lunedì 30 giugno 2008

ICANN decision on Top Level Domains

Internet Corporation for Assigned Names and Numbers' (ICANN) recently decided regarding rules on new Top-Level Domains. The decision will allow companies to register their brands as generic top-level domain names (TLDs). For instance, Microsoft could apply to have a TLD such as '.msn', Apple apply for '.mac', and Google for '.goog'.

giovedì 19 giugno 2008

Switzerland - Shape of Panton chair is distinctive

The Swiss Federal Administrative Court has held that the shape of the Panton chair could be registered as a trademark (Case B-6050/2007, February 20 2008).

The Panton chair is a world-famous design classic created by Danish designer Verner Panton in 1967. The chair is undoubtedly a work of art under copyright law.

Panton's heirs filed an application for the registration of the shape of the Panton chair as a trademark for goods in Class 20 of the
Nice Classification. The Swiss Federal Institute of Intellectual Property (IGE) rejected the application (Case AM-AA 09/03). On appeal, the Swiss Federal Administrative Court reversed the decision of the IGE.

With regard to the issue of distinctiveness (Article (2)(a) the
Trademark Act), the court considered whether the shape of the Panton chair differed from shapes that are "customary or expected by the public" for the relevant goods. The court found that the shape of the Panton chair differed from customary or expected shapes, and was thus distinctive. In addition, the court briefly considered whether the shape of the chair had a purely functional purpose (Article 2(b) of the act), and found that this was not the case. Therefore, the court concluded that the three-dimensional shape of the chair could be registered as a trademark. The decision has now been appealed.

The notion of "shapes that are customary or expected by the public" is not expressly contained in the act, but has been used by the Swiss Federal Court to decide whether the shape of a product falls within the public domain under Article (2)(a) of the act.

It will be interesting to see how the Swiss Federal Court will rule on the case on appeal. Until now, the IGE and the Federal Administrative Court have tried to avoid having to interpret Article 2(b) of the act. In the present case, the interpretation of the notion of 'nature of the goods' is likely to be decisive.

The phrase "the shape which gives substantial value to the goods", which is contained in Article 3(1)(e) of the
First Trademarks Directive (89/104/EEC) and Article 7(1)(e) of the Community Trademark Regulation (40/94), is not included in the Swiss Trademark Act. However, in an earlier decision, the Swiss Federal Court seemed to treat aesthetic and functional features in the same way. Such interpretation would allow the inclusion of both aesthetic and functional characteristics in the notion of 'nature of the goods', thus avoiding an (unintended) discrepancy between EU and Swiss law. In Benetton (Case C-371/06, September 20 2007), the European Court of Justice had held that the shape of a product which gives substantial value to that product cannot be registered as a trademark regardless of whether it has acquired distinctiveness through extended use.

China - Compendium of China National Intellectual Property Strategy adopted

China - Compendium of China National Intellectual Property Strategy adopted
The State Intellectual Property Office (SIPO) recently announced that the Chinese State Council has promulgated a "Compendium of China National Intellectual Property Strategy".
The 'Strategy' aims to bring China to a higher level of intellectual property right (IPR) creation, utilisation, protection and administration by 2020, as well as improving IPR protection and enhancing public awareness of it. It should also help enhance Chinese competitiveness and facilitate the opening up of China to the outside world.
The plan is to complete the IP law-enforcement and administration system (including by strengthening judicial measures against IP infringement), further advancing IP laws and regulations and strengthening IP's guiding role in economic, cultural and public policies.
The new "Strategy" should make China more attractive to small and medium-size enterprises that are still reluctant to do business in the People Republic because of their fear of systematic infringements of their IP rights.

martedì 17 giugno 2008

eBay held to be jointly responsible for sale of Hermès fakes

In a landmark decision, the Troyes High Court has held that eBay was jointly responsible for the sale of counterfeit Hermès bags on its auction platform. The court considered that eBay, in its capacity as "provider of online communication services" for a brokerage activity, had the obligation to discourage use of its website in an unlawful manner by providing appropriate means to sellers, purchasers and IP rights owners.

EU - The European Generic Medicines Association publishes a report on patent system and generic drugs

European Union. The European Generic Medicines Association publishes a report on patent system and generic drugs
The European Generic Medicines Association (EGA) recently published a report on patent-related barriers to market entry for generic medicines in the EU. According to EGA, several flaws of the European patent system prevent the effective entry of cheap generic medicines onto the market.
The "patent linkage", i.e. the practice of linking market approval for generic drugs to a series of conditions related to the original patented pharmaceutical products, is identified as one of the main barriers for generic medicines. According to the report, this practice is inconsistent with European law. Moreover, EGA argues that national medicine agencies apply it in different and ill-defined ways, often under the pressure of the industry, thus hindering the timely and effective introduction of generic medicines onto the market.
The EGA report also points out other weaknesses of the patent system having the same effect, such as the granting of low-quality pharmaceutical patents, the patent thickets and follow-on patents and the long patent litigation procedures.

giovedì 12 giugno 2008

European Patent Office - Special Edition 2008 of the EPO Case Law

The European Patent Office (EPO) recently published the case law of the EPO boards of appeal for 2007 as a supplement to its official journal.
The publication aims to present and facilitate access to the boards' case law. It sorts the most important decisions by topic (inventive step, novelty, sufficiency of disclosure, etc.) with a short related summary. It also gives statistical information on the activities of the boards (for example that they have settled 1702 cases in 2007).