevant issue was to verify that the products protected by the trademark were commercialized between both countries.
By Alessandra Vitagliano, Head of the Italian AIPPI Companies Group.
How to approach and be relevant for business ventures aiming for successful competition in global markets.
Why the Italian AIPPI Companies Group was born and how it operates in challenging times.
Intellectual Property, in a competitive global economy such as the one we are living in, is more than ever a tool for growth for any business and a driving force in the generation of medium and long-term value, mainly in the internationalization stage of companies.
In order to grow, both large companies and SMEs have to face the competitive context through a strategic approach to the marketplace where enhancement, development and protection of Intellectual Property plays a decisive role.
Today's market requires that companies increasingly compete on their soft skills and genius, which have to be materialized into something original to differentiate them from competitors. Protection of intangible assets is more and more key to win market share.
Intellectual Property intangibles are therefore perceived today, and in our case the perception is supported by facts, as the real engine of the modern economy. If properly managed, IP is the leverage for success and a solid finance stream. As such, revenues generated by the exploitation of Intellectual Property, if invested in finance innovation, do generate a virtuous management of the product lifecycle and a more solid approach to innovation pipeline management. Not surprisingly, in recent years we have seen increased funding conferred by the Italian Government to small and medium-sized Italian companies, aimed at boosting the registration of international trademarks and patents in Italy. Economic measures and tax advantages have been introduced to consolidate exploitation of Intellectual Property.
On the basis of such facts, the AIPPI Italian Group three years ago created a task force named AIPPI Companies Group, dedicated to spread the culture of Intellectual Property among companies. Efforts are also devoted to increase brand awareness of the Association among economic players.
The project started with a scenario analysis of the Italian economic and social environment - I remember to have involved at the very beginning in this task experts in different sectors such as businessmen, heads of marketing departments, vendors, sales manager, and agents. This evolution has been, as explained below, a different and brand new approach to the market by AIPPI. A different approach meant a new value proposition for our Association.
The way the AIPPI Companies Group operates is very simple. By holding workshops, AIPPI shows and demonstrates to Italian companies how Intellectual Property is a fundamental asset for generating long-term business growth and a different approach to the market.
The workshops are tailormade. Analyzing the territories in collaboration with regional entrepreneurs’ associations and/or Chambers of Commerce, our Group is able to identify the most fitting topics to be discussed, given the peculiarities of each Italian territory. Indeed, Italian value chains are built on Industrial Districts, each having different needs and different approaches to the market. Local associations are essential for the success of the workshops and for finding the correct arguments to present to meet local realities.
The strong point of our work is the introduction of the topics using concrete cases and practical examples relevant to the local economic-entrepreneurial reality, presented by professionals in the sector (AIPPI members), and by entrepreneurs and managers of companies generally located in the same area. Professionals explain the topics avoiding “legalese” language, since entrepreneurs need to understand presentations in a concrete language applicable to their daily business. Indeed, nowadays professionals cannot be perceived as external entities, they have to be emphatic and inside the companies. At the same time, entrepreneurs or managers bring their own experience on how protection of Intellectual Property has generated growth, or how such growth did not happen due to the lack of IP culture.
Before the pandemic, workshops took place in a roundtable format. To make the meeting extremely dynamic for participants, each topic was discussed for 30 minutes. Four to five different cases were considered at different tables and participants were invited to move from one table to the other after the given time. Interaction between participants was ensured as well as a vibrant approach during the workshop.
Because of the pandemic, meetings have been transformed into webinars. Notwithstanding the physical and virtual distance, thanks to a tailormade methodology, a kind of storytelling, the participation and interaction of entrepreneurs is ensured and enthusiastic.
Acknowledgement of the format and perceived recognition of the fact that protecting innovation and creativity is rewarding and generates competitive advantage, makes us really feel that we are delivering an outstanding service for Italian entrepreneurs as well as building a good reputation for our Association.
By Motasem Abu-Ghazaleh & Bassel El Turk of AIPPI UAE, Communications Committee.
On 5 January 2021 the GCC Supreme Council approved the Amended Patent Law (Regulation) for the Gulf Cooperation Council (GCC).
While the amended GCC Patent Law has yet to be made available to the public, as of 6 January 2021, the GCC Patent Office will no longer accept new applications, i.e. IP holders can no longer choose to file “one application” covering all 6 GCC members.
Applicants will have to go through the relevant national patent offices to obtain protection through the Paris Convention or PCT national phase. All laws, implementing regulations and local practices of these national patent offices will therefore apply to those new applications. It is likely that the GCC Patent Office will continue processing pending applications until grant unless the new amendment provides for other options.
Although it is still too early to give our full assessment based on the limited information available to us at the moment, it is quite reasonable to assume that the the cost of patent protection in the GCC countries will significantly increase from past estimates. This could of course pose a serious challenge to previously approved budgets for IP holders.
As for law firms, IP agents and prosecution service providers, this sudden change puts even more emphasis on the need to invest in Human Resources in the patent field. As the UAE is the second largest economy in the GCC and a global leader in innovation, we believe that it will become a focal point for regional patent filing strategies especially for applications that used to be previously filed with the GCC Patent Office.
By Yi Lu and Gary Zhang of China Sinda Intellectual Property, Beijing, China.
Astellas Pharma v. Zhejiang Hisun Pharmaceutical Co., Ltd. Jing 73 Xingbao No.1(2019)
The Beijing IP Court issued a preliminary injunction against a patent infringer in a pharmaceutical case at the end of 2019. As far as we know, this is the first time that such an injunction has been ordered by a Chinese court in a pharmaceutical patent case.
As we briefly discuss below, the case will have huge implications, not only for the pharmaceutical industry, but for patent protection and enforcement in general in China.
The patentee and petitioner in the case is Astellas Pharma (“Astellas”), a major Japanese pharmaceutical company. The infringer and respondent is Zhejiang Hisun Pharmaceutical Co., Ltd. (“Hisun”), a major Chinese pharmaceutical company publicly traded on the Shanghai Stock Exchange.
Astellas is the owner of a Chinese patent entitled “Stabilized Pharmaceutical Composition in Lyophilized Form,” which covers Micafungin sodium for antifungal treatment. The relevant drug, under the trade name Mycamine in some countries, has been approved for use in Japan, the U.S. and Europe. It is also approved for use in China since 2006.
