Show Articles
Publish Article
You would like to have your own article published?
To give us a note,
click here
To keep updated on the latest amendments to international trademark laws
click here
Articles
01-24-2012Franck Soutoul, Inlex IP Expertise, France
Jean-Philippe Bresson, Inlex IP Expertise, France
Show Partner Info
New French exception to pharmaceutical IP rights
A new French Law of December 29, 2011, has introduced article L. 5121-10-3 in the Public Health Code. Its provisions exclude generic drugs from trademarks and designs monopolies that relate to the appearance, shape or color of a reference pharmaceutical product.
French Law No. 2011-2012 relating to the ‘reinforcement of sanitary safety of medicines and health products’ of December 29, 2011 (published in the Official Journal on December 30, 2012) has introduced a new article L. 5121-10-3 in the Public Health Code which gives prevalence of Generics over trademarks and other IP right by providing the following:
“The owner of an intellectual property right protecting the appearance and the texture of oral pharmaceutical forms of a reference product […] cannot prohibit the oral pharmaceutical forms of read more 01-23-2012Elena Valuiskich, Metida Law firm of Reda Žabolienė, Lithuania
Show Partner Info
Non-Traditional Trade Marks issues in Lithuania II
To begin with, the Trade Mark Law of Lithuania (hereinafter – Law) defines a mark which may be registered as a trade mark quite liberally. Colours or combinations of colours and their compositions are covered under provision of applicable marks by the Law. However the Rules on Examination of Trade Marks ZR/03/2004 constrict this provision by stating that a mark shall be declared devoid of any distinctive character if it consists of only one colour either two colours (especially basic ones) represented in basic read more 01-11-2012Isik Ozdogan, Moroglu Arseven Law Firm, Turkey
Ezgi Baklaci, Moroglu Arseven Law Firm, Turkey
Show Partner Info
A New Exception to Use Requirement
The Turkish Court of Appeals recently rendered a landmark decision regarding the trademark use requirement. According to Turkish practice, trademarks which have not been in use for five consecutive years (starting from the registration date) may be subject to non-use actions. According to local legislation and practice, only the use of a trademark in Turkey fulfills that requirement. Additionally, importing goods bearing the trademark is also considered as “use” for that trademark.
Now, the Turkish Court of Appeals granted a new exception to the above explained rule. In a recent lawsuit which was filed against an international broadcasting company for the cancellation of its trademark based on non-use, the Court of Appeals found that a trademark may meet the use requirement without actually being produced or served read more 01-09-2012Huw Moses, Appleby Intellectual Property Services Limited, Cayman IslandsNew Patent & Trademark Law in the Cayman Islands
The new Patents and Trade Marks Law 2011 took effect in the Cayman Islands on 7 December 2011.
Proprietors of patents and trade marks can now only transact business with the Registry of Patents and Trade Marks in the Cayman Islands (“the Registry”) via a registered agent who must be resident in the Cayman Islands.
The Registry will now maintain a register of registered agents who may transact business with the Registry in the Cayman Islands. Although many read more 01-06-2012Sung-Nam Kim, Kim & Chang Intellectual Property, South Korea
Alexandra Belec, Kim & Chang Intellectual Property, South KoreaNotable Changes to the Trademark Act
An amendment to the Korean Trademark Act ("TMA") was announced on December 2, 2011 to reflect provisions of the recently ratified Free Trade Agreement ("FTA") between Korea and the U.S. The amendment will come into force on the effective date of the FTA. The FTA is expected to be effective as of February 1, 2012. However, this date could be delayed by several months because the procedures for implementing the FTA are not yet completed in the U.S.
The most notable changes which will be introduced in the TMA are as follows:
1. Protection of Sound and Scent Marks
Under the amended TMA, it will be possible to protect sound or scent marks as long as they are capable of graphical representation (for example by way of a sign, character or figure).
If an application for a sound or scent mark is filed with a priority claim read more 12-06-2011Isik Ozdogan, Moroglu Arseven Law Firm, Turkey
Ezgi Baklaci, Moroglu Arseven Law Firm, Turkey
Show Partner Info
Amendment in Class 35
The Turkish Patent Institute (TPI) has recently amended the Regulation on the Classification of Goods and Services with Regard to Trademark Applications (BİK/TPE 2007/2). With the amendment, subclass 6 of class 35, that covers retail services, was changed as follows:
“Services for bringing together “….”* to enable costumers conveniently to view and purchase them (these services provided through retail store, whole sale store, electronic area, catalogue and the other similar ways).
