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Managing IP presents its guide to the Anti-Counterfeiting Trade Agreement

Can the owner of an unregistered trade name sue for infringement? This was the main issue tackled by the Supreme Court in its decision issued on March 3 2010, in the case of Coffee Partners Inc vs San Francisco Coffee & Roastery, Inc (GR no 169504). Coffee Partners, a domestic corporation registered with the Securities and Exchange Commission (SEC) in January 2001, has a franchise agreement with Coffee Partners, a British Virgin Islands company organised in 1997, to operate coffee shops using the trade mark San Francisco Coffee. San Francisco Coffee and Roastery is also a domestic corporation engaged in the wholesale and retail sale of coffee, registered with the SEC in May 1995. It registered the business name San Francisco Coffee & Roastery Inc with the Department of Trade and Industry in June 1995, but not with the Intellectual Property Office (IPOPhil).

Kraft Foods Polska Spólka Akcyjna from Warsaw, the owner of the Prince Polo trade mark (R-148617) gave a reasoned notice of opposition to a final decision of the Patent Office on the grant of a a right of protection to the Marco Polo trade mark (R-174796) that was applied for by Zaklady Przemyslu Cukierniczego Mieszko SA for goods in class 30, mainly for pastry and confectionery.

German company Daimler AG filed a cancellation action against Russian trade mark registration 272644 of March 6 2003 due to non-use registered in the name of an unknown Russian company. This was a seemingly routine case but not for the subject matter of the trade mark. It is a verbal mark Maibach. A very similar trade mark (Maybach) is much more familiar than the name of the Russian company which registered the slightly different mark.

The Mexican Trademark Office (IMPI) usually applies strict criteria concerning trade mark likelihood of confusion and distinctiveness. In order to determine marks' confusing similarity, examiners base their exam on an "analysis of the similarities", determining this from the existence of a common element and disregarding the marks' overall impression.

It is established case law that the content of the disclosure of a prior art document is constituted not only of the words actually used but also what the publication reveals to the skilled reader as a matter of technical reality. In a recent case (Ratiopharm v Eli Lilly) the court of the Hague ruled that when a prior art document contains prima facie an error, the document does not need to be ignored but may still be used if the correction of the error is directly and unambiguously evident.

As was reported in the March 2010 edition of Managing IP, amendments to the Copyright Act of Japan came into force in January 2010. This article will highlight the reform to the ruling system (Saitei Seido system) that allows use of a copyrighted work, the owner of which is uncertain, under Article 67 of the Copyright Act.

The Industrial Designs Law in Malaysia, which is governed by the Industrial Designs Act 1997 and the Industrial Designs Regulations 1999, is likely to be substantially changed in 2010 or 2011. There was no recorded amendment to the legislation in 2009. However this year, the Intellectual Property Corporation of Malaysia (MyIPO) has initiated a review of the designs law with IP practitioners and industry practice groups.

On March 9, the Implementing Regulation of the Italian Code of Industrial Property Rights was published. This Regulation has been eagerly awaited since 2005, since (among other changes) it finally provides the procedural rules concerning opposition procedures against the registration of Italian trade marks and international trade marks designating Italy.

There are positive signs that the Supreme Court intends to treat trade mark pirates severely to protect Indonesia's reputation.