Astellas noticed that Hisun applied for regulatory approval in China for a generic version of the drug in 2013. After China’s FDA approved the application in April 2018, Astellas, working with attorneys and other professionals at China Sinda, gathered relevant information and evidence in an effort to stop the infringement.
Considering the relatively short time left on the patent term and the time it would take to finish a patent infringement case, Astellas, on the advice of China Sinda, decided to petition the Beijing IP Court for a preliminary injunction (technically called “a pre-suit action preservation”). It is usually very difficult for Chinese courts to approve such a petition. Also, as far as we know, no Chinese court has issued such a petition in a pharmaceutical patent case before.
After several informal talks with both parties and receiving further submissions of evidence, the Beijing IP Court granted the petition in December 2019, after asking Astellas to post a bond. Hisun requested the court for a review but was denied. Therefore, the Beijing IP Court’s preliminary injunction order became final and effective in January 2020.
The court’s decision has major implications, not only for the pharmaceutical industry in China, but also for patent protection and enforcement in general in China. Many pharmaceutical companies have encountered difficulties in the Chinese market due to lack of a patent-link system or other effective means to stop generic drug makers in China. Although bringing patent infringement cases remains a tool and can be effective in certain situations, the time such cases take and the amount of damages awarded often make such cases not worthwhile. Patent owners in other industries also face similar situations.
The Beijing IP Court, in its April 23, 2020 press conference reviewing the court’s work in 2019, has named the case as one of the court’s 15 Exemplary Cases of 2019, ranking it as number one on the list. Six of the fifteen cases are patent-related cases. This clearly reflects the importance of the case as viewed by the court. The case is also specifically mentioned in “Intellectual Property Protection by Chinese Courts (2019),” published on April 21, 2020 by the Supreme People’s Court of China. This is an annual white paper released by the court that reviews important aspects of IP protection by Chinese courts in the previous year. The paper specifically identifies the preliminary injunction order in the case in praising the Beijing IP Court’s handling of a “difficult and complicated” and “new type” of case.
By Tougane Loumeau. Co-National Group Reporter of the French Group of AIPPI, Lawyer at Gide, Paris, France.
On 21 January 2021, APIG (an association representing the interests of French daily news publishers covering about 300 press titles) announced a framework agreement with Google on the remuneration of its members for the news links and snippets retrieved by the Google search engine. This follows the pronouncement on 9 April 2020, of an injunction against Google by the French competition authority, requiring Google to conduct negotiations in good faith with publishers and news agencies on the remuneration for the re-use of their protected content. The injunction was confirmed by the Paris Court of Appeal on 8 October 2020.
Press release of 21 January 2021 on www.alliancepresse.fr; Paris Court of appeal, 8 October 2020, case number 20/08071; French competition Authority, 9 April 2020, case number 20-MC-01
The issue at stake is the sharing of the value of press publications in a context where advertising revenues tend to shift from the press sector to information society operators such as search engines and social networks.
Considering that ‘the organisational and financial contribution of publishers in producing press publications needs to be recognised and further encouraged to ensure the sustainability of the publishing industry and thereby foster the availability of reliable information’, the EU Directive of 17 April 2019 introduced into Union law, a specific copyright-related right, to the benefit of publishers established in a Member State, in respect of online uses of their press publications by information society service providers. Under such a right, which expires two years after the first day of the year following the date on which the press publication was published, service providers need to obtain a licence from the publishers to reproduce or make available to the public, in whole or in part, that press publication (hyperlinking is not concerned). France transposed this directive into its law on 24 July 2019, becoming the first European country to do so.
In September 2019, shortly before the entry into force of this new law, Google announced that it would cease displaying snippets and pictures, leaving only titles and links, save for press articles coming from publishers who accepted to licence their rights for free. Google relied on the position that the law did not prohibit licenses for free, that press publishers derived significant revenues from Google-generated traffic and that Google had implemented press-friendly initiatives. Most publishers accepted the deal, claiming that they could not afford to lose such Google-generated traffic which is higher when the search results are enriched. They nevertheless argued that Google violated the spirit of the law and abused its dominant position and their economic dependency. The dispute took a political turn, notably with the joint French-German Ministerial Council declaring on 16 October 2019, that ‘France and Germany reaffirm their determination to implement the new EU Copyright Directive and to ensure full compliance with these rules’.
On 4 April 2020, the French Competition Authority, having received a request by SEPM (an association representing the interests of magazine publishers) and by the AFP news agency, ordered the injunction referred above, pending the decision on the merits of the case. The competition watchdog, and subsequently, the Paris Court of Appeal, held that at this stage of the investigation, Google is likely to have committed an abuse of a dominant position with ‘serious and immediate effect on the press sector, which, in a context of major crisis in the sector, deprives publishers and news agencies of a resource considered by the legislator as vital for the sustainability of their activities, and this at the crucial moment of the entry into force of the law’.
According to the APIG’s press release, the framework agreement sets out the principles under which Google will negotiate with the APIG members, individual licensing agreements that will provide access to News Showcase, a new press licensing programme recently launched by Google. According to a Reuters article of 12 February 2021, the deal is reported to involve the payment by Google of $76 million over three years. The French situation is reported to be closely scrutinized on an international level as many countries are faced with similar feuds. This situation is vividly illustrated by the recent tensions in Australia where Facebook temporarily banned news content on its social network in February 2021 and Google threatened to remove its search engine from the country before announcing deals with certain Australian media companies.
By Mr. Omkar Acharya & Ms. Priya Mehta of H K ACHARYA & COMPANY, India.
The Department for Promotion of Industry and Internal Trade (DPIIT), Ministry of Commerce and Industry, signed a Memorandum of Understanding (MoU) on 2 December 2020, in the field of Intellectual Property Cooperation with the United States Patent and Trademark Office (USPTO), Department of Commerce of the United States of America. As per an official announcement, the DPIIT Secretary, Under Secretary of Commerce for Intellectual Property and the Director of USPTO conducted a virtual signing ceremony for the MoU.