*Specify the “specific goods” or “sector” that the services will be given. In case the services cover the whole good or sector, use the phrase “variety of goods”
On the other hand, Art. 5 of the same regulation contains an indication with regard to conflict that may arise between the retail services within class 35. read more 12-05-2011Mitsuharu Takeuchi, SOEI Patent & Law Firm, JapanPractical Use of the Defensive Mark System in Japan
One option for protecting a well-known trademark in the Japanese Trademark System is to obtain a “Defensive Mark Registration.” In 1960, the Japanese Trademark practice introduced “Defensive Marks” based on the British Trademark System in order to enhance the protection of well-known trademarks.
A Trademark Registration only provides protection when a third party uses the mark with respect to goods/services similar to or the same as the goods/services designated for read more 12-02-2011Elena Valuiskich, Metida Law firm of Reda Žabolienė, Lithuania
Show Partner Info
Non-Traditional Trade Marks’ issues in Lithuania
Trade marks are traditionally perceived as words, numbers, pictures, symbols or combinations of these elements. However development of marketing and promotional strategies has broadened the scope of what is considered to constitute a trade mark. Therefore, colours, shapes, moving images, holograms, even sounds, scents and tastes nowadays may serve as marks distinguishing the goods and services of one person from those of another. Consequently although under numeral disputes, read more 12-01-2011Tomas Jakubauskas, Law firm Misiunas and partners
Ramunas Mikulskas, Law firm Misiunas and partnersDomain Name Litigation in Lithuania
The first Lithuanian case related to domain names was solved in November of 2005. Back then there were no legal acts that would directly regulate registration of domain names, stating which registrations of domain names should be treated as unfair and what remedies could be applied if one registered domain name in bad faith. Also, there was no special institution (arbitration or mediation) which would specialize in solving domain name disputes read more 11-08-2011Nick Rose, Field Fisher Waterhouse LLP, UK
Rebecca Pakenham-Walsh, Field Fisher Waterhouse LLP, UKWho will come up smelling of roses?
The Court of Justice of the European Union (CJEU) delivered its eagerly awaited preliminary ruling on questions referred to it by the High Court in relation to the keyword advertising dispute between Interflora and Marks and Spencer (M&S).
This ruling is a welcome addition to the evolving body of European case law on this subject and provides further guidance on the use of a competitor’s brand name as a keyword to link to an advertisement for rival products and services.
The CJEU, however, did not provide any in depth commentary on the application of the ruling to the facts of the Interflora case so the parties continue to play a waiting game while the baton is passed back to the English High Court to decide which way the case should go.
Background
Google (not a party to this case) operates an internet search engine which generates substantial revenue through its ‘Google Adwords’ service. read more
INLEX IP EXPERTISE
Mr Franck Soutoul
68, rue Pierre Charron
75008 Paris
France (FR)
Tel + 33 (0) 1 56 59 70 90
Fax + 33 (0) 1 56 59 70 91
fsoutoul@inlex.com
www.inlex.comFranck Soutoul is the cofounder and partner of INLEX created in 1996.
He is a European Trademark Attorney before the OHIM, involved in trademark law, industrial design and drawings, author’s rights, domain names, EU IP matters and unfair competition.
Franck is also an active member in the industrial property world and he regularly shares his knowledge and daily experience in industrial property law by giving courses to young lawyers as well as professionals in marketing and advertising awareness.
He is a member of the APRAM (French Association of Trademark Law and Industrial Design), of the ECTA, of MARQUES and recently became an observer of APAA due to his personal interest for ASIA.
Franck is a regular contributor to French and Anglo-Saxon publications and he is the founder of the INLEX newsletter: “IP talk” (www.ip-talk.eu).
METIDA Law firm of Reda Zaboliene
Reda Zaboliene
Gyneju str. 16
LT-01109 Vilnius
Lithuania (LT)
Tel + 370 5 2490830
Fax + 370 5 2490833
patent@metida.lt
www.metida.euMETIDA Law firm of Reda Zaboliene provides legal services for Lithuanian and foreign clients in the field of intellectual property, corporate, commercial, real estate, contract law and in other law spheres, represents natural and legal persons in civil cases.
