dimanche, août 29, 2010

Berne (Switzerland), 16th September 2010: How to write a competitive proposal for FP7

Berne (Switzerland), 16th September 2010: How to write a competitive proposal for FP7

 

Euresearch Berne is organising a workshop on "How to write a competitive proposal for FP7" to be held in Berne (Switzerland), on 16th September 2010.

This info event will include seven modules and will give participants an overview on the proposal preparations for the purpose of Seventh Framework Programme (FP7) projects.

 

Related Links

Further information and registration

 

Shangai (China), 3rd September 2010: Introducing the European Community Trademark System

Shangai (China), 3rd September 2010: Introducing the European Community Trademark System

 

The EU-China Project on the Protection of Intellectual Property Rights is organising the event "Introducing the European Community Trademark System", to be held during the World Expo 2010 in Shanghai (China) on 3rd September 2010.

The Seminar aims to increase awareness and provide a comprehensive explanation of the European Intellectual Property System with regard to trade marks, especially for Chinese small and medium enterprises, possible users of the trade mark system in Europe.

 

Related Links

Further information and registration

 

samedi, août 28, 2010

United Kingdom: Infringement and implied threats: consider the context

Infringement and implied threats: consider the context

Contributed by Reynolds Porter Chamberlain LLP


Background

Rights holders seeking to assert their IP rights in the United Kingdom should be aware of the threats provisions, which apply to patents, registered trademarks and registered and unregistered designs.

Section 21 of the Trademarks Act 1994 provides that "any person aggrieved" by a threat to issue proceedings for infringement of a registered trademark may bring an action for threats and seek:

  • damages;
  • a declaration from the trademark owner that the threats lack justification; and
  • an injunction to prevent further threats.

There are limited statutory exemptions to these provisions.

The threats provisions in Section 21 of the act were extended to apply to Community trademarks under Paragraph 6(1) of the Community Trademark Regulations 2006.

A recent High Court case, Best Buy Co Inc v Worldwide Sales Corp España SL,
(1) is thought to be the first to have considered the application of UK threats provisions to an EU-wide right.

Facts

Following the success of the business in the United States, Best Buy Inc and its UK subsidiary planned to launch their consumer electronics business in the United Kingdom under their 'Best Buy' name. The companies had applied for a number of Community trademarks which were opposed by the defendant, a Spanish corporation that owned a number of figurative Community trademarks and national registered trademarks featuring the words 'Best Buy'.

In August 2008 the claimants' lawyers wrote to the defendant's trademark attorney about the oppositions. They maintained that the claimants had a significant reputation in the words 'Best Buy' for retail services, and that as the defendant's use of its marks was thought to be mostly in Spain, there was scope for coexistence.

In response, the defendant's Spanish lawyers claimed that the defendant's various Best Buy marks had been used in Spain and in other European markets; therefore, the defendant had a reputation in the brand. The letter noted that the claimants' stated intention to expand into the "European market, including the Spanish one" represented a conflict of rights, and that such conflict might "cause confusion and lead to an unacceptable association with the defendant's products, causing irreparable and irreversible damage which would undoubtedly entail the cessation of its activity". The defendant was therefore "entitle[d] to take the appropriate legal action to defend its interests".

Settlement discussions were unsuccessful. The claimants issued proceedings for unlawful threats on the basis of the defendant's first letter.

Decision

The court explained that the applicability of the UK threats provisions to Community trademarks is limited to proceedings threatened in the United Kingdom and does not extend to other jurisdictions.

Justice Floyd dismissed the claim, noting that the defendant's letter had to be read as a whole and in the context of all that had preceded it; thus, it was to be interpreted as it would be understood by a reasonable businessperson who had received the defendant's letter and was aware of the background.

The judge concluded that the recipient would understand from the defendant's letter that proceedings for trademark infringement were being threatened. Although the threat was conditional on the claimant refusing to negotiate and continuing its use of the mark, conditionality is not a defence. Furthermore, a recipient would consider that the defendant was not simply referring to proceedings in Spain. The defendant had a range of options and if a major UK launch were to take place, the United Kingdom would be a likely choice of jurisdiction for proceedings.

The judge noted that Section 21 of the act excludes certain types of infringement action from the threats provisions - for example, the supply of services under a trademark or the import of goods to which the trademark has been applied. However, the defendant's letter did not fall within the limited statutory exemptions. Although the defendant argued that the letter related to the supply of services only, the judge disagreed, noting that the letter sought undertakings in respect of any use of the mark.

Nevertheless, the claim was dismissed. Although the letter made clear threats, it was a "comprehensive negotiating response" to the claimant's proposal. It was noted that it is reasonable, in the course of negotiations, to assert an initial position of strength before indicating where a compromise might be reached.