The MoU aims at increasing IP co-operation between the two countries. It will go a long way in nurturing the collaboration between India and the US and provide opportunities for both countries to learn from the experience of each other, especially in terms of best practices followed in the other country. It will certainly be a significant step forward in India’s journey towards becoming a major player in global innovation and will further the objectives of the National IPR Policy, 2016. The Director of USPTO said the new MoU is foreseen to work on two paths - substantive and administrative. Within the substantive pathway, he further said “we will jointly build capacity in the full range of intellectual property disciplines, including patents, trademarks, copyright, and geographical indications. On the administrative side, we will exchange ideas and share experiences on how to manage the operations of our national IP offices, including the use of tools that can enhance our efficiency and productivity,"
The objective of this Memorandum of Understanding is to further cooperation between the Parties in the field of Intellectual Property Rights, in accordance with the responsibilities of the two institutions in this area and in the strengthening of the Intellectual Property Offices, both in India and in United States, for the benefit of their respective industry and citizens.
The MoU pursues to facilitate the exchange and dissemination of best practices, experiences, knowledge on IP among the public, between and among the industry, universities, research and development organizations, small and medium-sized enterprises through participation in programs and events organized singly or jointly by the participants. The two sides will also collaborate in training programs, exchange of experts, technical exchanges, and outreach activities. This could include the joint organization of seminars, symposia, and workshops for stakeholders, including, inventors, scientists, professionals, Intellectual Property managers, etc. as well as for the general public with the objective of creating an Intellectual Property sensitive society. Small and Medium-sized Enterprises (SMEs) will be given special focus in the sensitization programs.
Both sides will jointly draw up and agree on an Annual Action Plan that will set out the specific cooperation activities to be carried out each year. The Annual Action Plan, inter alia, would include exchange of experiences between the U.S. and India in the training of Intellectual Property Office functionaries, IP managers, IP professionals and IP policy makers, development of appropriate modules and curricula for such training and development of continued institutional cooperation for regular academic exchanges between IP institutes in the two countries. Each Annual Action Plan will include the detailed planning for carrying out of the cooperation activities including the scope of the action, administration and assignment of resources, total costs and their distribution, time schedule and any other information necessary.
It also focuses on the exchange of information and best practices on processes for the registration and examination of applications for patents, trademarks, copyrights, geographical indications, and industrial designs, as well as the protection, enforcement and use of IP rights. Both the parties shall work together in capacity building in Intellectual Property Rights including automation and modernization of Intellectual Property Offices, development of databases, procedural rationalization and simplification of processing of Intellectual Property applications, inter alia, through the exchange of information on patent data, best practices in patent examination procedures, etc.
This Memorandum of Understanding is concluded for a duration of two years, with the aim of being renewed. The cooperation includes understanding various issues related to traditional knowledge, and the exchange of best practices, including those related to traditional knowledge databases and awareness-raising on the use of existing IP systems for the protection of traditional knowledge. As a part of this MoU, the two sides will develop a Periodic Work Plan to implement the MoU which will include detailed planning for carrying out the cooperation activities including the scope of action.
By Irina Ozolina, Moscow, Russia.
The Russian Government, on 1 January 2021, introduced new Rules about the amount of inventorship remuneration to be paid by employers to their inventors - employees by default (that is, in case there is no agreement between the employer and employee to the contrary). The amounts are comparatively high, which should be a reason for employers in Russia to pay closer attention to the internal policies on this matter. At the same time, from 1 January 2022, the employer will be obligated to offer to assign his patents to the inventor-employee free of charge, in cases where the employer is going to early terminate a pending patent for an invention created during employment.
The Russian law (art. 1370 of the Civil Code) clearly stipulates, that although the right for an employee’s invention initially belong to the employer, the inventor-employee should notify the employer about an invention, and the employer has 4 months from such notification to file a patent application or to notify the inventor about a decision to keep the invention secret. If within these 4 months the employer did not file a patent application and did not notify the inventor about a decision to keep the invention secret - in such a case an inventor has the right to file a patent application in his own name (if the patent is granted, he or she is obligated to grant a license to the employer for such an invention). But if an application is filed in the name of the employer, the inventor retains the right for remuneration.
Before the year 2014, the legislation empowered the Russian Government to set the minimal amounts of such remuneration which could not be amended by the parties. After 2014, the law limited the powers of Government in this field by setting up default rates, which are applicable only in cases where the parties did not agree to the contrary. Meanwhile, the parties may agree lower rates.
From January 1, 2021 the new Decree of the Russian Government on this point entered into force. An employer is to pay to their employee-inventors the following amounts by default:
- for the creation of an invention — 30% of the employee’s average salary,
- for the use of an invention — three average salaries for each year of use if the invention is used by the employer themselves; or 10% of the license fees due to the employer if there is a license agreement; or 15% of remuneration paid to the employer in case of an assignment. If there are several inventor-employees, these amounts are divided between them.
The Government also sets up the deadlines.
These rates are applied dispositively, that is, in relation to those authors of work made for hire with whom the employer has not signed an agreement on the remuneration payment. If there is such an agreement, payments to the authors are made in the amount and in the way stipulated by its provisions. Moreover, the author’s remuneration rates specified in the Rules are minimal and the employer has the right to pay a larger amount of remuneration.
In December last year, Article 1370 was amended. The amendment is to come into force from January 1, 2022. This amendment will introduce the new Clause 4.1 which obligates an employer to inform the employee about the employer’s intention to terminate patent protection before expiration of its term, and if the employee wants, the employer is obligated to assign their rights to a patent to an inventor-employee free of charge.
By Vikrant Rana of S.S. Rana & Co, India.
On 24 February 2021, the Government of the Islamic Republic of Pakistan deposited its instrument of accession to the Madrid Protocol with WIPO’s Director General. The Madrid Protocol will enter into force for the Islamic Republic of Pakistan on May 24, 2021.
By signing the accession of instrument, Pakistan becomes the 108th member of the Madrid System, which now covers 124 countries. Pakistan also becomes the fourth SAARC country, after India, Afghanistan and Bhutan, to join the Madrid Protocol.
Foreign applicants can also obtain trademark protection for their marks by designating Pakistan in their Madrid Application along with other member countries. From 24 May 2021, using WIPO’s online subsequent designation service, foreign companies and trademark owners can expand their trademark protection through the Madrid System to include the consumer market of Pakistan.
By HORIUCHI Kazunari of Kubota, Tokyo, Japan.
