When civil disputes arise, in addition to seeking binding judgment through civil proceedings, parties can resolve the disputes through Alternative Dispute Resolution (ADR) mechanisms such as arbitration, settlement, and mediation. To avoid the complexities of possible future litigation and expedite dispute resolution, parties to an agreement commonly include an “ADR clause” in their agreement such as “the parties shall seek to resolve the dispute with ADR resolution mechanisms instead of filing a lawsuit.” In the case where one party breaches the ADR clause and files a lawsuit, the other party is able to demur to the suit. Regarding the effect of the demurrer, according to Article 4 of the Arbitration Law, if one party bypasses arbitration which is required by the agreement to be conducted prior to lawsuits and files a lawsuit, the other party can petition for suspension of the proceedings with the Court. As for the case involving breach of other ADR clauses, while there have been opinions that above Article of the Arbitration Law, there seems to be no decisive consensus in practice. Continue Reading
THE FEDERAL COURT OF APPEAL UPHOLDS CANADA’S ANTI-SPAM LEGISLATION AS CONSTITUTIONAL
On June 5, 2020, the Federal Court of Appeal (“FCA“) released its decision in 3510395 Canada Inc. v. Attorney General of Canada et al., 2020 FCA 103, in which it upheld the constitutionality of Canada’s anti-spam legislation (“CASL“). CASL is the federal law which regulates the way in which businesses may communicate with consumers using electronic means. The decision also clarified the requirements to rely on the business-to-business exemption which allows businesses to avoid the consent and content requirements of CASL in certain circumstances.
The Canadian Radio-Television and Telecommunications Commission (“CRTC“) previously found (in two decisions) that the Appellant, a small business owner which offered professional training courses, committed multiple violations of CASL because it sent commercial electronic messages (“CEMs“) to individuals without their consent and without a functional unsubscribe mechanism. The CRTC ordered the Appellant to pay an administrative monetary penalty (“AMP“) of $200,000, reduced from $1,100,000. Continue Reading
Rebranding or launching a new product in the CPG space? Don’t neglect intellectual property
The coronavirus pandemic has presented many challenges for those in the consumer packaged goods (CPG) space, and beyond. Supply chain disruptions, rapid migration of point-of-sale from brick-and-mortar outlets to online retail, and overall shifts in consumer preference, eating and cooking habits, and personal safety needs has required many CPG companies to reevaluate and reinvent their products and businesses as a whole. Continue Reading
WIPO introduces new business online-service that provides evidence of an intellectual asset’s existence
On 27 May 2020 WIPO launched new online business service, WIPO PROOF1, that provides tamper-proof evidence of the existence at a point in time of any digital file, including data sets, in any format.
The WIPO PROOF service generates tamper-proof evidence proving that a digital file existed at a specific point in time, and that it has not been altered since that time. An evidence in this case will be a digital WIPO PROOF token which consists of a date- and time-stamped digital fingerprint of the file (or data).
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Can Patent Claims be Cancelled Based on Indefiniteness by the PTAB during an IPR?
For the Patent and Trail Appeal Board (“PTAB”), the PTAB allows a petition for inter parties review (“IPR”) to request cancellation of claims in a U.S. patent. For an inter parties review of a patent, the PTAB institutes review and determines if claims of a patent are unpatentable. Can the PTAB cancel claims based on indefiniteness during an IPR? The answer is NO!
In federal court, the validity of a U.S. patent may be challenged on the basis of failure to comply with any requirement of 35 U.S.C. § 112, which includes indefiniteness in the claims. In 1980, the U.S. Congress established “reexamination” of a U.S. patent as to patentability of claims based on certain prior art typically known as “ex parte reexamination”. Subsequently, the U.S. Congress established “inter parties reexamination” that gave third parties the opportunity to participate in the reexamination process based on certain prior art. Continue Reading
FILMING PERMITS IN GREECE
Although in Greece, in principle, no permit is required for filming in public open-air spaces, there are few exceptions to the above rule that could make the situation a little bit complex. These exceptions are mostly linked with the venue where the filming is going to take place, regardless of whether we are talking about a film, a commercial video, a documentary or news reports and of whether the journalists and/or crew represent foreign or local media and producers. The present article aims to give useful and practical insight on the above issues due to the fact that there have been recent legislation amendments.
