Newsletter November 2020

Articles & Case Notes:

 

WIPO cooperates with the Milan Chamber of Arbitration (CAM) to promote Mediation finalized to resolve IP international disputes.

By Cristina Bianchi, AIPPI Italy

Disputes concerning intellectual property rights involve different jurisdictions and are often related to technical issues. To resolve these disputes, traders in the sector need fast but accurate, flexible and professional procedures able to satisfy their needs and their business.

Mediation can be a previous alternative step and (re-)solution to the traditional Court trials or arbitration all around the world where every day, more and more, we are witness of the transformation of the internal market in a globalized one.

Do you want to buy shares in songs?

By Disha Dewan of R K Dewan & Co, India.

Have you ever considered investing in your favourite song and becoming a part or full owner thereof? Without actually even writing or creating the song? Welcome to the world of buying and selling of royalties and equity in individual songs and song catalogues. Right from newcomer artists to the world’s most well-known stars are currently involved in this practice. In a world where subscribing to streaming services such as Spotify has become the norm, it is interesting to consider delving into the royalties’ space as an alternative investment opportunity.

Indian IP Appellate Board fully operational at last!

By Manisha Singh, AIPPI India

The working of IPAB remained shrouded with mystery of its being operational for certain number of years and non-operational for remaining period. The basic reason for its non-functionality is delay in appointment of the Chairman, Vice Chairman, Judicial members or Technical Members. The reason for this delay was attributed to number of petitions filed primarily to challenge the IPAB rules made for the appointment of Chairman, Vice Chairman, Judicial members and Technical members. This issue appeared to have been settled by the new Tribunal, Appellate Tribunal and other Authorities (Qualifications, Experience and other Conditions of Service of Members) Rules, 2017.

The 4th amendment to China’s Patent Law will come into effect on June 1, 2021

By Xiaoling DUAN of Wanhuida Intellectual Property, Beijing, China.

On October 17, 2020, the National People’s Congress passed the 4th amendment to China’s Patent Law, which will come into effect on June 1, 2021. The main changes include 1) damages in civil litigation, 2) eligibility of partial designs, 3)patent linkage for pharmaceuticals, 4)patent term compensation, 5)administrative enforcement, 6)regulation on abuse of patent right, 7) patent exploitations/utilizations, and 8)novelty grace period.

Revised Calculation Method of Damages and New Inspection System in Japan

By Hirohito Katsunuma of Katsunuma International Patent Office, Tokyo, Japan.

The Patent Act in Japan was amended in May 2019. The revised calculation method of damages for patent infringement has come into effect from April 1, 2020, and a newly established inspection system has come into effect from October 1, 2020.

Attempt to Sell the Registered Trademark to the Genuine Right Owner or Threaten to Sell It Third Parties Constitute Bad Faith According to the Turkish Court of Appeals

By Berrin Dinçer Özbey & Elif Melis Özsoy of Gun + Partners Law Firm, Istanbul, Turkey.

Mezzo Mix, 11th Chamber of the Court of Appeals, date 11.11.2019 no. 2018/5813 E., 2019/7065 K.

A recent decision of approval by the 11th Civil Chamber of the Court of Appeals (“CoA”) in Turkey demonstrates that attempts to sell the registered trademark to the genuine right owner or threaten to sell it to third parties constitute bad faith.

   

Berrin Dinçer Özbey                                                       Elif Melis Özsoy

Thailand’s DIP Revives Proposed Amendments to the Patent Act - Update

By Darani Vachanavuttivong, of Tilleke & Gibbins, Bangkok, Thailand.

Thailand’s Department of Intellectual Property (DIP) published its latest draft of proposed amendments to the Patent Act on September 30, 2020 with public consultations scheduled from September 30, 2020 to October 31, 2020.  The proposed amendments cover both patent and design.

Working with the Peruvian Administrative Office in Industrial Property during the Pandemic

By Maria del Carmen Arana Courrejolles, National Group Reporter, AIPPI Peru

Currently, in this time of a pandemic, applications for Patents, Trademarks, Industrial Designs, Utility Models, as well as different actions to defend industrial property rights (opposition, cancellation due to lack of use, nullities, infractions) are filed electronically in INDECOPI's virtual parts table.

IPOPHL Issues Rules on Copyright Owners’ Resale Rights

By Ma. Sophia Editha Cruz-Abrenica, of Villaraza & Angangco, Philippines.

In order to protect artists and other gifted people in relation to their intellectual property and creations as mandated by the Philippine Constitution and in order to clarify the rights of artists to proceeds of subsequent transfers or resale, the Intellectual Property Office of the Philippines (“IPOPHL”) issued on July 2020 Memorandum Circular No. 2020-023 covering the Implementing Rules and Regulations on Resale Rights.

Geographical Indications in the Russian Federation

By Vladimir Biriulin, President of the AIPPI Russian National Group.

Russia has plans for joining the Lisbon Agreement for the Protection of Appellations of Origin and their International Registration, its Geneva Act. This yet another reason to introduce geographical indications in the law. According to the Lisbon Agreement “appellation of origin” means the geographical denomination of a country, region, or locality, which serves to designate a product originating therein, the quality or characteristics of which are due exclusively or essentially to the geographical environment, including natural and human factors. The last version of the Agreement is known as Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications. It expands the scope of protection to geographical indications…

Treaty on Trademarks, Service Marks and Appellations of Origin

By Vladimir Biriulin, President of the AIPPI Russian National Group.

Several countries of the Eurasian Economic Union were discussing the issue of a common trademark for a number of years. It was necessary to coordinate positions of all participating countries therefore multilateral talks took much time. Finally, on February 3, 2020 the Treaty was signed in Moscow. As on September 2020 no translation in English is available. The treaty allows applicants to obtain trademark registration simultaneously on the territories of all countries – members of the Eurasian Economic Union. These countries are: Armenia, Belarus, Kazakhstan, Kyrgyzstan, Russia. There will be one registration included in the common Register…