The IP High Court held that an invention entitled "method for settling Electronically Recorded Monetary Claims and a claim management server” does not meet the requirement of an invention (Article 2 (1) of the Patent Act) on the ground that its essence is exclusively directed to an arbitrary arrangement and does not utilize the laws of nature on nature's phenomena or order and therefore the invention is not a “creation of technical ideas utilizing the laws of nature” (IP High Court No. 2019 (gyo-ke) 10110, judgment issued on 18 June 2020).
(1) Case Summary
A patent application entitled "method for settling Electronically Recorded Monetary Claims and a claim management server” (applicant: MUFG Bank, LTD. (the “Plaintiff”), application number; 2018-193836) was rejected, and the Plaintiff filed an appeal before the JPO trial board. However, the JPO trial board decided to reject the application. Therefore, the Plaintiff filed litigation seeking rescission of the trial decision.
Claim 1 of the application is as follows:
Method for settling Electronically Recorded Monetary Claims comprising:
sending a first transfer signal to transfer an amount in accordance with the amount of the Electronically Recorded Monetary Claims to a creditor's account;
sending a first debit signal to debit an amount corresponding to a discount fee of the Electronically Recorded Monetary Claims from the account of a debtor of Electronically Recorded Monetary Claims; and
sending a second debit signal to debit the amount of the Electronically Recorded Monetary Claims from the debtor's account.
In general, “Electronically Recorded Monetary Claims” means monetary claims that are electronically recorded in the Registry of the Electronic Monetary Claim Recording Institution through banks or other financial institutions in order to accrue, transfer. etc., claims in contrast to traditional promissory notes.
- Court Judgement
The IP High Court held that the invention does not meet the requirement of an invention (Article 2 (1) of the Patent Act) as follows and dismissed the Plaintiff’s claim.
“Invention” of the Patent Act means “a highly advanced creation of technical ideas utilizing the laws of nature” and therefore those which do not utilize the laws of nature such as mental activities of humans, purely academic laws and arbitrary arrangements are not considered as an invention.
Whether the "invention for which a patent is sought" in the claims is considered as an invention or not should be judged based on whether the invention as a whole is considered as a creation of technical ideas utilizing the laws of nature or not in light of the problem to be solved by the “invention for which a patent is sought”, the configuration of the technical means for solving the problem and the technical significance such as effects and the like to be led from that configuration.
Therefore, even if some technical means are presented in the "invention for which a patent is sought", the invention is not an invention if the essence of the invention is directed to mere mental activities, purely academic laws and arbitrary arrangements as a result of comprehensive consideration.
The present invention adopts the structure in order to solve the problem of conforming to the operational standards of the Subcontractors Act by requiring the debtors to bear the burden of the discount fees.
It can be understood that the present invention is comprised of “transferring an amount to the creditor's account in accordance with the amount of the Electronically Recorded Monetary Claims” and “debiting an amount corresponding to a discount fee of the Electronically Recorded Monetary Claims from the account of a debtor of Electronically Recorded Monetary Claims” as a technical means of solving the aforementioned problem.
It can be understood that the effect that the present invention will make possible to effectively suppress the occurrence of claims which are difficult to discount is the effect of having debtors bear the discount fees.
Considering the above, the technical significance of the present invention is that the invention makes the debtor bear the burden of the discount fee.
The essence of the present invention is directed to an exclusively arbitrary arrangement and the invention does not utilize the laws of nature on nature’s phenomenon or order and therefore the invention as a whole is not a creation of technical ideas utilizing the laws of nature.
In light of the above, the invention does not meet the requirement of an invention (Article 2 (1) of the Patent Act).
The method adopted by this judgment to determine whether the invention is a creation of a technical idea utilizing the laws of nature or not by considering
(a) the problem to be solved by the present invention
(b) the configuration of the technical means for solving the problem and
(c) the technical significance such as effects and the like to be led from that configuration has been seen in some court cases such as the IP High Court Case No. 2014 (gyo-ke) 10101, judgment issued on January 22, 2015 and the IP High Court Case No. 2015 (gyo-ke) 10130, judgment issued on 24 February 2016.
By Ji Liu, of CCPIT Patent and Trademark Law Office, Beijing, China.
A quick glance at the newly issued Judicial Interpretation from China’s Supreme People's Court on how punitive damages apply to IPR infringement cases. The new rules are believed to be more friendly to the plaintiff and operability is more prominent.
The Supreme People's Court promulgated a new Judicial Interpretation (“JI”) on the Application of Punitive Damages to the Trial of Civil Cases of Infringement of Intellectual Property Right on March 3, 2021, which becomes effective on the same day, and is applicable to intentional infringement, with serious circumstances, of IPRs, including not only the rights in terms of copyright, trademark and patent, but also those under anti-unfair competition law and seeds law.
Punitive damages were first introduced into IP laws in China after the new Trademark Law and Anti-Unfair Competition Law were implemented in 2019.
- New rules to determine the intent in infringement of intellectual property rights
Article 3 of the new JI provides for some typical situations that could serve as indications of intentional infringement of IPR. For example, the situations in the following clauses are not uncommon in practice, on which the courts can hold a presumption of intentionality:
- the defendant continues to commit the infringing acts after being notified or warned by the plaintiff or the interested party;
- the defendant and the plaintiff or the interested parties have a relationship in terms of labor, service, cooperation, licensing, distribution, agency, representation etc., and have accessed the infringed intellectual property rights;
- the defendant has business with the plaintiff or interested parties or has negotiated to reach a contract, etc., and has accessed the infringed intellectual property rights;
- the defendant committed acts of pirating, or counterfeiting registered trademarks.
- New rules to determine the severity of the infringement of intellectual property rights
Article 4 of the new JI enumerates several typical situations of serious infringement of IPR, among which the following clauses are particularly noteworthy:
- after being punished by an administrative penalty or a court decision for infringement, committing the same or similar infringement again;
- committing the infringement of intellectual property rights as sole business;
- forging, destroying or concealing evidence of infringement;
- refusal to perform the preservation ruling.
- New rules to determine the basis for computing punitive damages
According to the new JI, the following could serve as the basis for computing punitive damages:
- the actual loss suffered by the plaintiff;
- the amount of the defendant’s illegal gains, or
- the profits obtained due to infringement
if the above is difficult to compute,
- the multiple of the license fee for the right in accordance with the law.
