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Okt 11, 2018
Meghan Dillon, Bereskin & Parr LLP, Canada
First published at www.bereskinparr.com


Is it "common sense" that "hotel services" requires a b...


Meghan Dillon, Bereskin & Parr LLP, Canada, First published at www.bereskinparr.comThere is a new ray of hope for trademark owners with registrations covering hotel services, but without a “bricks and mortar” hotel in Canada. The prevailing trend over the past several years has been that trademarks covering “hotel services” could not be maintained in Canada in response to summary non-use cancellation proceedings, unless there was a bricks and mortar hotel in Canada. However, the September 7, 2018 decision of the Federal Court in Hilton Worldwide Holding LLP v Miller Thomson, 2018 FC 895 (“Hilton”) has not followed that  read more

Sep 20, 2018
Marina Maltykh, PETOŠEVIĆ Ukraine, Ukraine
First published at www.petosevic.com


Grace Period from EU Association Agreement Directly App...


Marina Maltykh, PETOŠEVIĆ Ukraine, Ukraine, First published at www.petosevic.comThe IP-related provisions of the EU-Ukraine Association Agreement, signed and ratified by Ukraine in 2014, came into force on September 1, 2017, introducing new rules regulating the non-use grace period for trademarks. The existing trademark law provides for a three-year non-use grace period, while Article 198 of the Agreement sets forth a five-year non-use grace period. However, Ukraine has not adopted any laws that implement such provisions in the national legislation and consequently, Ukrainian courts have faced a dilemma read more

Sep 06, 2018
By Aigoul Kenjebayeva, Dentons Kazakhstan LLP, Kazakhstan
Aliya Seitova, Dentons Kazakhstan LLP, Kazakhstan
First published at www.dentons.com


Trademark Legislation in Kazakhstan Has Been Amended Si...


By Aigoul Kenjebayeva, Dentons Kazakhstan LLP, Kazakhstan, Aliya Seitova, Dentons Kazakhstan LLP, Kazakhstan, First published at www.dentons.comOn June 20, 2018, the RK President signed the Law of the Republic of Kazakhstan No. 161-VI “On Amendments to Certain Legislative Acts of the Republic of Kazakhstan Concerning the Improvement of Legislation in the Sphere of Intellectual Property”. The Law was enacted on July 3, 2018 and, in particular, amends the regulation of trademarks in Kazakhstan. The following significant changes will affect the procedure for the defense and protection of trademark rights:

Publication of information about applications: after conducting a preliminary examination, the expert organization will publish information on an application in the bulletin within 5 business days. This innovation will lead to an increase of the extent of awareness of potential applicants and rights holders about the designations submitted for examination and will also allow applicants to inform third parties of the priority of their applications in order to exclude the use of identical or confusingly similar designations by third
 read more

Sep 05, 2018
Andrew Ndikimi, O&M Law LLP, Kenya

Recent Legal Development in Kenya


Andrew Ndikimi, O&M Law LLP, KenyaThe Data Protection Bill, 2018 (the “Bill”) is proposed by the chairperson of the Committee on Information, Communication and Technology and Baringo County Senator, Gideon Moi and it contains provisions that will significantly change how public and private entities handle information entrusted to them. The Bill borrows from the General Data Protection Regulation (GDPR) passed by the European Union and makes Kenya the second country in East Africa after Rwanda to have legislation dedicated to data protection. The Bill defines "data" as  read more

Sep 05, 2018
Evelyn Dueñas, OMC Abogados & Consultores, Peru

The White, luxury and Premium


Evelyn Dueñas, OMC Abogados & Consultores, PeruThe consumer is undoubtedly the most important character when talking about brands and this is because brands exist in the minds of consumers and depends a lot on the idea or concept that they have to be able to choose a brand. It’s necessary to take into account that the consumer's vision has been changing over time, the demands have been influenced by different factors such as technological evolution, which allows us to have access to the products we love so much by just clicking on a webpage, the current consumer is more carried away by  read more

Aug 22, 2018
Roland Mallinson, Taylor Wessing LLP, United Kingdom
Louise Popple, Taylor Wessing LLP, United Kingdom
First published at www.taylorwessing.com


CJEU decision in KitKat shape Trade Mark case


Roland Mallinson, Taylor Wessing LLP, United Kingdom, Louise Popple, Taylor Wessing LLP, United Kingdom, First published at www.taylorwessing.comThe CJEU has ruled on the geographic spread of the evidence needed to prove acquired distinctiveness for an EU trade mark that has been held inherently non-distinctive throughout the EU. The ruling is significant because brand owners had been concerned that it would be necessary in future to submit evidence (perhaps including survey evidence) specifically covering each of the 28 EU Member States. Also it confirms that this is not needed and instead the evidence can potentially be submitted for regional markets (such as the Nordics, Iberian Peninsula, Baltic States and CEE regions that companies often operate within) or, for example, markets with consumers that are closely connected culturally.
What is essential is that the evidence is at least capable of showing acquired distinctiveness in the Member States for which specific single-country evidence may not have been provided. This part of the ruling will be welcomed by MARQUES, the association of European trade mark owners, which had made amicus submissions in support of Nestlé as an
 read more

Aug 21, 2018
Laura Pedemonte, Barzanò & Zanardo, Italy
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Italy – Parallel imports of medical devices: a landmark...


Laura Pedemonte, Barzanò & Zanardo, ItalyAlthough there is plenty of case law from both the European Court of Justice (ECJ) and the EU national Courts on the parallel import of drugs, very few decisions exist regarding the parallel import of medical devices. The Court of Milan recently issued a landmark ruling in a case relating to the parallel import of home-self monitoring medical devices whose repackaging was challenged by the trade mark holder. The multinational Johnson & Johnson has been marketing in Italy a glucose home-control device in packages containing either 25 or 100 strips under the  read more


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Tel +39 02 626131
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All Barzanò & Zanardo attorneys are prepared to deal with any complex problem relating to their specific Intellectual Property expertise through both in-house training and specialized publicly available courses, designed and aimed at achieving their full preparation and official graduation in Italian and European level.

Our patent attorneys are trained to offer advice in all traditional technical fields as well as in those of the most recently developed technologies, from mechanics to electronics, from chemistry to biotechnology, from the topography of semiconductor to plant variety, for filing and enforcing patents in Italy and everywhere abroad.

Among the tasks carried out by our patent attorneys, besides the assistance to the clients in the enforcement of their patents, there are the technical expertise as experts independently appointed by Italian Courts in patent judicial disputes (full scale law-suits and injunction proceedings). Our patent attorneys further interact with the attorneys of the legal department, as far as the licenses and technology transfers are concerned.

The legal department is involved by legacy in the protection of marks, company names and logos, domain names, in addition to Copyright and software. Therefore rather important is the activity of availability searches with its related advices and the subsequent phase of registration for trademarks and domain names carried out both domestically and in any given foreign Country.

B&Z also carries out the activity of due diligence as a supplement to the acquisition and/or incorporation of companies.