The Law 3905/2010 (art. 36 par.1) explicitly provides that “No permit is required for filming in open-air spaces, unless special permits are provided by law and are issued by the relevant archaeological, municipal or other authorities”. It goes without saying that filming on private property requires a permit of the owner of such property. Continue Reading
The Impact of COVID-19 on U.S. Trademark Applications and Registrations
On March 31, 2020, the U.S. Patent and Trademark Office (USPTO) issued a notice concerning the waiver of certain trademark-related timing deadlines pursuant to Section 12004 of the Coronavirus Aid, Relief, and Economic Security Act (the CARES Act).
Powers Created by the CARES Act
The CARES Act (which was signed into law by President Trump on March 27, 2020) provides the USPTO with the temporary authority during the “emergency period” to extend deadlines established by the Trademark Act. Continue Reading
The Open COVID Pledge
Intellectual property rights are – by definition – monopolistic. How, then, can researchers, charities and NGOs collaborate with business in the development of new technologies to control and eradicate COVID-19?
The Pledge
The Open COVID Pledge[1] is intended to encourage business and academia to pledge to make their intellectual property (IP) available free of charge for use in ending the COVID-19 pandemic and minimising the impact of the disease. The Pledge was developed by the Open COVID Coalition, an international group of scientists and lawyers who seek to accelerate the rapid development and deployment of diagnostics, vaccines, therapeutics, medical equipment and software solutions. Continue Reading
A Recipe for Patent Protection: Are food products patentable?
In the past several years, the food and beverage space has seen an explosion of innovation—alternative meat products, plant-based dairy and protein alternatives, CBD- and collagen-infused everything, and functional foods and beverages and containing everything from pre/pro/post-biotics to nootropic and adaptogenic herbs, just to name a few. And many of these innovations have led to wildly successful products with household brand recognition (think: Impossible Foods and Vital Proteins).
While many of these brands may be protected by robust trademark portfolios, what role have patents played in defining their territory in the market? Patent protection can add significant value to an emerging brand by keeping competitors at bay, serving as an asset or collateral to secure financing, or as leverage to license across different industries or markets. Yet, the vast majority of conventional foods occupying the shelves of your local grocery store are likely not covered by a utility patent. Which begs the question, are food products patentable? Continue Reading
U.S. Supreme Court – Willfulness Is Not a Prerequisite for a Profit Award for Trademark Infringement
In its unanimous April 23, 2020 opinion in Romag Fasteners v. Fossil, Inc., the Supreme Court made clear once and for all that a successful trademark plaintiff is not required to establish that the defendant’s infringement was willful to be entitled to an award of the infringer’s profits. In other words, profits may be disgorged for less than willful infringement of a trademark.
Prior to the Supreme Court’s decision, federal courts were split on the issue of whether willfulness was a prerequisite to an award of the infringer’s profits. Romag gave the high court the perfect opportunity to resolve this split. By way of background, Romag Fasteners, Inc. and Fossil, Inc. had signed an agreement to allow Fossil to use Romag’s fasteners in Fossil’s handbags and other leather goods. When Romag discovered that factories in China making Fossil products were using counterfeit Romag fasteners, Romag sued Fossil and certain retailers of Fossil products for trademark infringement pursuant to the Lanham Act, 15 U. S. C. §1125(a). While the jury determined that Romag had sufficiently demonstrated infringement, the U.S. District Court for the District of Connecticut, relying on Second Circuit precedent, refused to grant Romag an award of profits on the basis that Romag had failed to demonstrate that Fossil acted willfully. After the district court’s decision was upheld by the Court of Appeals for the Federal Circuit, the Supreme Court granted certiorari and heard the case on appeal. Continue Reading