The reasonable expenses paid by the plaintiff to stop the infringement is excluded as the basis.
The new JI emphasizes that the plaintiff only assumes the burden of preliminary proof for the above-mentioned basis, while the defendant has the obligation to provide account books and information related to the infringement. The court may use the plaintiff’s preliminary evidence as the basis if the defendant refuses to cooperate.
- Coordinating the applicable standards of punitive damages in different laws
In the Trademark Law and Anti-Unfair Competition Law promulgated in 2019, the prerequisite for punitive damages is with “bad faith (or malice)”, but in other intellectual property laws, the prerequisite for application is with “intent”. The difference between the two terms causes some confusion in practice. The new JI clarifies that the meanings of "bad faith" and "intent" are consistent, so that they are in harmony with the provisions of the Civil Code.
By Dr. Malathi Lakshmikumaran, of of Lakshmikumaran & Sridharan, India.
The Division Bench of the Madras High Court vide its order dated 2 February 2021 set aside the order dated 6 August passed by the Ld. Single Judge whereby an interim injunction was granted in favour of Arudra Engineers Pvt. Ltd. (Respondent) and against Pathanjali Ayurved Ltd. (Appellant). By way of the impugned order the Appellant was restrained from using the trademark “CORONIL” and/or deceptive variations thereof in relation to their product/business in any manner until the disposal of the suit. The Appellant was also directed to pay costs of 500,000 INR.
M/s.Pathanjali Ayurved Limited & Anr V Arudra Engineers Private Limited
Division Bench of the Madras High Court
2 February 2021
The Respondent had registered the composite marks under No. 599281 and under No. 599279 (hereinafter collectively referred to as “label marks”) in the year 1993, mainly for chemical preparations used for sanitizing and cleaning heavy industrial machinery and containment units at factories with minimal corrosion. The marks are valid until 2027. The Respondent came to know in June 2020 through newspapers that the Appellant had been marketing their Ayurvedic tablets as a cure for the Coronavirus using an identical mark as that of the label marks. The Respondent noted that while the Appellant was using the trademark “CORONIL” in dissimilar business and products when compared to the Respondent, the adoption and use of the trademark “CORONIL” was identical to that of the label marks. Accordingly, the Respondent instituted a suit against the Appellant before the Hon’ble Madras High Court on the ground that the use of the name “CORONIL” by the Appellant constitutes infringement of the Respondent’s label marks. The Respondent sought an interim injunction restraining the Appellant from infringing the label marks and/or deceptive variations thereof, in relation to their products/business in any manner until the disposal of the suit. The Ld. Single Judge vide its order dated 06.08.2020 granted an interim injunction in favour of the Respondent and restrained the Appellant from using the word “CORONIL” for its immunity booster tablets.
Contentions before the Division Bench
The Appellant contended that the wordmark “CORONIL TABLET”, was applied for registration vide no. 4532424 in class 05, whereas the Respondent had registrations for the label marks under Class 01. It was contended that the nature of goods sold, class of consumers and business style of the Appellant and Respondent were different, and hence no similarity can be drawn between the CORONIL tablets of the Appellant and the chemical preparations sold by the Respondent. Further, it was contended that the mark, “CORONIL” and the label marks were visually and conceptually dissimilar. It was also argued that as per Section 17 of the Trade Marks Act, 1999 (hereinafter referred to as “the Act”), the registration was granted to the composite marks and not to their individual components. Further, the Appellant contended that the Respondent does not have a separate registration for a wordmark “CORONIL” as envisaged under Section 15 of the Act. In this regard, the Appellant placed reliance on the judgment of the Hon’ble Madras High Court in the case of Aravind Laboratories Vs. Modicare. It was further submitted that when the mark consists of different elements, the anti-dissection rule is applicable. In support of this, the Appellant placed reliance on the judgment of a Division Bench of the Madras High Court in the case of Rhizome Distilleries Pvt. Ltd. Vs. Union of India and others. By relying on the said judgment, the Appellant contended that the Respondent could not claim that only the dominant portion of its marks was similar to that of the Appellant’s mark and seek to maintain a claim of dilution. It was asserted that the two marks must be looked as a whole and the parts, such as ‘92B’ or ‘213 SPL’ could not be ignored.
The Appellant further argued that it was mandatory for the Respondent to have obtained separate registration for the word “CORONIL” to maintain a suit for infringement under Section 29(4) of the Act. It was further contended that the Respondent had not produced sufficient evidence to establish that their trademarks were “well-known” or have garnered a substantial reputation in India. Therefore, the claim of dilution of the Respondent’s mark due to the Appellant’s adoption of the trademark, “CORONIL” is not sustainable under Section 29(4) of the Act. The Appellant contended that the Respondent had failed to satisfy the following essential conditions under Section 29(4) of the Act to establish that the Appellant was diluting the registered trade mark 'CORONIL' by using the same for their product and to support the claim of infringement:
- That there was a Prima-facie strong resemblance of the two marks,
- That the senior mark had a reputation in India,
- That the junior mark is used for dis-similar goods/services,
- That the use of the junior mark is without due cause, and such use amounts to taking unfair advantage of or is detrimental to the repute/ distinctive character of the mark.
The Appellant relied on Intel Corporation Inc., CPM United Kingdom Limited , and ITC Limited Vs. Philip Morris Products SA and others to demonstrate that the reputation of a trademark must be assessed in relation to the relevant section of the public as regards the goods or service for which that mark was registered. Further, the Appellant contended that the Respondent had failed to prove that the adoption of the “CORONIL” trademark by the Appellant was “without due cause”. The Appellant submitted that it was common for the pharmaceutical drugs to name the same after the ailment/organ/medical compound used in the drug. Similarly, "CORONIL" had been named as an immunity booster against the Coronavirus. It was further submitted that other manufactures too have adopted names related to Corona Virus/Covid such as Covishield, Covaxin, Coroflu, Coviblock, Coruflu, Corovax, and Zycov-d. Therefore, it was argued that the Appellant had due cause in the adoption of the “CORONIL” trademark. In this regard, the Appellant relied on a decision of the High Court of Justice - Chancery Division in the case of Premier Brands UK Limited Vs. Typhoon Europe Limited, to demonstrate that the term "without due cause" must be read in a commercially sensible way.
