Clarifications on resolution of non-use disputes against bankrupt trademark holders

On March 21, 2018, the Russian Supreme Court published its Decision in case No. A55 5711/2014, which may have a dramatic impact on resolution of trademark non-use disputes.

Under the merits of the case, Heineken filed a non-use claim against Samarskiy Vodochnyi Zavod based on its failure to use the trademark Volzhskaya Okhota for 3 consecutive years.

Initially, the claim was addressed to the IP Court, which usually acts as a first instance court for non-use claims. Later, the case as an exception was transferred to the Commercial Court of Samara Region to be decided within the framework of a bankruptcy case initiated a few years ago against the Respondent. The change of venue was reasoned by the presumption that termination of the trademark may reduce the amount of bankruptcy assets thus negatively affecting the creditors’ rights (following another precedent IP Court’s Decision in case No. SIP-360/2016, dated November 23, 2016).
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Legal Risks Abound as the World Cup Kicks Into Gear

As with any major event, the FIFA World Cup presents an attractive marketing opportunity for brands to connect with consumers around the world. The World Cup is a particularly hot ticket for marketers because it only occurs once every four years and is followed closely by fans worldwide. It also helps that soccer (err … football) is the most popular sport in the world. Although the buzz can present a compelling marketing tool, marketers should be wary of the unique legal risks associated with leveraging the 2018 FIFA World Cup Russia without permission.

Ambush Marketing

Marketers are naturally attracted to popular events – especially sporting events – in order to connect with fans. However, marketers typically cannot use names or trademarks associated with those events without becoming official sponsors, and those sponsorship rights can cost tens (if not hundreds) of millions of dollars. Given how lucrative sponsorships are, the organizations staging these events are quite aggressive in stopping non-sponsor brands from free riding on their promotional efforts. Continue Reading


Recent focus on the United States Supreme Court has surrounded who President Trump will nominate to replace retiring Associate Justice Anthony Kennedy.  (The nominee is Brett Kavanaugh of the D.C. Circuit.)  However, once October is here, the 2018 Term begins and focus will shift back to the cases before the Court.  One of those issues will be the extent that sales (or offers for sale) of an invention before the filing of a patent application will prevent the issuance of a patent.  Also known as the ‘on-sale bar’ doctrine, the outcome will have broad implications for startup companies and small businesses holding intellectual property assets.

The on-sale bar doctrine originally appeared in the Patent Act of 1952; “[a] person shall be entitled to a patent unless — … the invention was … on sale in this country more than one year prior to the date of the application for patent in the United States…”[1]  The Leahy-Smith America Invents Act of 2011 (“AIA”) made the first changes to the on-sale bar in almost 60 years, adding the word “claimed” before “invention” and adding the phrase “or otherwise available to the public”.  Post-AIA, “[a] person shall be entitled to a patent unless – the claimed invention was…on sale, or otherwise available to the public before the effective filing date of the claimed invention…”[2] Continue Reading

IP Court restrained to sell and market a generic drug until the patent expiry

On 24 April 2018 the Intellectual Property Court published its Decision in case A41 85807/2016 between Swiss-based Novartis AG and local generic Nativa LLC.

The IP Court’s position in this case may result in an extra defense granted for patent holders against unfair practice of registration of generics drugs until patent expiry.
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The Canadian Trademarks Act amendments, which are allegedly coming into force in early 2019, include the removal of the requirement that a trademark applicant declare that it has been using its trademark before it files the application or before registration in Canada. The amendments are meant to bring Canada’s laws in line with international treaties. The Canadian government wants these changes to simplify the registration process.

As to the current law and the claim to registration based on use, an applicant can file in Canada based on its actual use of the trademark in Canada, stating a date of first use, or based on proposed use, declaring its intent to use the mark in Canada. When an application is based on proposed use, the applicant must file a declaration of use of the trademark in order to obtain registration. The amendments remove these requirements. The fear is that the effect of the new law will be to clutter the registry with applications for trademarks and then registrations that would likely never be used. Continue Reading

The Danish implementation of the Trade Secrets Directive – does the new law benefit the owners or the infringers?

