Issue No. 15, February 2020

APAA e-Newsletter

Shunning the Anshun: The Australian Federal Court’s Consideration of Anshun Estoppel

Khajaque Kortian and Jacqueline Chelebian, Spruson & Ferguson (Australia)

The issue of Anshun estoppel and abuse of process in the context of patent infringement claims was recently considered by the Federal Court of Australia.
An Anshun estoppel prevents a party from making claims or raising an issue of fact or law that should have been pursued in earlier proceedings. The test is one of reasonableness, i.e. is a claim or issue so connected with the subject matter of an earlier proceeding that it would have been unreasonable, in the context of that proceeding, for the claim not to have been made, or the issue not to have been raised in that earlier proceeding?

Additional Damages in Australia for Flagrancy of Patent Infringement

Simon Reynolds and Andrew Balis, Spruson & Ferguson (Australia)

In this recent Federal Court case in Australia, the Full Court’s decision is a reminder that additional damages should be applied where wilful infringement has occurred, and where the infringer continues to deliberately infringe notwithstanding advice to the contrary. The Full Court has approved the view that even if an alleged infringer fails to defend its reasonably arguable view regarding non-infringement, and continues to produce infringing products, entitlement to additional damages under section 122(1A) of the Act may not necessarily be triggered. Whilst the courts have the power to award additional damages, which is encouraging to patentees, this decision highlights that the application of section 122(1A) of the Act is a balancing exercise and a range of factors need to be accounted for to determine if the infringer’s actions are in fact flagrant.

Trademark Infringement – LIGHTING SOLUTION CASE

Kazuhiro NAKATA, YUASA AND HARA (Japan)

Would asserting in an argument that use of the words LIGHTING SOLUTION in connection with LED lights and related services does not amount to use of a trademark provide a good defense in a trademark infringement case? Heisei28(WA)9753, Injunctive Action for Trademark Infringement Decided Aug. 28, 2018, Osaka District Court. Summary of the Case The … Continue reading

Korean Supreme Court Recognizes Extraterritorial Patent Infringement

Jin Won Chun, FirstLaw P.C. (Korea)

Under the territoriality principle of patent rights governing the Korean Patent Act, a patentee’s exclusive right to make, use, assign, lease or import a patented product can only be exercised within the country where the patent is registered. Further, unlike 35 USC § 271(f), which recognizes contributory infringement or inducement of infringement even when direct infringement occurs outside the U.S., the Korean Patent Act does not contain such an extraterritoriality patent infringement provision. Recently, however, the Korean Supreme Court held, for the first time, that as an exception to the territoriality principle of patent rights, an act of making all components or parts of a patented invention may be considered tantamount to making the final product in Korea, and constitute a direct infringement of the patent in certain circumstances.

Major Changes to Korean Trademark Examination Process in 2020

YoungJoo Song and Mizi Park, YOON & YANG (IP) LLC (Korea)

The Korean Intellectual Property Office (KIPO) has announced changes to its trademark examination process, including significant amendments to its Trademark Examination Guidelines. The changes, which went into effect on January 1, 2020, are expected to directly impact the actual practice in Korea. The following is an overview of the major changes this year. 1. Trademark … Continue reading

Introduction to the Draft Amendments of the Taiwan Trademark Act

Jonathan Yen, TOPTEAM International Patent and Trademark Office (Taiwan)

TIPO (Taiwan Intellectual Property Office) has drafted amendments to the Trademark Act. There are 14 amended articles and two new added articles. The main differences are as follows. 1. In the future, the accelerated examination of a trademark application may be applied to an application for trademark registration. The detailed guidelines will be soon issued … Continue reading

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