Per contra, the Respondent contended that registration of the label marks has a disclaimer only with respect to the suffixes "92B" and "21SPL" and not to the word "Coronil". Therefore, the submission of the Appellant that the label marks were composite marks and that the Respondent could not prevent the Appellant from using a part of the mark was not correct. It was argued that the adoption and use of the trademark "CORONIL" by the Appellant was identical to that of the Respondent’s registered trademarks as it contained the prominent and distinctive feature of both of its label marks. In this regard, the Respondent placed its reliance on the judgment of the Madras High Court in the case of Thalapakattu Biriyani and Fast Food and others Vs. Thalappakatti Naidu Ananda Vilas Biriyani Hotel and others, wherein it was held that:
"43. If the essential feature of the trademark of Plaintiff have been adopted by the Defendant, the Defendant cannot contend that Plaintiff is not entitled to protection of the entire word mark and that there is no infringement of the entire mark….”
While relying on said judgment, the Respondent submitted that in the instant case the essential feature of the mark "Coronil" could not be infringed by the Appellant by claiming that the label marks were only a composite mark. Further, reliance was also placed on the judgments of the Madras High Court in the case of Rhizome Distilleries Pvt. Ltd. (supra), and of the Delhi High Court in the case of Himalaya Drug company Vs. S.B.L.Limited, it was contended that when deciding the question of infringement, the Court had to see the prominent feature of the trademark. The similarity and the identical nature of the registered mark and the offending mark was the primary requirement for a claim under Section 29 of the Act. The Respondent further contended that there was no such requirement that the mark should have a pan-India reputation cutting across all products and services since deception and/or confusion was not a requirement under Section 29(4) of the Act. It was argued that the reputation of the product in a particular field was sufficient for the Respondent to claim protection under Section 29(4) of the Act. In this regard, the Respondent relied on the judgment of the Bombay High Court in the case of Cipla Limited, Mumbai Vs. Cipla Industries Private Limited, Delhi, and another. It was contended that the reputation of the Respondent in India had to be judged from the perspective of the customer base of the Respondent and not that of the Appellant. With respect to the Appellant’s contention that the “CORONIL” mark was used with due cause, the Respondent contended that the Appellant was utilizing the trademark without any due cause as the Government of Maharashtra had banned the sale of Coronil by the Appellant and the Ministry of AYUSH directed that there no reference be made to the treatment of cure of Covid-19 on the packaging. In this regard, the reliance was placed on the judgment of the Madras High Court in the case of Blue Hill Logistics Pvt Ltd. Vs. Ashok Leyland Ltd. Thus, the Respondent contended that the Appellant through its adoption of the “CORONIL” trademark was diluting the distinctiveness of the label marks of the Respondent, diminishing and damaging its value, goodwill, reputation, and infringing the statutory and proprietary rights.
Decision of the Division Bench
The Bench noted that the Respondent had neither applied for nor registered the wordmark “CORONIL” even though it was a coined word and prima facie a distinctive word. The Court further observed that the Respondent’s label marks were registered with a disclaimer to the alpha numerals and that the Respondent did not claim monopoly over the word “CORONIL” in its registered label marks. The Court mentioned that if the Respondent held an independent registration for the word “CORONIL”, it could be said that a suit or an action for infringement of trademark under Section 29(4) was maintainable. Mere registration of a composite mark consisting of several features namely a device, a word, and disclaimed alpha numerals, 92 B and 213 SPL could not afford any right to file a suit for infringement under Section 29(4) of the Act. The Court also observed that under Section 17 of the Act, protection was afforded to the entire trademark as registered, and not to mere parts of the trademark. Therefore, the Bench held that for the purpose of Section 29(4) of the Act, the Respondent could not claim a monopoly over the word “CORONIL” since it was part of a composite mark. In this regard, reliance was placed on the judgment of the Hon’ble Supreme Court in the case of Registrar of Trade Marks Vs. Ashok Chandra Rakhit Ltd (1955), wherein it was held that the “distinct label registered as a whole cannot possibly give any exclusive statutory right to the proprietor of the trademark in close any particular word the name contained therein apart from the mark as a whole”. The Court further relied upon the decision of the Division Bench of the Madras High Court in Rhizome Distilleries Pvt. Ltd., (supra) and observations made therein:
"Conflicting composition marks are to be compared by looking at them as a whole, rather than breaking the marks up into their component parts for comparison. This is the 'anti-dissection' rule.... A mark should not be dissected or split up into its component parts and each part then compared with corresponding parts of the conflicting mark to determine the likelihood of confusion. It has been held to be a violation of the anti-dissection rule to focus upon the 'prominent' feature of a mark and decide likely confusion solely upon that feature, ignoring all other elements of the mark. Similarly, it is improper to find that one portion of a composite mark has no trademark significance, leading to a direct comparison between only that which remains”.
The Bench acknowledged that the test for infringement under Section 29(1) and Section 29(2) of the Trademarks Act, 1999 are materially different from the test for determining infringement under Section 29(4) of the Act. It was held that Section 29(4) of the Trademarks Act, 1999 is attracted only in case of use of a trademark which is identical with or similar with the registered trademark for goods or services which are not similar for which the trademark has been registered.
Based on the above, the Bench concluded that though the Respondent’s registered label marks incorporate the word “CORONIL”, it cannot be said that the word “CORONIL” adopted by the Appellant was similar to that of the registered label marks of the Respondent. The Bench also held that issues such as establishing the reputation of the Respondent in India and that the use of the offending word as a trademark by the Appellant was “without due cause” and was intended to take unfair advantage by using the offending mark and that such use was detrimental to the distinctive character or reputation in the registered trademark are matters which are to be determined only after trial.
The Bench thus held that since the Respondent had not claimed any monopoly over the word “Cornonil” by obtaining a separate registration of the aforesaid word as a word mark, the Bench was of the prima facie view that the impugned order of the Single Judge is liable to be set aside even if the Respondent may have a case for dilution of its trademark by the Appellant. The Bench also noted that in case, there is dilution of the trademark/label of the Respondent, they can claim damages which against can be determined only after a trial and not at the interim stage.