Therefore, in its context the letter attracted the protection of 'without prejudice' privilege, even though these words did not appear in the letter.

Comment

This case reinforces the established rule that even if a communication does not explicitly threaten infringement proceedings in the United Kingdom, a court may find that a threat is implied in context. This analysis applies equally to letters, emails and conversations between parties.

For non-UK lawyers, the case highlights the risks associated with UK threats provisions. Although limited statutory exemptions exist, a communication must be carefully composed to take advantage of them. The defendant in this case was relatively lucky and the communication was held to be without prejudice, even though this had not been the lawyers' intention. Advice should always be sought from English lawyers before seeking to assert IP rights in relation to the United Kingdom, as care must be taken when deciding on the content and recipient of a communication.

For further information on this topic please contact Georgia Warren or Andrew Hobson at Reynolds Porter Chamberlain LLP by telephone (+44 20 3060 6000), fax (+44 20 3060 7000) or email (georgia.warren@rpc.co.uk or andrew.hobson@rpc.co.uk).

Endnotes

(1) [2010] EWHC 1666 (Ch), July 8 2010.

Mexico: Protecting an IP portfolio: an effective and targeted anti-counterfeiting strategy

Protecting an IP portfolio: an effective and targeted anti-counterfeiting strategy

Contributed by Becerril, Coca & Becerril SC


Legal framework

The prevention of counterfeiting in Mexico is mainly governed by:

  • the Industrial Property Law;
  • the Federal Criminal Code;
  • the Copyright Law; and
  • the Customs Law.

Depending on the subject matter, these laws - alone or in combination - provide rights holders with the necessary tools to take legal action against counterfeiting in order to seize illegal merchandise, obtain preliminary injunctions and bring criminal, administrative and civil actions to seek appropriate remedies against infringement.

Border measures

Customs officers inspect the contents of containers that arrive in Mexico, either in transit or as their final destination, in order to detect counterfeit merchandise. However, Customs has no official database on trademark owners or licensees. Instead, it works with an informal database, which contains information collected from past actions and details provided by some trademark owners about their portfolios.

With the assistance of the Mexican Institute of Industrial Property, Customs will shortly launch an official database of trademark information. This will allow customs officials to consult trademark owners when potentially counterfeit merchandise is detected. This collaboration should improve the efficiency of the process, giving Customs immediate access to detailed information about trademark owners, licensees and their representatives. This, in turn, will ensure that rights holders and their representatives are contacted promptly and can take appropriate legal action.

Customs cannot proceed against counterfeit goods unless the trademark owner has brought a legal action for seizure of the counterfeiting merchandise. Therefore, Customs must contact the trademark owner as quickly as possible, since Customs can detain merchandise only for a limited time unless a legal action is initiated.

In order to ensure efficient border measures, it is crucial that rights holders provide Customs with the details of their trademark portfolio, as well as information on who can take action on their behalf, so that their representative can be contacted in time to move swiftly against counterfeit merchandise detected at the borders.

Criminal prosecution

The Industrial Property Law and the Federal Criminal Code identify counterfeiting-related activities that constitute crimes. All criminal actions must be initiated before the General Attorney's Office - the prosecuting body that compiles the official file before it is sent to a federal court.

Certain counterfeiting crimes can be prosecuted ex officio, whereas others can be prosecuted only if the injured party complains to the competent authorities. In light of this, when a rights holder becomes aware of the existence of counterfeit goods that directly affect its trademark, it must file a criminal petition with the General Attorney's Office.

Criminal actions are typically initiated: (i) where counterfeit goods are detected by Customs, with the object of seizing the consignment and preventing the goods from entering the Mexican market; and (ii) once counterfeit goods have already entered the market, when raids are conducted at specific premises where the goods are stored or sold.

In a criminal action, the merchandise is provisionally seized as soon as it is detected; it remains in custody until a final decision orders its destruction. Once the action has been initiated and the merchandise seized, a prosecutor at the General Attorney's Office will investigate the merits of the case, compiling all information, evidence and expert opinions necessary to decide whether to prosecute. If it decides to do so, the official file is submitted to a criminal federal court, which will review all of the evidence in order to determine whether a crime was committed.

As the federal judge will base his or her decision on the file submitted by the General Attorney's Office, this file must be properly prepared and must include all possible evidence and information in support of the rights holder's position. A key advantage of a criminal action is that the counterfeit merchandise is seized at the outset. Therefore, even if the decision takes time to be issued, the rights holder can keep the counterfeit merchandise off the market. The main remedies available in criminal actions are destruction of the counterfeit goods and imprisonment of the counterfeiters, depending on the crime.