As of June 9, 2018, an entirely new Law has been implemented in Denmark, namely the Danish Act on Trade Secrets, which implements the Directive of the European Parliament and the Council on protection of trade secrets (hereinafter “the Directive”). The new law replaces paragraph 23 in the Danish Marketing Act, which up until now has been the primary legislative guard against unlawful use of trade secrets, of course supplemented by case law.

Prior to the Directive, trade secrets have been a solely national affair in EU which has caused uncertainty as to the protection of trade secrets and the enforcement of such in case of unlawful use.

The purpose of the Directive is to establish a uniform regulation for the protection of trade secrets for businesses within the European Union to make it easier for businesses and in particular businesses operating cross border to get an overview of the trade secrets legislation. Continue Reading

Smartphones, tablets, hard drives and the blank tape levy: Recent developments in Greece

The issue of the blank tape levy, due for certain devices and media which are suitable for the reproduction of protected works as equitable remuneration for the reproduction for private use, and which is payable by the importers or manufacturers of such devices, has often in recent years been a subject of dispute between creators, Collective Management Organizations and businesses of the IT and electronics sector in Greece.

The amendments made to the Greek Copyright Law 2121/1993 by Law 4481/2017 last summer, included the modification, after several draft proposals, of Article 18 of Law 2121/1993 on equitable remuneration and the blank tape levy. In the final provision voted in July 2017, the legislator decided to explicitly include in the general enumeration of devices subject to the blank tape levy, computers, tablets and smartphones, provided, though, that their RAM size is larger than 4GB. However, in the specific provisions where the percentage of the levy for each device category was provided, while for computers and tablets with a RAM larger than 4GB the blank tape levy was set at 2% of their value, no percentage at all was set for smartphones. Continue Reading

The Catch-22 Of Litigating Your Trade Secrets Case Without Revealing The Secrets Themselves

“You mean there’s a catch?”

“Sure there’s a catch,” Doc Daneeka replied. “Catch-22. Anyone who wants to get out of combat duty isn’t really crazy.”

There was only one catch and that was Catch-22, which specified that a concern for one’s own safety in the face of dangers that were real and immediate was the process of a rational mind. Orr was crazy and could be grounded. All he had to do was ask; and as soon as he did, he would no longer be crazy and would have to fly more missions. Orr would be crazy to fly more missions and sane if he didn’t, but if he was sane, he had to fly them. If he flew them, he was crazy and didn’t have to; but if he didn’t want to, he was sane and had to. Yossarian was moved very deeply by the absolute simplicity of this clause of Catch-22 and let out a respectful whistle.

 [Heller, Catch-22, at 52 (1999, S &S Classics Edition))] Continue Reading

European Unified Patent Court agreement ratified by the UK

On 26 April, the UK ratified the EU’s Unified Patent Court (UPC) agreement. Although much of intellectual property law and practice is already harmonised amongst EU member states, a UPC would set up a common patent court for the hearing of intellectual property cases, and the direct applicability of its rulings, across all EU member states – something which is currently not the case, as patent cases (even for European Patent Office granted patents) are presently litigated on a country by country basis. The UPC would have the competence to hear cases regarding European patents with unitary effect, but also other European patents registered within states which have ratified the UPC agreement.

The UK is now the 16th European state to ratify the UPC agreement and, with France having ratified in 2014, only Germany’s ratification (alongside the UK and France, as one of the three countries with the most European patents in effect) is necessary for the agreement to come into force and for the UPC to come into operation. Presently, Germany’s constitutional court, the Bundesverfassungsgericht, has requested the German Federal President hold off on ratification until a domestic constitutional challenge to the agreement has been dealt with. The case is listed to be heard later this year. Continue Reading

NCAA Obtains Injunction Over “March Madness” and “Final Four” Trademarks

The U.S. District Court for the Southern District of Indiana sided with the National Collegiate Athletic Association (NCAA) and awarded a permanent injunction against game developer Kizzang Inc. (Kizzang) over a mobile and online game that infringed the NCAA’s trademarks “March Madness” and “Final Four.”

The NCAA administers inter-collegiate sports across the United States and is best known for the Division I Men’s Basketball Tournament, held in March each year. The NCAA owns a number of trademarks related to that tournament, most prominently “March Madness,” “Final Four,” “Elite Eight” and “Sweet Sixteen,” and does not permit using the NCAA’s name, trademarks or tickets in connection with marketing or promotional activities without prior approval. Continue Reading