The Bench therefore held that the use of the word 'CORONIL' in the process of manufacture and sale of a tablet as an immunity booster by the Appellant, will not be detrimental to the distinctive character or repute of the registered label marks of the Respondent. It was held that the Respondent failed to establish a prima facie case for the purpose of grant of interim relief, that the balance of convenience was also not in favour of the Respondent and that the question of satisfying the requirement of irreparable loss or injury to the Respondent is also not relevant for the same reason. Accordingly, the Bench set aside the impugned order of the Single Judge and also the costs imposed on the Appellant.
 O.S.A.No.169 of 2020
 2011 (4) LW 55 = MANU/TN/2708/2011
 2012 (2) LW 204 (DB) = 2012 SCC Online Mad 651
 (2009) R.P.C. 15 (Case C-252/07)
 ILR (2010) 2 Delhi 455
 (2000) F.S.R. 767
 2012 SCC Online Delhi 136 = 2012 (194) DLT 536 (DB)
 2017 SCC Online Bom 6791 = AIR
 Vs. Ashok Leyland Ltd.
 2 SCR 252: AIR 1955 SC 558
New Board for AIPPI Mexico
We are glad to inform you the new Board of the Mexican Association for the Protection of Intellectual Property (AMPPI) was sworn in on 18 February 2021.
The Leadership Team is now comprised of:
President: José Juan MENDEZ
Secretary: JUAN CARLOS HERNANDEZ CAMPOS
Treasurer: Eugenio PÉREZ PÉREZ
Vice President: Jose Alejandro LUNA FANDINO
Best wishes to the new Board. Visit the AMPPI website here.
By Nina Fitzgerald, AIPPI Australia National Group Reporter.
The Australian AIPPI committee wishes to congratulate their Vice President, Sarah Matheson, on her recent recognition in the Australia Day 2021 Honours list. Sarah has very deservedly been recognised as a Member of the Order of Australia by the Governor General of Australia. The Order of Australia recognises Australians who have demonstrated outstanding service or exceptional achievement. Sarah was bestowed with the award “For significant service to the law, to intellectual property protection, and to the not for profit sector.”
Sarah has been a member of the AIPPI for over 20 years and has been active within the AIPPI community during this time. Sarah has served on a number of AIPPI committees and in various executive roles including as the Reporter General of the AIPPI for the period 2014 to 2018. Sarah was the first female Reporter General in AIPPI's 120 year history. She was also the first non-European Reporter General. In recognition of her extraordinary contribution to AIPPI, Sarah also received the AIPPI Award of Merit in 2019.
Sarah is passionate about intellectual property and her contribution to AIPPI has been invaluable. Congratulations on this worthy recognition!
Sarah Matheson (AM)
By Simone Vandewynckel, National Group Reporter, AIPPI Belgium.
The AIPPI Belgian Group held an online lunch webinar on 11 February 2021, on trade secrets litigation. The title of the presentation was: "Litigation, evidence and trade secrets: what’s new? A cross view from practitioners with an insight in recent case law". The speakers were two Belgian attorneys-at-law, Ms. Liesbeth Weynants and Ms. Sophie Lens.
The EU trade secret directive (Directive 2016/943 of 8 June 2016 on the protection of undisclosed know-how and business information (trade secrets) against their unlawful acquisition, use and disclosure) was implemented into Belgian law through an Act dated 30 July 2018 that entered into force on 24 August 2018. Since then, several actions have been filed with the Belgian courts based on the new legal provisions on trade secret protection. This AIPPI lunch webinar was the perfect occasion to provide a round-up of the first nearly two and a half years of application of the new provisions. The webinar was moderated by the President of AIPPI-BE, Ms. Dominique Kaesmacher (Senior Consultant in IP), and the presentation was given by the duo of Ms. Liesbeth Weynants (attorney-at-law, Partner at Hoyng Rokh Monegier) and Ms. Sophie Lens (attorney-at-law, Counsel at Altius), who is member of the AIPPI Standing Committee on Trade Secrets. Because of the online format, AIPPI Belgium was delighted to be able to welcome AIPPI members from other jurisdictions.
In the first part of the webinar, Ms. Lens reviewed recent judicial decisions from 2019 and 2020 dealing with several aspects such as:
(i) what constitutes a secret
(ii) that has commercial value,
(iii) reasonable steps to protect secrecy, and
(iv) the sharing of the burden of proof between the claimant and the alleged infringer.
In the second part of the seminar, Ms. Weynants focused on the issue of evidence. Neither the directive nor the new Belgian Act provided for a “descriptive seizure” type procedure for collecting evidence of possible unlawful acquisition, use and disclosure of trade secrets. Therefore, practitioners rely on the existing framework within the Belgian Judicial Code to obtain search orders. Ms. Weynants described three cases in which the Belgian courts granted such orders. Next, Ms. Lens gave an update of the activities within the AIPPI Standing Committee on Trade Secrets of which she is a member, including several projects in the pipeline. Finally, there was a Q&A session with the attendees.
Some key takeaways from the session were that trade secret protection is a topic that does interest Belgian courts, who have shown themselves eager to provide guidance in the last two and a half years. A general trend is that though “fishing expeditions” are forbidden, cases based on factual descriptions that are as precise and complete as possible, have a good likelihood of success before the Belgian courts. Indeed, the Belgian courts have so far shown an excellent level of understanding of trade secrets, willingness to grant speedy evidence preservation measures and thorough analyses on the merits.
The webinar was a great success, with the online format allowing for many more attendees than is generally the case for the traditional in-person lunch seminars.
By Laurence Loumes, AIPPI France, Co-National Group Reporter.
• Patents – Artificial Intelligence – Sufficiency of disclosure & Inventive Step
The committee led dynamically by Pauline Debré & Marc Névant went straight to work! With 3 meetings already held, the group composed of over 25 members started to tackle the questions. First, a review of the questions was done collectively to ensure that we all had the same understanding of the questions and not duplicate our answers. Second, a subcommittee was formed to address the specific questions regarding the current state of law. Two other subcommittees are planed: one for sufficiency of disclosure and the other for inventive step. Finally, a cursory technical brief on AI algorithms has been kindly provided by a patent attorney and an invited guest who both hold a PhD in that technical area. The mix of technical and legal backgrounds in the group provides it with even more strength.