Civil enforcement

According to the applicable legislation, civil actions against IP rights violations can be initiated only once the Mexican Institute of Industrial Property has issued an administrative decision declaring the infringement of an IP right (for further details please see "How to claim damages for IP violations"). Such a decision is issued following an administrative proceeding that is prosecuted as a form of trial. The decision must be definitive and beyond appeal.

Before commencing a civil action, the rights holder must initiate an administrative action against the infringer before the institute. When filing the initial brief (or even before), the rights holder can request preliminary measures which, in the case of counterfeit goods, might include seizure of the suspect merchandise or a prohibition against its sale or distribution.

Different types of preliminary injunction can be requested before, at the same time as or after filing the administrative action. These will be granted and implemented by the institute if the rights holder:

  • posts a bond to cover potential damages to the infringer if, at the end of the proceedings, it does not obtain a favourable decision declaring that an infringement has been committed;
  • proves the existence of its IP right;
  • proves that:
    • the IP right has been violated or is highly likely to be violated;
    • the evidence demonstrating such a violation will be destroyed; or
    • irreparable harm may be suffered as a result of the violation; and
  • provides the authorities with the information necessary to identify the counterfeit merchandise.

As in criminal actions, even if the administrative proceeding takes a long time to be decided, a preliminary injunction will prevent the infringer from continuing to distribute and sell the illegal merchandise. However, in administrative proceedings the infringer is entitled to file a counter-bond to suspend the effects of the preliminary injunctions. This can be filed at any time after the preliminary injunction has been implemented.

The criteria for determining the amount of the bond and the counter-bond are not stated in the applicable law. Consequently, the institute determines amounts on the merits of the case. The counter-bond is usually set at double the amount of the rights holder's original bond filed.

In the case of administrative actions, the preliminary injunctions can be suspended if the infringer files a counter-bond, although such a bond is intended to cover potential damages to the rights holder that may be caused by the suspension of such measures.

A final decision in this type of administrative proceeding usually takes at least three years. Once the administrative decision has been issued, a civil action can be filed to seek damages from the infringer for violation of the IP right.

The applicable legislation expressly states that damages for the violation of IP rights must be awarded for at least 40% of the sale price of the products. This rule should be taken into account by civil judges when calculating damages for IP rights violations.

As a civil action is prosecuted through a full trial, with higher instances of appeal, it may take a long time for the rights holder to obtain a final decision; however, sufficient tools are provided for the recovery of damages.

Anti-counterfeiting online

Mexican law does not recognise specific online counterfeiting crimes or provide specific penalties for such activities. However, rights holders can still take action against online violations.

Certain provisions of the applicable legislation apply to online counterfeiting and may be used to combat such activities. However, the appropriate strategy must be evaluated on a case-by-case basis in order to determine the most suitable action.

Preventive measures and strategies

Rights holders and their representatives must move swiftly as soon as a violation is detected, given the short timeframe for action before the authorities are required to release the merchandise. Therefore, rights holders and their representatives should have all of the information and documentation that they need to take action at any time, including:

  • adequate powers of attorney;
  • information on licensees and distributors;
  • information about the ports or other entry points at where original merchandise normally enters the country; and
  • full details of the trademarks and the products that they protect.

Rights holders' representatives must be familiar with the particulars of the genuine merchandise so that they can easily and quickly determine whether the merchandise is counterfeit. This not only allows for a rapid response, but also reduces the risk of counterfeit merchandise being mistakenly reported as genuine. Rights holders and their representatives should also maintain close communications with Customs in order to teach officers about the characteristics of genuine or fake merchandise and keep them informed of changes to the rights holder's IP portfolio.

Perhaps most importantly, rights holders and their representatives should ensure that they tackle the most important cases, taking account of the size of the consignment or other factors (eg, the issue of whether the counterfeit merchandise is offered for sale at a location which might harm the image of the rights holder). A cleverly thought-out strategy will help the rights holder to keep the costs of anti-counterfeiting low while still ensuring that such activities are as effective as possible.

For further information on this topic please contact Juan Carlos Amaro Alvarado at Becerril, Coca & Becerril SC by telephone (+52 55 5263 8730), fax (+52 55 5263 8731) or email (camaro@bcb.com.mx).

 

India: Amendments to the Trademarks Rules introduced

Amendments to the Trademarks Rules introduced

Contributed by Singh & Associates




Under powers conferred by Section 157 of the Trademarks Act 1999, the government, by way of a notification dated May 20 2010, has made two amendments to the Trademarks Rules 2002.

Duplicate certificate

In Rule 62.3, the following proviso has been inserted:

"Provided that if the Registrar is satisfied with the claim of the registered proprietor supported by evidence that the certificate of registration issued under sub-rule(1) has not been received by the registered proprietor, he may issue duplicate or copy of the certificate of registration without any further payment of fee.