METIDA is a leading law firm in intellectual property. Due to longstanding experience and accumulated knowledge we provide legal help to our Lithuanian and foreign clients professionally and operatively. Influential int. publishers & organizations evaluated our practice: According to European law guide Chambers Europe 2008, METIDA is one of the best Lithuanian IP law firms. Patent attorney and attorney-at-law Reda Zaboliene is appreciated by clients because of efficiency, effectiveness and operativeness, they said.
The Office of Harmonization for the Internal Market (OHIM) marked our law firm as the representative of Lithuanian applicants with the largest number of European community patent and design applications filled.
Moroglu Arseven Law Firm 
Isik Ozdogan
Istiklal Cad. No:142 Odakule K:12 Beyoglu
34430 Istanbul
Turkey (TR)
Tel + 90 212 245 74 71
Fax +90 212 245 74 73
ip@morogluarseven.av.tr
www.morogluarseven.av.trMoroglu Arseven is a full service corporate and commercial law firm with an active IP department led by Isik Ozdogan. Our IP section has the experience and knowledge of the Turkish IP landscape to successfully protect all types of intellectual property rights, prosecute counterfeiters, and manage intellectual property portfolios both in Turkey and abroad. Our clients, which include the textile industry, automobile manufacturers, oil companies, popular brands, and coffee chains, are recognized worldwide.
Our expertise includes trademarks, copyrights, industrial designs, patents and utility models, and domain names. For some clients, we create customized, comprehensive anti-counterfeiting strategies. We coordinate raids to seize counterfeit goods, initiate trademark infringement cases and criminal actions, and stop counterfeit imports and exports at customs. In addition to this, we handle high volume cease and desist letters and represent clients at settlement negotiations.
Our IP department is a Regular contributor to the World Intellectual Property Review on the Turkish legal environment. Attorneys in the IP department are members of ECTA, INTA, MARQUES, PTMG, and many other international IP organizations.
Moroglu Arseven Law Firm Isik Ozdogan
Istiklal Cad. No:142 Odakule K:12 Beyoglu
34430 Istanbul
Turkey (TR)
Tel + 90 212 245 74 71
Fax +90 212 245 74 73
ip@morogluarseven.av.tr
www.morogluarseven.av.trMoroglu Arseven is a full service corporate and commercial law firm with an active IP department led by Isik Ozdogan. Our IP section has the experience and knowledge of the Turkish IP landscape to successfully protect all types of intellectual property rights, prosecute counterfeiters, and manage intellectual property portfolios both in Turkey and abroad. Our clients, which include the textile industry, automobile manufacturers, oil companies, popular brands, and coffee chains, are recognized worldwide.
Our expertise includes trademarks, copyrights, industrial designs, patents and utility models, and domain names. For some clients, we create customized, comprehensive anti-counterfeiting strategies. We coordinate raids to seize counterfeit goods, initiate trademark infringement cases and criminal actions, and stop counterfeit imports and exports at customs. In addition to this, we handle high volume cease and desist letters and represent clients at settlement negotiations.
Our IP department is a Regular contributor to the World Intellectual Property Review on the Turkish legal environment. Attorneys in the IP department are members of ECTA, INTA, MARQUES, PTMG, and many other international IP organizations.
METIDA Law firm of Reda ZabolieneReda Zaboliene
Gyneju str. 16
LT-01109 Vilnius
Lithuania (LT)
Tel + 370 5 2490830
Fax + 370 5 2490833
patent@metida.lt
www.metida.euMETIDA Law firm of Reda Zaboliene provides legal services for Lithuanian and foreign clients in the field of intellectual property, corporate, commercial, real estate, contract law and in other law spheres, represents natural and legal persons in civil cases.
METIDA is a leading law firm in intellectual property. Due to longstanding experience and accumulated knowledge we provide legal help to our Lithuanian and foreign clients professionally and operatively. Influential int. publishers & organizations evaluated our practice: According to European law guide Chambers Europe 2008, METIDA is one of the best Lithuanian IP law firms. Patent attorney and attorney-at-law Reda Zaboliene is appreciated by clients because of efficiency, effectiveness and operativeness, they said.
The Office of Harmonization for the Internal Market (OHIM) marked our law firm as the representative of Lithuanian applicants with the largest number of European community patent and design applications filled.