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It has been approximately a decade since the Mexican Institute of Industrial Property (IMPI) adopted very strict criteria when assessing the likelihood of confusion between trade marks. As a result of this strict approach IMPI's trade mark examiners had some criteria that were troublesome, especially when marks including designs or associated to a concept were compared to each other.

This month we look at benefits and drawbacks of using the Madrid system to extend international trade mark registrations (IRs) to, as compared with filing national applications in, China. This article is not exhaustive and only covers some of the more important issues raised by this topic.

IP rights – among which is the right of the trade mark owner– enable the holder to exploit with exclusivity certain intangible assets. Every time a misappropriation or trade mark infringement takes place, the owner of the trade mark that is subject to infringement also suffers damage, due to the simple fact that a third party is using a similar or identical trade mark without their consent.

How could blockchain help fashion and other IP-intensive industries? Ruth Burstall and Birgit Clark investigate its potential use in registration, tracking, enforcement and payment

Cases of counterfeiting, IP infringement and low-standard goods handled by MSD Vietnamese authorities have stepped up their efforts to enforce IP rights in recent years, particularly in 2016, and especially in the area of combating counterfeit goods.

It is a common assumption that when the respondent in an opposition case is declared in default for failure to file his answer, and the hearing officer decides on the basis of the evidence submitted by the opposer, the respondent loses and his trade mark application is rejected. That was not the case in Smith & Nephew Inc v Livingstone Healthcare Corp docketed as IPC No 14-2014-00176 decided by the Bureau of Legal Affairs (BLA) of the Intellectual Property Office of the Philippines (IPOPHL) on February 1 2017. The contested application was for the mark Adler covering surgical instruments, filed by Livingstone in 2013.

In a recent decision, the Trademarks Administrative Commission ruled on a case regarding the infringement of a famous trade mark. In particular the applicant filed an application for the trademark Coco & Silk and device, covering goods in classes 14, 18 and 25. The opposing party, Chanel SARL, filed an opposition against the acceptance of this trade mark claiming infringement of its famous trade mark Coco covering goods in classes 14, 18 and 25. The applicant, in defence, claimed that the distinctiveness of its trade mark lies on the combination of the two words, Coco and Silk, as well as on the device contained in the opposed trade mark. To support its argument, it provided evidence that the word Coco forms part of several composite national trade marks belonging to third parties, covering similar goods in classes 14, 18 and 25, all of which co-exist. As claimed by the applicant, the existence of these trademarks proves that the word Coco is of weak distinctiveness.

Restoration of the omission to pay an annuity fee for the Dutch part of a European patent is only allowable under Article 23 of the Dutch Patent Act if the patent proprietor (and his representative) exercised all due care. This was recently decided in a case between Flawa and the Dutch Patent Office (DPO) before the court in The Hague.

On March 2 2017, the State Intellectual Property Office (SIPO) of China announced its decision to amend the Patent Examination Guidelines, effective as of April 1 2017. The new Guidelines provide significant changes to software patents, data supplementation for pharmaceutical patents and claim amendments in the invalidation procedures.

According to German Patent Law the courts are bound by the grant of a patent by the respective Patent Office. In consequence thereof they cannot hold a patent as null and void: an action for declaration of non-infringement cannot be based on the lack of patentability of the patent. However, a defence against an infringement action is possible by pleading that according to the state of the art the infringing object is covered by that state of the art or an obvious derivation of it and therefore cannot fall under the scope of the patent if that patent (the claims) would otherwise be infringed only in an equivalent way. But such a defence is consequently denied if the claims would be infringed literally – because then that defence based on prior art is equivalent to a claim of nullity of a patent which the courts are not allowed to judge due to the concept of bifurcation. This sort of defence, namely that the infringing object is made according to prior art, is called in Germany Formsteineinwand after a decision of the German Supreme Court ruling on such a defence.