Provided further that, no such duplicate or copy of certificate of registration shall be issued where such request is received after the expiry of the time limit for renewal of registration and restoration of the registered trademark."

This amendment to Rule 62.3 is a welcome change, as there are several cases where the trademark certificate does not reach the applicant and the applicant has no other option but to request and pay for a duplicate. By way of this amendment, the registrar has been given the discretion to issue a copy of the trademark certificate to the applicant without any additional charges, where the certificate has not been received.

Under the new provision, in order to receive a copy of the registration certificate free of charge, the applicant will have to submit supporting evidence demonstrating that the original certificate was not received. The supporting evidence must be to the satisfaction of the registrar.

Further, the amendment provides that a duplicate certificate cannot be issued if a request is received after the time limit for renewal, registration or restoration of the registered trademark has expired.

Classification

In the Fourth Schedule to the rules, Class 42 and the entries relating thereto have been expanded and three additional classes added:

"42 Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software.

43 Services for providing food and drink; temporary accommodation.

44 Medical services, veterinary services, hygienic and beauty care for human beings or animals; agriculture; horticulture and forestry services.

45 Legal services; security services for the protection of property and individuals; personal and social services rendered by others to meet the needs of individuals
."

This amendment, which provides for the inclusion of Classes 43, 44 and 45 in the Fourth Schedule of the Trademarks Rules, is a long-awaited change. The Indian classification of goods and service was based on the eighth edition of the Nice Classification of goods and services which had only 42 classes, but now the classes have been updated to conform to the ninth edition, in which goods are organised in Classes 1 to 34, and services in Classes 35 to 45.

Previously, services falling under Nice Classes 43 to 45 were under the ambit of Class 42, so an application filed outside India under Classes 43 to 45 was filed in Class 42 in India, which led to confusion in claiming priority under these classes in India or vice versa. The amendment will help to remedy this problem. More importantly, major member states of the World Intellectual Property Organisation follow the ninth edition classifications, so it will now be easier to file and receive applications between India and other member states.

For further information on this topic please contact Manoj K Singh at Singh & Associates by telephone (+91 11 4666 5000), fax (+91 11 4666 5001) or email (manoj@singhassociates.in).

 

Denmark: Supreme Court fines EuroPharma for drug rebrand

Supreme Court fines EuroPharma for drug rebrand


In July 2004 pharmaceuticals and chemicals importer EuroPharma commenced the parallel import and sale of a veterinary drug named Tailan which it rebranded as Tylan - a registered trademark belonging to drug manufacturer Eli Lilly. In October 2005 Eli Lilly objected to the rebrand and demanded that the product be removed from sale.

Before the Supreme Court,
(1) EuroPharma admitted that it had violated the trademark, but argued that it should have to pay only Dkr143,000 in remuneration, calculated as a percentage of the infringing drug's alleged turnover. However, Eli Lilly claimed that in addition to remuneration of 5% of the turnover, it was entitled to compensation for further damages caused by the infringement.

In accordance with the usual practice for trademark infringement in connection with parallel imports of drugs, the Supreme Court found that Eli Lilly was entitled to remuneration under Section 43 of the Trademarks Act - calculated as 5% of EuroPharma's unauthorised turnover from the drug. EuroPharma did not contest that its turnover from Tylan had been Dkr4.564623 million; therefore, the fine was set at Dkr228,231. However, the Supreme Court found that Eli Lilly had not proven that the trademark infringement had caused further damages to the company, and consequently there was no basis for further remuneration including market disturbance.

For further information on this topic please contact Mads Marstrand-Jorgensen at Norsker & Co by telephone (+45 33 43 31 00), fax (+45 33 13 38 38) or email (mmj@norsker.dk).

Endnotes

(1) EuroPharma Dk ApS v Eli Lilly and Company, May 26 2010, Case 516/2007.

 

Un nouveau moteur de recherche ultrpointu en audio et video

Depuis deux ans, la société française Exalead travaille sur un moteur de recherche multimédia capable de trouver des informations directement dans le contenu d’une vidéo ou d’une bande-son, sans se limiter à leur titre ou aux indications des auteurs. Le système scanne automatiquement les contenus d’une trentaine de chaînes de télévision et de radios. Puis il identifie la langue parlée (parmi une dizaine de langues) et retranscrit le contenu en texte. Le résultat dépend de la qualité du signal sonore, de l’élocution de l’intervenant, etc. Pour les images, le logiciel est capable de savoir si la scène se passe à l’extérieur, de reconnaître les couleurs et de détecter les visages. Les informations issues de ces traitements sont croisées afin de faire émerger des « métadonnées » sous forme de mots-clefs. En cliquant dessus, l’utilisateur accès au passage qui l’intéresse. Bluffant !

