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March 2022



Presidential Message

AIPPI President, Luiz Henrique do Amaral

My dear AIPPI Members

As you may know, AIPPI is approaching a very important anniversary. On May 13 in Brussels, we are celebrating the 125th anniversary of our Association. Brussels is the city where in 1897, 20 people came together and decided to join forces in the name of the harmonization of industrial law. 

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125th Anniversary Celebration Conference and Dinner

Advancing IP since 1897

To celebrate its 125th anniversary, AIPPI Belgium & AIPPI International are pleased to invite you to a one-day event combining a hybrid conference and a CELEBRATION EVENING in prestigious locations in the heart of Brussels, the SQUARE and the VAUDEVILLE.

Click on the image below to visit the event website and to register!

2022 Sponsorship Opportunities Now Available!

We are thrilled to offer a special 125th Anniversary Sponsorship package that provides exposure throughout the year and at these special events and activities. The package is limited to a maximum of 5 sponsors and is first-come, first-served. Sponsorship opportunities for the 2022 AIPPI World Congress, San Francisco are also now available.

Click on the image below for more sponsorship details:

Pharma committee proposes to revisit experimental use exemptions

AIPPI Pharma Committee: John Todaro, András Kupecz, Eliza Saunders

A sub-committee of the Pharma committee considers that it is time to revisit the 1992 Tokyo Experimental Use Resolution and the 2008 Public Health Resolution, and to undertake a report/study on developments in the use of experimental use as a defence to patent infringement in member countries. 

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ADR mechanisms in FRAND related disputes: report available

AIPPI Standards & Patents Committee: Pauline Debré, Gertjan Kuipers, Calvin Park
AIPPI ADR Committee: Rafael Atab, Steven Bauer, Aurélia Marie

The Standards & Patents and ADR Committees joined forces to prepare a report on the use of ADR in FRAND disputes, analysing the answers of 19 national groups to a questionnaire. The report is accessible here and was also debated at an IP café during the Annual Congress in October 2021. 

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Report on the Patent Cooperation Treaty Working Group and Assembly 2021

AIPPI PCT Committee: Mary Drabnis, Catherine Bonner

The Patent Cooperation Treaty (PCT) Working Group held its 14th session from June 14 to 17, 2021, in a hybrid meeting format due to the ongoing pandemic situation. The session saw most people attending virtually while others attended in person.

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YouTube’s first Copyright Transparency Report 2021

Copyright Committee: Jan Bernd Nordemann 

The comments on the famous Article 17 DSM Directive and certain issues of the national implementations in the EU member states. Click here.

Law & Case Notes


Proposed regulations to add excess claims fees and fees beyond third office actions

Charles Boulakia - Ridout & Maybee, Canada

Proposed changes to Canadian patent rules were published for public comment in July 2021. While the final version of the new rules has yet to be confirmed, these new rules are expected to alter prosecution strategies and to have significant cost consequences for patent applicants in Canada. 

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New Manual favors foreign companies’ trademark applications in China

Maggie Mi, Ziming Yang - Chispo Attorneys at Law, China

At the end of 2021, CNIPA released the Trademark Manual of Examining Procedure to replace the original Standards for Trademark Examination and Trial. The new Manual has already come into effect on January 1, 2022. 

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The boundaries of trade secrets’ protection under Italian Law in a case of breach of a confidentiality agreement

Chiara Gaido - Italian AIPPI member

In an order issued on November 29, 2021, the Italian Supreme Court confirmed that mere engineering, without any additional efforts conducted by the expert in the field (i.e., the manufacturing of bikes hydraulic disk brakes) does not constitute trade secrets protected according to art. 98 and art. 99 of the Italian Intellectual Property Code (“IIPC”). 

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A court case where a patentee’s request for on-site inspection was rejected

Masahito IMAI - KUBOTA, Japan

In a patent infringement case before the Tokyo District Court, the patentee filed a request for conducting on-site inspection. The Court rejected this request because the Court found the patent invalid and therefore on-site inspection was not necessary (the Tokyo District Court’s judgment of March 30, 2021 (Case No. 2019 (wa) 30991 (in Japanese)).

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The Malaysian Copyright (Amendment) Act 2022: A Win for Copyright Owners and Accessibility Efforts 

Gooi Yang Shuh - Messrs Skrine, Malaysia

In this precis, Messrs Skrine provide an update on the recent amendments to the Malaysian copyright laws which include accession to the Marrakesh Treaty, enhancements to Collective Management Organisation systems and new offences for online piracy.

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Foreign Copyright Protected by Court

Marina Grineva - EUROMARKPAT, Russia

Toys are popular among Russian children. An individual entrepreneur was selling “Super Wings” toys, a toy transformer. It so happened that a series of images of the “Super Wings” Flip, Chase, Todd, Jett, and Dizzy were works of art protected by copyrights owned by Alpha Group Co, a Chinese company. 

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Serbian Court Issues Interesting Decision in UGG Boots Case

Mihajlo Zatezalo - PETOŠEVIĆ, Serbia

On September 9, 2021, the Commercial Court in Belgrade dismissed a lawsuit filed by Deckers Outdoor Corporation, the owner of the UGG brand, against Serbian footwear retailer Obuća Metro. The lawsuit, which was based on copyright infringement of the UGG boot design drawing in the company’s design registration valid in the EU and the US, but not in Serbia, was dismissed as legally unfounded. 

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Record Damages Award a Positive Sign for Trade Dress Protection in Thailand

Suebsiri Taweepon, Waralee Sripawadkul - Tilleke & Gibbins, Thailand

Trade dress has always been one of the most challenging forms of protection under the IP regime in Thailand. Particularly, trade dress in the “store layout” form regularly presents challenges for IP protection and enforcement, given the lack of explicit laws and precedence. In December 2021, however, Tilleke & Gibbins secured a precedent judgment on this form of trade dress from Thailand’s Intellectual Property and International Trade Court (IP&IT Court). 

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AIPPI National and Regional News



Australian Honours and Awards

Michael Dowling - Australian AIPPI member

In the Australian Honours announced by the Governor-General (GG) on Australia Day (January 26, 2022) Michael Dowling has received the Award of Membership of the Order of Australia. Click here to see the announcement and Michael Dowling’s biography. The investiture will be at a ceremony at Government House in Melbourne in April or May.


Electronic Trademark Registration Certificates Available in Costa Rica

Blanca Mejia - Bufete Mejia y Asociados, Honduras (AIPPI Central American and Carribean Group)

The Office of Industrial Property Registry in Costa Rica has communicated their vision regarding the digitization of this Registry and therefore from 2022 electronic trademark registration certificates will be available. 

If you wish to obtain an electronic certificate instead of a physical certificate, it will be required that in each application for registration the applicant or his representative expressly so indicates, either from the beginning or in an additional document submitted prior to the issuance of the certificate.

Fees will not be affected by this request.

Electronic duplicates will have to be requested and corresponding fees paid. 


The Japanese group’s journal “A.I.P.P.I.” latest issue (Vol 47, No.1) is available to all AIPPI members

Masatoshi Abe - AIPPI Japan

The AIPPI Japanese Group is pleased to inform you that the latest issue (Vol 47, No.1) of the Japanese Group’s Journal “A.I.P.P.I.” is now available to all AIPPI members. You can view the contents page for this issue.

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