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One of the key issues in the complex of problems surrounding exhaustion is the question of whether goods bearing the mark of a trade mark owner have been put on the market with that owner's consent. If so, the trade mark owner cannot prohibit parallel-importers from importing the goods into the EEA, according to article 7, section 1 of the Harmonization Directive (89/104/EEC).

James Nurton, London

Russia's transition to a market economy has created a tangle of proprietary rights. Valeri Guerman explains some of the problems facing trade mark owners

Interview: James Rogan James Rogan, the new director of the USPTO, speaks to Sam Mamudi about being at the helm of one of the most influential IP organizations in the world at a time of enormous challenge and growth

One case that has cast some light on co-ownership of trade marks in Singapore is Ng Chu Chong (trading as Grand Am Fashion Enterprise) v Ng Swee Choon & Ors (Suit No 1108 of 2001/E). Here the plaintiff and his sister, the first defendant, entered into a partnership called Grand Am Fashion Enterprise (Grand Am) to manufacture and sell fashion apparel under the trademark, McBlue. The trademark was created by the first defendant for the partnership and was registered in their joint names, trading as Grand Am. Subsequently, the first defendant withdrew from the partnership due to an impending bankruptcy but continued to work for the plaintiff as an employee. The plaintiff thereafter discovered that another partnership belonging to the first defendant's sister-in-law, named GA Fashion Apparel (GA) was marketing goods bearing the McBlue trade mark. The plaintiff brought an action against the defendants for trade mark infringement and applied for permanent injunction. The first defendant argued that she was entitled as a joint proprietor to authorize GA to purchase and deal with goods bearing the McBlue trade mark.

There are grounds under the UK Trade Marks Act (1994, section 3(6)) for refusal or invalidity of registration where a trade mark is applied for in bad faith. The provision derives from the European Trade Marks Harmonization Directive (89/104) and has a counterpart in EU Trade Mark Regulation 40/94 (article 51(1)(b)). Bad faith is not defined and its scope has produced a divide between UK and EU case law over the need for subjective dishonesty on the part of the trade mark applicant (Trillium, First Cancellation Division of OHIM, C000053447/1, March 28 2000).

A company’s infrastructure is like a spider’s web in which information must be trapped and digested. This image conveys aptly one of the most challenging aspects of an IP manager’s job: capturing invention information, writes Janice Denoncourt

The Korean government has traditionally held the rights to inventions in national and public universities. But new technology transfer legislation will change that. Researchers will now have an incentive to commercialize their inventions, writes Man-Gi Paik

In an appeal from the US Patent and Trademark Office Board of Patent Appeals and Interferences (Scott v Koyama, 61 USPQ 2d 1856 (Fed Cir Feb 27 2002)), an interference between a party (Koyama) that filed a patent application in Japan on March 13 1990 and a party (Scott) whose UK patent application was filed on March 29 1990, the Federal Circuit was faced with a situation in which neither party could rely on its actual reduction to practice of the invention. This was because the work was performed outside the US, and the applications were filed before January 1 1996. Had they been filed after that date, a statute (35 USC 104) permits the introduction of evidence concerning work performed anywhere in the world.

"A world patent is the eventual aim but this is difficult in the near future"