 

Démonstrateur en-ligne sur : http://voxaleadnews.labs.exalead.com

 

 

samedi, août 14, 2010

Legislative Yuan considers sweeping changes to Patent Act

Legislative Yuan considers sweeping changes to Patent Act

Contributed by Lee and Li Attorneys at Law

Background


The Patent Act was last amended in 2003. From 2006 the Taiwan Intellectual Property Office (TIPO) held a number of public hearings at which it collected comments and suggestions with the aim of identifying sections of the act which might be amended in order to:


  • increase Taiwan's economic and industrial competitiveness;
  • promote the development of biotechnology, green technology, advanced agriculture and other important technology; and
  • improve the patent examination process.
It then prepared a draft amendment of the act which it submitted to the Ministry of Economic Affairs for review on August 3 2009. Following the ministry's review, the draft act was approved by the Executive Yuan on December 3 2009. The draft act was then delivered to the Legislative Yuan for review on December 11 2009.

Proposed amendments

Clarification of term 'creations'

In the draft act, so-called 'creations' belong to a high category of inventions and new utility models. To avoid the misunderstanding that the term can apply to both new utility models and designs, and to prevent inconsistent use of the term in the act, it is proposed that both inventions and new utilities be included under the term.

Change of Chinese term for 'design patent'
In line with international practice, the draft act uses the Chinese term 'sheji zhuanli patent' rather than 'xin shiyang zhuanli patent' for the term 'design patent'.

Definition of 'practice' of a patent
The term 'practice' can refer to the manufacture, offer for sale, sale, use or import of the product which uses the patent technology, and constitutes a higher level concept of use. To avoid inconsistent use of the terms 'practice' and 'use', the draft act includes a definition of the term 'practice' and amends those sections of the act which use the terms inconsistently.

Grace period
In the draft act, where a patent applicant publishes details of its application, grounds exist for seeking a grace period. The grace period would apply to the requirements regarding both novelty and inventive step.

Claims and abstract
Under the existing act, a specification must contain, among other things, the claim and an abstract. In line with international practice, the draft act requires that the claim and abstract be presented as separate documents from the specification.

Plants and animals
In order to promote the development of local biotechnology industries, Item 1, Article 24 has been deleted from the draft act. The draft act expands patent protection to include plant-related inventions and animal-related inventions.

Foreign-language specifications, claims and drawings as temporary substitutes
Under the draft act, for a patent application which is filed initially and temporarily with a foreign-language patent text, amendment of that foreign-language patent text is prohibited. Instead, provisions have been incorporated into the act in order to deal with amendments of translation errors. For example, in the draft act, except for the amendment of translation errors, an amendment must not exceed the scope of the disclosure of the originally filed specification, claims and drawings. The amendment of translation errors must not exceed the scope of disclosure of the originally filed foreign-language patent text. The draft act introduces specific regulations to regulate the categories of foreign language used for filing foreign-language patent texts and the necessary items of such texts.

Reinstatement of rights
To encourage innovation and protect research and development results, patent applications which are deemed to be filed without priority due to the applicant's failure to claim priority at the time of filing for reasons other than the applicant's intentional act, or for a granted patent which has expired because the patentee has failed to pay an annuity for reasons other than the patentee's intentional act, the draft act allows the applicant or patentee to revive the patent case. The patent right of a granted patent which has been revived will not apply to the practice of the patent by a bona fide third party, or the necessary preparation for such patent practice by a bona fide third party, during the period between the date of expiry and the date of the patent revival's publication.

Relaxation of timing requirement for patent division
In the draft act the timing requirement for making patent divisions for invention patent cases has been relaxed in order to allow a patent applicant to apply for patent division within 30 days of receiving a patent allowance decision issued at the first substantive examination stage.

Amendment of patent applications during examination stage
The draft act combines the terms 'supplement' and 'amendment' into the single term 'amendment'. The timing limitations for making amendments have been abolished. To avoid delaying patent examinations, the draft act establishes a final notification mechanism, whereby upon receiving final notification, an applicant will be able to make amendments only during the period specified in the final notification. Applications to make amendments when responding to a final notification will be accepted only if the amendment is made to delete any claim on file, to narrow the scope of the claims, to correct an erroneous disclosure or to clarify an unclear disclosure.


The TIPO will issue decisions on patent applications which fall outside these criteria.

Patent term extension for pharmaceutical-related or agrichemical-related patents
Under the existing act, one of the requirements for seeking a patent term extension for a pharmaceutical-related or agrichemical-related patent is that: "the time period during which the concerned patent cannot be practised due to application for a permit has exceeded two years from the patent grant publication date." The draft act lacks this provision. A new provision is proposed to stipulate that where a patent term extension application has not been granted before the original patent term of the concerned patent expires, but is granted afterwards, the patent right shall be deemed extended from the day following the expiration date of the original patent term. During the extended patent term, the patent right shall be limited to the active ingredients and the uses identified in the permit.

