Journal of Intellectual Property Law & Practice - current issue

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International copyright: a prime example

Tue, 06/09/2015 - 10:08
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Pain for Pfizer: skinny Actavis lacks subjective intent to infringe, but ground-breaking relief settles 'Lyrical' patent dispute

Tue, 06/09/2015 - 10:08

Mr Justice Arnold permits Actavis to launch pregabalin with a skinny label, and does not mandate the additional safeguards demanded by Warner-Lambert; the scope of Swiss-form claims is clarified; later he orders the National Health Service of England to issue prescribing guidelines to instruct doctors not to prescribe generically for the patented indication.

Categories: Local News Feeds

A strong body of proof is essential in bad faith cases

Tue, 06/09/2015 - 10:08

A bad faith allegation in a trade mark dispute related to the ownership of the unregistered COLOURBLIND trade mark. The COLOURBLIND brand was created and used by Mr Cox, who assigned it to his company, RSVP Design Ltd, after resigning from Pangyrus Ltd. Mr Cox's new company received a Community trade mark (CTM) for COLOURBLIND, and Pangyrus was subsequently unable to invalidate it by proving entitlement to that sign through the use it allegedly made when Mr Cox was one of its shareholders and by establishing RSVP Design Ltd's bad faith at the time of filing the CTM.

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How to justify decisions while rejecting evidence

Tue, 06/09/2015 - 10:08

The General Court has clarified rules on the basis of which the Office for Harmonisation in the Internal Market (OHIM) may reject material evidence supplied by the proceedings party after the expiry of the prescribed time-limit.

Categories: Local News Feeds

Trade-marks Opposition Board member erred in refusing request to amend statement of opposition

Tue, 06/09/2015 - 10:08

In five consolidated applications for judicial review, the Federal Court of Canada ruled that a member of the Trade-marks Opposition Board erred in refusing the applicant's request for leave to amend its statement of opposition.

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Broadcasters to pay royalties for ephemeral recordings

Tue, 06/09/2015 - 10:08

In three consolidated applications for judicial review, the Federal Court of Appeal held that broadcasters were liable to pay royalties for ephemeral recordings.

Categories: Local News Feeds

The Italian Supreme Court rules on infringement of strong trade marks

Tue, 06/09/2015 - 10:08

The Italian Court of Cassation has ruled that there is no infringement of a strong trade mark when it could not be confused with a sign that, although similar, did not interfere with the core elements that distinguish the strong mark from the others.

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St John Ambulance 'saved' by court

Tue, 06/09/2015 - 10:08

PJ Uniform Sdn Bhd, a trader which used an emblem belonging to St John Ambulance Malaysia, a charitable organization, without the latter's consent was held by the Malaysian High Court to be liable for trade mark infringement and passing off.

Categories: Local News Feeds

Rihanna in the right place at the right time: Rihanna v Topshop passing off ruling upheld

Tue, 06/09/2015 - 10:08

The Court of Appeal has recently dismissed an appeal by Topshop against a finding that its sale of a t-shirt emblazoned with an image of Rihanna on it amounted to passing off.

Categories: Local News Feeds

Fresh Trading held to be equitable owner of Innocent Smoothies' 'the Dude' copyright

Tue, 06/09/2015 - 10:08

A court ruled that Fresh Trading (the owner of the Innocent Smoothies brand of soft drinks) is the equitable owner of the copyright in ‘the Dude’ logo, despite the fact that it did not pay for it.

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FLIP-TOP not distinctive of Philip Morris, rules Federal Court of Canada

Tue, 06/09/2015 - 10:08

The Federal Court of Canada held that the term ‘FLIP-TOP’ was not distinctive of Philip Morris as it described a type of packaging and was not necessarily indicative of source.

Categories: Local News Feeds

An innovative decision on supplementary protection certificates for combination products?

Tue, 06/09/2015 - 10:08

The Court of Justice of the European Union (CJEU) refuses a supplementary protection certificate (SPC) for a combination product comprising of a known and innovative ingredient, where the innovative ingredient already had the benefit of an SPC.

Categories: Local News Feeds

I'm with the band

Tue, 06/09/2015 - 10:08

This article is a retelling of one attorney's first experience representing an entertainment group.

From retaining the attorney to the making of the music video, to broadcasting live on cable television, the story highlights the intellectual property decisions unique to music groups.