- Transversal group
Q279 - Reasonable awareness in compensation for infringement of IP rights
The working group on this study question, led by Amandine Métier and Gaston Vedel, has been able to meet virtually 2 times with all participants (around 15 people) to discuss about the awareness of the infringement in assessing the damages to be awarded to the right holder. Sub-groups dedicated to patents, trademarks / designs and copyright have been created and met virtually a few times to work on the answers for the questions re current law and practice and improvement thereof. Questions relating to harmonization will be addressed during the next virtual meeting at the beginning of March. The group is missing some people from industry, so feel free to contact Amandine or Gaston who are eager to have the industry view on this interesting topic!
By Blanca Mejia, AIPPI CA-Caribbean Regional Group, Co-Group Reporter.
Updates from Honduras:
The submission by electronic means of applications for Distinctive Signs and Electronic Signature has been enabled as of Monday, 27 April 2020 via email.
- As of Monday, 17 August 2020 and until the suspension of the National Sanitary Emergency, the submission via email of Copyrighted Works Applications has been enabled.
- As of 17 August 2020, as part of the development of the virtual platform for digital government called SIN + FILAS, the Online Presentation of New Applications is made available to users via www.ip.gob.hn
- As of November 2020, legal deadlines concerning IP matters, as well as the filing of oppositions, etc. is made available via email.
- As of 4 January 2021, the filing of Renewals of Distinctive Signs, License of Use, Change of Address, Change of Name, Merger, Annuity Payment, Reclassification, Rehabilitation, Transfer and Change of Holder is authorized by e-mail.
- All applicants, legal representatives and the general public of distinctive signs, patents, copyrights and electronic signatures filed electronically must contain the respective advanced electronic signature of the applicant or their legal representative as of January 25, 2021.
Likewise, for the procedures to request certificates, certifications, searches, payment of annuities and rehabilitations, they may be signed by equivalent electronic signatures as of 25 January 2021.
This new technological transition has been accelerated by the Covid-19 pandemic. The Property Institute is providing most of its services through its web platform.
Among the benefits for its users are the services of the General Directorate of Intellectual Property in Honduras (Direccion General de Propiedad Intelectual en Honduras (DIGEPIH)). (This is the name under which the Honduran IPO is known).
The Communications Coordinator of the Property Institute, Norma Expinal, explained that 98% of these procedures are now carried out through the platform.
Any lawyer from anywhere in the country can submit their application online.
By Jan Dombrowski, AIPPI Germany, Secretary.
On 22 April 2021, the traditional trilateral seminar of the French, Polish and German National Groups will take place as an online meeting to inform our members about current developments and case law in IP in these three countries. The seminar already has a long tradition and has taken place in Poland, France or Germany in alternating 2-year intervals.
Originally, it was planned to hold the seminar on 22/23 April 2021 in Munich at the German Patent and Trademark Office. Due to the unfortunately still existing COVID 19 restrictions, we have postponed this seminar by one year. It will now take place on 21/22 April 2022 in Munich.
Nevertheless, the three National Groups would like to inform their members about current developments and case law even under the current restrictions. Therefore the National Groups have decided to organize an online seminar on 22 April 2021 from 3 p.m. to 6 p.m. The first part will deal with current developments in patent law and the second part with current information on trade mark, design and copyright law.
Further information on the speakers, the exact topics and the registration options will follow shortly. Registration and participation will be free of charge.
By Leandro Corral, AIPPI CA-Caribbean Regional Group, Co-Group Reporter.
First Collective Trademark
On 1 February 2021, the National Industrial Property Office (ONAPI) registered the collective trademark “Dom Tropical Avocado from Dominican Republic”, the first collective trademark to market this product to the United States. The owner of said trademark is the Dominican Association of Exporters (ADOEXPO). Agroindustria Ocoeña, AMR Agro, Exportadora Tavarez and Grupo 33 are the first four Dominican companies that will use this “collective brand” whose intention is to support the production of this fruit, promote the nutritional richness of the product and validate the quality and origin in other markets.
- On 17 August 2020, attorney Salvador Ramos took office as the new Patent and Trademark Office (ONAPI in Spanish) Director in the Dominican Republic. 
- On 19 August 2020, attorney Jose Ruben Gonell took office as the new Natiional Copyright Office (ONDA in Spanish) Director in the Dominican Republic. 
- The Chamber of Deputies of the Dominican Republic has on its agenda the review of projects for an eventual modification of Article 44 of Law 65-00 on Copyright. This project was presented to José Rubén Gonell Cosme, director of the National Copyright Office (ONDA) of the Dominican Republic, to share the comments on the projects presented. The Dominican Association of Intellectual Property (ADOPI) submitted its considerations criticizing the modification proposals. Likewise, many lawyers specializing in the matter consider dangerous and an infringement of the rights recognized in the Free Trade Agreement that the Dominican Republic has with the countries of Central America and the United States (DR-CAFTA), those administered by the World Organization of the Intellectual Property (WIPO), especially with regard to Dominican and foreign film and audiovisual producers. Details will follow after the possible approval or cancellation of the law changing project.
By Santiago Mayoral, AIPPI CA-Caribbean Regional Group, Guatemala.
New PTO digital portal
As from November, 2020 all users may effectuate payments of “official fees” through a new PTO digital portal where “vouchers” are first generated and thereafter paid in the Bank portal.
On January 5th, 2021, attorney Ingrid Romaneli Rivera Recinos took office as the new Patent and Trademark Office (PTO) Director in Guatemala. 
The Guatemalan PTO is reviewing its approach regarding the application of Priority rights in priority trademark applications, pursuant to a memo published in its website this past July, 2020. As per its new criteria, applicants should submit a certified priority document (and its translation) within a 9-month non-extendable deadline after the Guatemalan filing date; regardless of the fact that the priority was duly invoked in the application. Details will follow after the recently appointed PTO Director reviews such criteria.
By Lorena Mersan, National Group Reporter for AIPPI Paraguay.
First certificate of registration for a designation of origin issued
On 11 March 2020, the National Office of Intellectual Property (DINAPI) issued the first certificate of registration for a designation of origin (DO) to the Interprofessionnel du Vin de Champagne Committee. It is the first application that concludes the entire preliminary recognition and registration process established in Law Nº 4923/2013 regulated in 2019 by Decree Nº 1286.
The Law of Geographical Indications and Designations of Origin was enacted in the year 2013, however, its regulation was passed in the year 2019, consequently, we expect that new registrations of DO will be issued in the upcoming months.
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