Patent right limitation and international first sale exhaustion principle
The draft act stipulates that the patent rights only apply to:

  • non-public acts made for non-commercial purposes;
  • third-party practice of a patent which has been revived pursuant to Article 72(2), or the third party's necessary preparations for practising the patent, which are made before publication of revival of the patent;
  • research, testing or other necessary activities for the purposes of obtaining pharmaceutical inspection and registration permits under the Pharmacy Act or for the purpose of obtaining permits for marketing foreign drugs.
It is also proposed that the 'first sale exhaustion' principle be made international in nature.

Definition of 'patent licensing'
In the draft act, patent licensing is categorised as either 'exclusive' or 'non-exclusive'. Subject to the licensing scope, an exclusive licensee shall be entitled to exclude the patentee or a third party from practising the licensed patent. However, where there is an agreement providing that the patentee can also practise the patent, that agreement will apply. An exclusive licensee may sub-license the patent to a third party for practise; where there is an agreement providing otherwise, such agreement will apply. A non-exclusive licensee shall not sub-license to a third party its right to practice the patent without the consent of the patentee. A sub-licensing arrangement shall have no legal standing against third parties unless it is recorded with the TIPO.

Patent cancellation (invalidation) actions
The draft act abolishes the practice of revocation actions initiated by the TIPO. The draft act contains amended provisions on the grounds for filing cancellation actions (sometimes known as 'invalidation actions') against granted patents. The draft act states that the grounds for filing a cancellation action against a granted patent shall be based on the Patent Act provisions which were in effect at the time that the patent was granted. The newly added grounds for filing cancellation actions (eg, where a patent division, patent conversion or patent amendment exceeds the scope of original disclosure of a patent, or where an amendment has substantially expanded or altered the originally granted claim of a patent) apply to patent cases granted before the date of the proposed amendments' implementation. It is also proposed that it be possible to file a cancellation action against a part of the granted claims, and that examination of a cancellation action may be based on discretional investigation. Provisions regarding combined examinations, combined decisions and withdrawal prior to a decision in cancellation cases are also included in the draft act.

Compulsory patent licensing practice
The draft act replaces the term 'specially approved practice' with 'compulsory licensing'. The grounds for seeking compulsory licensing have also been amended. For example, where the owner of a plant variety right, when practising this right, cannot avoid practising a biotech patent granted to another party, and where, compared with the biotech patent, the plant variety right contains important technical improvements with considerable economic significance, the owner of the biotech patent rights will be obliged to grant use to the owner of the plant variety rights. Under the draft act, decisions on compensation fees shall be made at the same time as those regarding the granting of compulsory licenses.

Newly added compulsory licensing ground: public health grounds
Under the draft act, new grounds for seeking compulsory patent licensing will be introduced to assist developing countries and lower-tier developed countries to acquire certain pharmaceuticals under patent protection so as to alleviate public health crises afflicting these countries.

Enforcement of patent rights
The draft act sets out subjective elements of patent infringement (ie, a patent owner may claim damages from another party that infringes on the patent with intent or out of negligence). Changes have also been made with respect to the calculation of damages (eg, a royalty rate is added as one of the methods) and methods for patent marking. The act stipulates that:


"where patent marking cannot be made on the patented product, patent marking can be made on the label of the packaging of the product, or can be made in another apparent manner which may cause others to recognise it."

New utility model patent practice
Under the draft act, where an amendment of a new utility model patent application exceeds the originally filed scope, the new utility model patent case shall be rejected. When the same person files an invention patent application and a new utility model patent application for the same creation on the same day, the patent applicant will have to make a selection prior to issuance of a decision on the invention patent application. Where the applicant selects the invention patent applications, the new utility model patent application shall be deemed non-existent from the outset; where the new utility model patent case is selected, the invention patent application will be rejected. To make the burden of proof more precise, in addition to the requirement for enforcing patent rights based on the content of the new utility model patent technical report(s), the plaintiff must exercise considerable due diligence. Under the draft act, the amendment of a new utility model patent must follow formality examination, where substantive examination and combined decision shall apply if the amendment is examined together with a cancellation action against the same new utility model patent.

Design patent practice
Design patent protection will be expanded to cover partial designs, icon designs, graphical user interface designs and designs of products which are supplied as a set. The draft act introduces the category 'derivative design patent' into the patent system to apply where the same person or entity has two or more similar designs, an original design patent case and a derivative design patent. The 'associated design patent' category has been abolished.

Transitional clauses
Considering that some of the draft act's proposed changes involve significant changes to patent practice, the draft act includes clauses regarding the transition to the new regime.

Comment

Although the Legislative Yuan has held several meetings to discuss the draft amendment, it is yet to indicate when it will make a decision regarding the draft act.