Categories: Local News Feeds

Parallel patent proceedings between the European Patent Office and UK courts

Tue, 06/09/2015 - 10:08

In the European patent system, proceedings concerning patent validity can run concurrently in both the European Patent Office (EPO) and a number of national courts. In the UK, a number of cases have addressed the details of how the relationship should be managed between the courts and the EPO when such parallel proceedings are on foot.

Until recently, this had appeared to be settled by rules and guidelines that were logical, if not ideal in all their implications. However, a series of recent cases concerning the revocation and amendment of patents in the EPO have now posed difficult questions for judges at first instance and on appeal.

The solutions have required a significant shift in the UK and EPO relationship and raise awkward questions of their own about the possibility of patents being re-litigated between the same parties. This matters at another level, because the UK experience may inform the relationship between the Unified Patent Court (UPC) and the EPO in similar circumstances.

Categories: Local News Feeds

Copyright collective management organizations in Nigeria: resolving the locus standi conundrum

Tue, 06/09/2015 - 10:08

Copyright law focuses on the protection of the rights of authors and owners of copyright works from unauthorized exploitation by third parties. Central to the protection of copyright is the right of copyright owners to sue and enforce alleged infringement. Collective management organizations (CMOs) developed globally to facilitate the exercise of this right by copyright owners, given the nature and pervasiveness of copyright infringement.

However, it appears from the provisions of the Nigerian Copyright Act 2004 that the exercise of the right to sue on behalf of its members by CMOs in Nigeria is not unrestrained. This essay examines the extent to which the right of CMOs to sue is restricted by the Copyright Act and seeks to resolve some perceived legal conflicts in this regard.

Essentially, the work will serve as an authoritative material on the issue of locus standi regarding CMOs for legal practitioners, judicial officers, copyright administrators and academics both within and outside Nigeria.

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The breeder's exemption under UPOV 1991, the Convention on Biological Diversity and its Nagoya Protocol

Tue, 06/09/2015 - 10:08

The 1991 International Convention for the Protection of New Plant Varieties (UPOV 1991) provides for a breeder's exemption allowing the protected plant variety to be used to breed new varieties.

The United Nations Convention on Biological Diversity (CBD) and its Nagoya Protocol provide a scheme for access to plant materials (genetic resources) that might be used for breeding new varieties and details an obligation to share any benefits.

This article shows that, while the CBD, the Nagoya Protocol and UPOV 1991 operate separately, in their implementation in domestic laws, the CBD/Nagoya Protocol access and benefit-sharing contracts can limit the UPOV 1991's breeder's exemption, restricting further breeding of new varieties.

Categories: Local News Feeds

Ambush marketing in major sports events: war minus the shooting?

Tue, 06/09/2015 - 10:08

There has been a trend towards increased regulation of ambush marketing in major sports events. Given the substantial investments involved in organizing and sponsoring these events, host cities seek to protect the investments made by event organizers and their official sponsors from unauthorized association by ambush marketers.

This article explores how ambush marketing in major sports events should be regulated. Three arguments are presented. First, ambush marketing should be prohibited insofar as it involves some form of deceptive conduct or intellectual property right infringement. Secondly, the trade marks regime is a blunt tool for regulating ambush marketing. Thirdly, sui generis ambush marketing laws tend to be too vaguely framed and overbroad. Therefore, they may not be the most suitable mechanisms to address ambush marketing.

Ultimately, ambush marketing practices should be addressed through creative advertising practices and not by excessive legal regulation. In practice, a less legalistic marketing response may present a simpler, more direct and more economical solution for problematic ambush marketing practices.

Categories: Local News Feeds

Inherent distinctiveness: new cases for the old rule

Tue, 06/09/2015 - 10:08

Australian trade mark law allows an applicant who seeks to register a trade mark to demonstrate that the proposed mark is inherently adapted to distinguish the applicant's goods or services. Generally, a mark is considered to be ‘inherently adapted’ to distinguish the applicant's goods or services when it is not descriptive of the character or quality of the goods or services. Two recent cases by Australian courts clarify some areas of how the ‘inherently adapted’ test is applied.

In Mastronardi Produce Ltd v Registrar of Trade Marks, a single judge of the Federal Court of Australia held that, even though the time at which the inherently adapted test is applied is the date of application to register, any evidence of use of the mark before that date cannot change whether a mark is inherently adapted to distinguish.

In Cantarella Bros Pty Limited v Modena Trading Pty Limited, the majority of the High Court of Australia held that a mark will be inherently adapted to distinguish unless it makes a direct reference to the goods or services with which it will be used. This is so even where the mark has a meaning in a language other than English.

Categories: Local News Feeds