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With TRIPs compliance, legislative reform and a booming technology market, 2000 was a busy year for patent owners in the emerging markets. MIP writers reveal the results of our annual survey and profile some of the interesting stories from the past year

Owen Dean analyzes the South African law on parallel imports for trade mark and copyright-protected goods in the light of divergent court rulings

In the first case over a .jp domain name, the Toyama District Court has ordered a website to be shut down for infringing a famous name. John A Tessensohn examines the decision

This month´ s cover story tackles the thorny question of what constitutes fair advertising. Clothing company Benetton has built its reputation by shocking and surprising consumers with pictures depicting natural disasters, illness and danger. Its tactics have led to complaints from the public and regulators, with authorities in some countries banning particular adverts. In Germany, the picture of an oil-encrusted duck was held by the Federal Supreme Court to be offensive under the Unfair Competition Law. Following a five-year legal battle, in December the Federal Constitutional Court overturned this ban. The decision gives a green light to advertisers (companies and charities) to use provocative images in their advertising in Germany, previously one of Europe´ s more restrictive markets.

As global trade increases, technology transfer will play a more important role. Walt Bratic and Sanford Warren provide a guide to putting deals together

On November 29 2000, a majority of the United States Court of Appeals for the Federal Circuit, sitting en banc, rendered an opinion in Festo Corp v Shoketsu Kogyo Kabushiki Co, published at 56 USPQ 2d 1865, which effectively extinguishes the application of the doctrine of equivalents to any term of a patent claim that was narrowed by amendment during its prosecution before the US Patent and Trademark Office (USPTO). While the majority opinion does purportedly limit the prosecution estoppel created by amendments that narrow a claim in any respect to those amendments made for reasons "related to patentability" , that opinion is also unequivocally clear in holding that any narrowing amendment to a claim term made for "any reason affecting the issuance of a patent" (56 USPQ 2d at 1870-1871) is "related to patentability" whether made voluntarily or in response to a rejection. Specific mention is made of amendments made for reasons based on 35 USC § § 101 and 112, as well as for prior art reasons based on 35 USC § § 102 and 103 as giving rise to prosecution estoppels and thus foreclosing application of the doctrine of equivalents to amended terms or expressions in claims. The majority opinion leaves an apparent escape hatch from estoppel for narrowing claim amendments made for reasons other than patentability, provided each such reason is stated in the prosecution record at the time of the narrowing amendment but this is of very little practical effect because reasons for narrowing amendments to claims that do not somehow implicate patentability are extremely hard to conceive of, much less substantiate. The majority opinion is explicit in holding that: "When a claim amendment creates prosecution history estoppel with regard to a claim element, there is no range of equivalents available for the amended claim element. Application of the doctrine of equivalents to the claim element is completely barred" (56USPQ2d at 1872).

The landmark decision of Genelabs Diagnostics Pte Ltd and Nagase Singapore (Pte) Ltd v Institut Pasteur and Pasteur Sanofi Diagnostics (Civil Appeal No 14 of 2000) was the first patent infringement case involving a biotechnology patent to be heard and litigated in Singapore. In a judgment delivered by Justice of Appeal Chao Hick Tin, the Court of Appeal dealt with the validity and infringement of a patent on the HIV-2 virus. Facts of the case

The Federal Patent Court recently acknowledged the principal registrability of a new kind of trade mark, a so-called "positioning mark" (see for instance BPatG 28W (pat) 66/99 Positionierungsmarke). With this new kind of trade mark, signs such as single letters or exclamation marks, which are otherwise considered not to be registrable, may be registered, if the following minimum requirements are fulfilled: The sign appears on a specific part of the product, eg a jeans pocket or the flank of a tennis shoe. It appears always at the same place of said part of the product. It appears in a constant size (absolute or relative to the size of the goods). It exhibits a particular colour contrast with respect to the goods labelled with the positioning mark. Therefore, in an application for a positioning mark the definition of the carrier (the goods onto which the label is affixed), the position of the sign on the carrier as well as its size of must be given. It is further advisable to give a short description of the mark.

Asia has turned the corner in addressing IP deficiencies. But problems remain – from the political wranglings in Indonesia to the booming Korean market. Tabitha Parker investigates

Following the change in sovereignty, a new trade mark law was introduced in Hong Kong. Henry J H Wheare, of Lovells, explains what the main changes will be