For further information on this topic please contact Daisy Wang at Lee and Li Attorneys at Law by telephone (+886 2 2715 3300), fax (+886 2 2713 3966) or email (daisywang@leeandli.com).

Libellés :

mercredi, août 11, 2010

Du contrat de la location-gérance

Un contrat de location gérance peut s’avérer très utile, dans le cas où, un candidat qui sera intéressé par l’acquisition d’un fonds de commerce peut demander à ce que lui soit consenti un contrat de location-gérance pour lui permettre de mieux connaître et apprécier la rentabilité du fonds. Il peut être assorti d’une promesse de vente à son profit. Il existe d’autres cas où le locataire trouve intérêt à la location-gérance. Mais quoi qu’il en soit, ce type de contrat présente des dangers et des inconvénients non seulement pour le propriétaire du fonds, mais également pour le locataire-gérant lui-même.


Le locataire-gérant s’expose au risque de nullité de la location gérance si le bailleur n’a pas exploité pendant deux ans au moins le fonds ou l’établissement commercial mis en gérance. En effet, si cette condition de deux ans n’est pas remplie, la nullité pourra être demandée par tout intéressé, et même par celui qui l’a provoquée par son mensonge ou sa réticence.

Comme le bailleur, le locataire-gérant est exposé au risque de disqualification de la location-gérance, notamment si celle-ci déguise en réalité une véritable cession de la clientèle.

Les contrats de travail qui peuvent lier le propriétaire du fonds aux salariés sont transmis de plein droit au locataire-gérant lors de la conclusion du contrat de location-gérance. En effet, le locataire-gérant se voit imposer les contrats de travail que le bailleur a pu conclure avec les salariés, conformément aux dispositions du Code du Travail. S’il ne veut pas conserver les salariés, il devra supporter la procédure et le coût des licenciements. Il supportera également les frais engendrés par le départ à la retraite

Avant de prendre le fonds en location gérance, le locataire devra scrupuleusement prendre connaissance du bail commercial qui lie le propriétaire des murs au propriétaire du fonds. En effet, il doit respecter à la lettre les clauses et conditions du bail commercial consenti au loueur du fonds, et notamment les restrictions éventuelles concernant l’activité exercée, car, à défaut, le propriétaire des murs pourrait obtenir la remise en cause du bail commercial et donc obtenir l’expulsion du propriétaire du fonds ainsi que le départ du locataire-gérant.

Le locataire-gérant n’est pas propriétaire de la clientèle qui lui a été donnée en location gérance. Sa liberté est donc plus restreinte que celle du propriétaire exploitant. Il ne peut donc pas vendre le fonds ni le donner. Il ne peut pas non plus le déplacer sans l’accord du propriétaire.

Il ne peut pas non plus changer d’activité. Ainsi, il ne peut pas se prévaloir à son propriétaire des dispositions spécifiques applicables en matière de baux commerciaux qui permettent au titulaire du bail commercial d’obtenir un changement d’activité dans le cadre de la procédure spécifique appelée « procédure de déspécialisation plénière ou partielle ».

Le locataire-gérant ne peut non plus céder le contrat de location-gérance ni sous louer le fonds de commerce durant la location-gérance, sauf accord exprès du propriétaire du fonds. Le locataire-gérant s’oblige également à exploiter le fonds. Il ne peut par exemple cesser l’exploitation du fonds car l’existence même du fonds serait menacée et sa responsabilité pourrait être engagée.

Le locataire-gérant n’étant pas propriétaire du fonds de commerce, il ne peut le donner en nantissement. Son crédit est donc plus limité que celui d’un propriétaire de fonds.

Le contrat de location-gérance peut prévoir expressément une clause résolutoire de plein droit pour non-paiement des loyers ou pour non-souscription d’une assurance spécifique. Or en la matière, le locataire-gérant ne peut pas se prévaloir des dispositions applicables en matière de baux commerciaux qui restreignent l’efficacité de la clause résolutoire de plein droit. En effet, ces dispositions spécifiques ne s’appliquent pas au contrat de location-gérance. En conséquence, si pour une raison quelconque, le loyer n’est pas payé, le propriétaire pourra s’adresser au juge. Celui-ci ne dispose, en matière, d’aucun pourvoir d’appréciation et se voit obligé de constater le non-respect d’une des clauses du contrat et donc d’appliquer la clause résolutoire. Ainsi, il vérifiera que le commandement d’avoir à payer le loyer n’a pas été respecté et qu’en conséquence, le contrat est résilié de plein droit. On le voit, cette clause fragilise considérablement le locataire gérant.

