Validation of European Patents in Cambodia effective from March 1st, 2018

Validation of European Patents in Cambodia effective from March 1st, 2018 As already stated in our February 2017 IP Alert, Cambodia signed a validation agreement with the European Patent Office, allowing extending the effects of European patent applications to Cambodia.

Change of the time limit for paying the third year annuity

Change of the time limit for paying the third year annuity- The administrative council of the European Patent Organisation has changed Rule 51 (1) EPC regarding the advance payment of the third year annuity:

Creation of a Chamber of invalidity and cancellation for lack of use of trademarks before the NIIP: state of the talks

At this time, anyone who wishes to obtain the invalidity or the cancellation for lack of use of a French registered trademark, either by way of claim or counterclaim, must bring the action before one of the French District Courts (Tribunaux de Grande Instance) having jurisdiction over trademark matters.

The French Patent Office allows the correction of the date of expiry of already granted SPCs following issuance of C-492/16

In case C-471/14 (Seattle Genetics, Inc.), the Court of Justice of the European Union held that “the date of the first marketing authorization in the Union” as referred to in Article 13(1) of Regulation (EC) No. 469/2009 is the date of the notification of the marketing authorization to its owner (and not its date of grant).

New decision of the Enlarged Board of Appeal relating to disclaimers: G1/16

This recent decision of the Enlarged Board of Appeals deals with the tests that are to be applied to determine whether a disclaimer complies with the requirements of Article 123(2) EPC in view of the two previous decisions relating to disclaimers, G1/03 and G2/10.

Trademark Case Law : New means to combat online counterfeiting

Trademark Case Law : New means to combat online counterfeiting - Paris Court of first instance, Interim order of November 21, 2017. For the very first time in French law, ALIBABA.COM is considered as a publisher and is being held accountable for the counterfeiting products on its website...

Trademark jurisprudence: Trademarks consisting of a colors combination

Tribunal of the European Union – joint cases T101/15 et T102/15 – November 30, 2017
RedBull GmbH v. EUIPO and Optimum Mark sp.

EPO guidelines for examination - Direct citation to oral proceedings after search report

From November 1st, 2017 the new and updated Guidelines for Examination are applicable. While in the past, following the reply to the Search Report the EPO had to emit an official communication before scheduling oral proceedings, this has changed.

Trademark jurisprudence: Legal obligation of use of a complex mark and scope of the general heading of a class

Trademark jurisprudence: Legal obligation of use of a complex mark and scope of the general heading of a class - The decision issued by the ECJ on October 11, 2017 provides two kinds of significant information to EUTM’s holders...

Decision of the German Federal Supreme Court “Abdichtsystem” (Sealing system)

According to the Federal Supreme Court, a supplier based in a foreign country is not generally obliged to check and control the further use of its products by a recipient. However, the supplier is obliged to check the situation in case there are concrete hints that the recipient will import and market the product in Germany.

L'accord de validation avec la Tunisie entre en vigueur le 1er décembre 2017

Le 3 juillet 2014, la Tunisie a signé un accord de validation avec l'Office européen des brevets concernant la possibilité pour les déposants de valider un brevet européen en Tunisie.

Summary of Jurisprudence - Trademark - October 2017

Trademark jurisprudence: Coexistence agreements and European Union trademarks / Honest use by a third party of a sign which became common