Le locataire-gérant ne peut, sauf clause particulière, mettre fin au contrat de location-gérance avant son terme. La durée de la location-gérance s’impose donc à lui. A défaut, sa responsabilité serait engagée. Bien entendu, les parties peuvent se mettre d’accord pour résilier amiablement le contrat avant son terme. Si le contrat de location-gérance impose un congé, le locataire devra scrupuleusement le respecter car à défaut le bail se renouvellerait pour une nouvelle période convenue par le contrat. Le contrat de location-gérance peut toutefois prévoir une clause aux termes de laquelle le locataire-gérant pourrait mettre fin au bail à certaines périodes, moyennant un congé dans des conditions précisées par les parties.

Le statut des baux commerciaux ne profite pas au locataire. En effet, la location-gérance a pour objet non pas des murs mais un fonds de commerce ou un fonds artisanal. Le locataire-gérant ne peut donc pas se prévaloir de la protection prévue au profit du locataire en matière de bail commercial.

En vertu des dispositions du Code du Commerce, l’expiration du contrat de location-gérance rend immédiatement exigibles les dettes afférentes à l’exploitation du fonds, contractées par le locataire-gérant pendant toute la durée de la location- gérance. Cette déchéance joue de plein droit et les créanciers du locataire-gérant n’on pas besoin de s’adresser au tribunal pour la faire prononcer ; On notera toutefois que ces dispositions ne trouvent pas à s’appliquer si le contrat de location-gérance est renouvelé à son terme.

Le fonds de commerce n’appartenant pas au locataire-gérant, si celui-ci a pris de la plus value grâce à son travail, cette plus value ne lui profitera pas lorsque le contrat de location-gérance prendra fin. On notera toutefois que si le fonds appartient au propriétaire des murs, l’article L 145-46 du Code du Commerce prévoit qu’en cas de refus de renouvellement du bail, le propriétaire du fonds et des murs doit verser au départ du locataire –gérant une indemnité correspondant au profit qu’il aurait pu retirer de la plus-value apportée soit au fonds, soit à la valeur locative de l’immeuble par les améliorations matérielles réalisées par le locataire ; mais ce texte n’est pas d’ordre public et le contrat de location-gérance peut dispenser le bailleur d’avoir à verser de telles indemnités.

Selon la jurisprudence de la Cour de Cassation, à défaut de clause de reprise du stock, aucune disposition légale n’impose au propriétaire du fonds donné en location-gérance de racheter ledit stock à l’expiration du contrat de location-gérance. Le locataire-gérant doit donc être vigilant sur ce point et inscrire dans le contrat initial une clause de reprise des marchandises.

Le contrat de location-gérance peut prévoir une clause de non-concurrence proportionnée qui, si elle est licite, empêchera le locataire-gérant d’exercer une activité concurrente, à l’expiration du contrat de location-gérance. Le locataire-gérant se voit donc interdire de continuer son activité à l’expiration du contrat. Mais même en l’absence d’une telle clause, il devra veiller à ne pas effectuer des actes de concurrence déloyale préjudiciable au propriétaire du fonds.

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mardi, août 03, 2010

United Kingdom: Counterfeit goods seizures reflect pressure on businesses

Counterfeit goods seizures reflect pressure on businesses

Contributed by Reynolds Porter Chamberlain LLP

 


Information published by the European Commission on July 23 2010 on the number of customs cases involving counterfeit goods shows that the United Kingdom faces a major problem with imported counterfeit products. The report reveals that the number of cases handled by UK Customs jumped by 63% from 1,295 to 2,117 between 2008 and 2009. However, the United Kingdom still lags behind other major EU economies: Austria, Belgium, Germany, Spain, France, Hungary, Italy and the Netherlands all handled more cases.

Businesses face serious problems as a result of counterfeit goods entering the United Kingdom from abroad; the increase in cases demonstrates the scale of the threat. The commission's data is all the more concerning for UK companies because cases involving products that are suspected of infringing IP rights reflect only a small proportion of the counterfeit goods entering the country.

The economic climate in 2009 meant that more consumers were tempted to purchase fake products. The trend also raises concerns about budgetary pressure on Her Majesty's Revenue and Customs, although the fact that the proceeds of counterfeit goods are used to fund organised crime makes such infringement a key target for the UK authorities.

As many counterfeit goods go undetected by the EU customs authorities, companies must use the national laws in EU member states to protect their intellectual property after the goods have arrived. The commission's report showed that the majority of counterfeit items entering the European Union came from China, the United Arab Emirates and Hong Kong, with China alone accounting for 64% of suspect goods.

For further information on this topic please contact Andrew Hobson or Georgia Warren at Reynolds Porter Chamberlain LLP by telephone (+44 20 3060 6000), fax (+44 20 3060 7000) or email (andrew.hobson@rpc.co.uk or georgia.warren@rpc.co.uk).